In Dow Agrosciences LLC v. The Controller of Patents,[1] the sole and primary issue pertained to the filing of proof of right by the applicant. The Intellectual Property Appellate Board (‘IPAB’) made reference to the applicable provisions of the Patents Act, 1970 (‘Act’), the Patents Rules, 2003 (‘Rules’), and the relevant regulations under the Patent Cooperation Treaty (‘PCT’). It was held that declaration as per Rule 4.17(ii) of the PCT Regulations serves as sufficient proof of right.

Facts and issues

In the instant case, Dow Agrosciences (‘Appellant’) filed a patent application vide Patent Application No. 8373/DELNP/2014 for its invention titled, ‘METHODS FOR PREPARING 3 SUBSTITUTED 6 TRIFLUOROMETHYL PYRIDINES AND METHODS FOR USING 6 TRICHLOROMETHYL HALOGENATED PYRIDINES’ on 8 October 2014. This application was filed as a national phase application, claiming priority from its U.S. Application No. PCT/US2013/032270.

The Appellant claimed to have submitted the proof of right as mandated under Section 7(2) of the Act viz., the declaration under Rule 4.17(ii) of the PCT Regulations (‘Regulations’), which supported its entitlement to apply for and be granted a patent by the Indian Patent Office (IPO). Rule 4.17(ii) stipulates the submission of a declaration, stating the applicant’s entitlement to apply for and be granted a patent, to the designated national patent office, while Rule 51 bis.2(ii) states that unless the designated office may reasonably doubt the veracity of the declaration submitted in accordance with Rule 4.17(ii), no other document or evidence will be required.

On 20 June 2018, the Controller of Patents (‘Respondent’) issued the first examination report (‘FER’) wherein it raised the objection that the proof of right in the form of an endorsement/assignment had not been filed. The Appellant filed its response stating that its submission of the PCT declaration was in lieu of the proof of right, which had been submitted along with its patent application.

Despite this response, along with the Appellant’s submissions at the oral hearing and the filing of written submissions, the Respondent continued to insist on the requirement of submitting the proof of right, did not provide any reasoning as to why the PCT declaration was not recorded as a valid proof of right document, and subsequently passed an order refusing the Appellant’s patent application on the sole ground of non-filing of proof of right document (‘impugned order’).

Proof of right

Patents Act, 1970:

As per Section 6 of the Act, a person is entitled to apply for a patent if (s)he is the true/first inventor, if (s)he is the assignee of the person claiming to be the true/first inventor, or if (s)he is the legal representative of any deceased person who, immediately before their death, was entitled to apply for a patent.

However, this is subject to Section 134 of the Act, which provides that where any country specified by the Central Government does not accord Indian citizens the same patent rights (grant and protection) as applicable to its own nationals, the citizens of such countries will not be entitled to apply for a patent or be registered as a patent proprietor in India. 

Section 7(2) of the Act, read with Rule 10 of the Rules, stipulates that where an application is made by virtue of an assignment, the proof of right should be furnished along with the application or within a period of six (6) months from the date of filing the application. The six month period for international applications in which India has been designated will commence from the actual date on which the corresponding application is filed in India. Lastly, Rule 20 of the Rules prescribes the procedure to file the abovementioned corresponding application i.e., the rule will supplement the PCT regulations.

Patent Cooperation Treaty:

As per Rule 51bis.1 of the Regulations which is subject to Rule 51bis. 2, the applicable national law in the designated office may require an applicant to submit any document relating to an applicant’s eligibility to apply for and be granted a patent. Rule 51bis.2 of the Regulations states that unless the designated office may reasonably doubt the veracity of the declaration submitted in accordance with Rule 4.17(ii), no other document or evidence will be required. The declaration under Rule 4.17(ii) of the Regulations is with regards to the applicant’s entitlement to apply for and be granted a patent.

Analysis and decision

In the present case, the Appellant submitted that the declaration under Rule 4.17(ii) of the Regulations was sufficient and the Appellant was not required to file any other evidence or document as proof of right. It also brought to the Respondent’s attention, that the IPO had previously considered numerous cases, wherein the declaration was found to be sufficient proof of right and were granted patents.

However, in the impugned order, the Respondent failed to consider the submissions of the Appellant but instead cited an earlier IPAB order,[2] which the IPAB in the present case observed was based on different facts regarding a conventional application. The IPAB stated that the main difference between the NTT Docomo case[3] and the instant case was that here, the Appellant did not deny the mandatory requirement of ‘proof of right’ for PCT national phase applications, but rather argued that the submission of the Rule 4.17(ii) declaration should have been considered as sufficient proof of right.

The IPAB noted that at no point did the Respondent questioned or doubted the veracity of the declaration submitted by the Appellant, and if the Respondent was uncertain, it could have directed the Appellant to substantiate its contentions with further documentation as per Rule 51bis.2 of the Regulations. The IPAB further observed that the Respondent failed to take into account the legally accepted norms of filing ‘proof of right’ and refused the patent application by citing an irrelevant case.

In conclusion, the IPAB found the legal requirement of filing proof of right to have been met by the Appellant by filing the declaration under Rule 4.17(ii) of the Regulations, and accordingly set aside the impugned order. It directed the Respondent to grant the patent as claimed in the Appellant’s application.

This order serves as a significant precedent with respect to proof of right. The provisions of the PCT Regulations are straightforward in that the declaration as per Rule 4.17(ii) serves as sufficient proof of right, and an applicant is not required to submit additional documents. However, if the Controller is uncertain of the declaration’s veracity, (s)he always has the option to request the applicant to submit further proof of right. In either case, where the Controller refuses the grant of a patent, (s)he must record the reasons in writing, as per the principles of natural justice.

[1] OA.63/2020/PT/DEL, decided on 27 October 2020.

[2] NTT DoCoMo Inc. v. Controller of Patents and Designs, OA/39/2011/PT/CH.

[3] Id.