If an Indian patent application is filed by anyone other than the true inventor, you must prove your right to file it — within six months, or risk refusal and even revocation after grant.
The requirement: Section 7(2)
Under Section 7(2) of the Patents Act, 1970, where an application is made by virtue of an assignment of the right to apply, the applicant must furnish proof of right to make the application — either at filing or within six months of filing. In short, whenever the applicant is not the inventor, proof of right must be established. For the assignment itself to be valid, Section 68 requires it to be in writing, in a document setting out the terms.
Practice — and the DOCOMO position
The Patent Office once did not require proof of right where the applicant/inventor of the convention or PCT application were the same as in the Indian application. That changed with NTT DOCOMO Inc. v. Controller of Patents and Designs, which held that proof of right must be filed for all applications in India where the applicants are not the true inventors.
The accepted forms of proof of right
- Inventors sign Form 1 — the inventors endorse Form 1, assigning their rights in the invention to the applicant.
- Assignment deed — a notarised/certified copy of a deed by which the inventors assign the rights to the applicant.
For convention applications, you can additionally show proof by a notarised/certified copy of the assignment recorded with the patent office in the convention country.
For PCT national-phase applications:
- If the applicants/inventors in India are the same as in the PCT application, no separate proof of right is needed.
- If they changed before national-phase filing, that change must be notified by the International Bureau on Form PCT/IB/306; absent that, file per the IB’s records and then record the assignment separately.
The deadline
Proof of right must be filed within six months of the Indian filing date. This can be extended by one further month, provided the extension request is filed before the six months expire.
Consequences of non-compliance
- The Controller may refuse the application.
- It opens the door for third parties to revoke a patent granted without proof of right.
Given that exposure, the safe practice is to file proof of right at filing, or within six months, even if the Patent Office does not expressly ask.
Frequently asked questions
What is “proof of right” for a patent application in India? Evidence that an applicant who is not the inventor has the right to apply — required under Section 7(2) where the application rests on an assignment.
When must proof of right be filed? Within six months of the Indian filing date, extendable by one month if requested before the six months expire.
What forms are accepted? Inventors endorsing Form 1, or a notarised/certified assignment deed; for convention cases, a certified copy of the recorded assignment.
What if I do not file it? The Controller may refuse the application, and a granted patent can be challenged for revocation on that ground.
Useful official resources
- The Patents Act, 1970
- IP India patent e-filing portal