Madras High Court: In a civil appeal filed against the impugned order rejecting the grant of patent, Senthilkumar Ramamoorthy, J. said that there is a distinction between the date of assignment and the date of declaration relating thereto, and the impugned order is the consequence of conflating the two. Therefore, the Court set aside the impugned order. Further, it directed the Controller of Patents and Designs to provide a reasonable opportunity to the appellant, and to issue a reasoned decision within a period of four months from the date of receipt of this order.
The appellant filed a patent application on 24-10-2014 before the Patent Office. The said application was the national phase application corresponding to PCT International Application. In the application, the appellant had stated that the inventors were Iskren Ianev, Yannick Lair and Kouhei Gotou and that the said inventors had assigned the invention to the appellant. Subsequently, the declaration of the inventors to the effect that they had assigned the invention was provided. The declaration issued by Yannick Lair in Form 1 was dated 07-02-2015, which was the date of declaration. On that ground, the patent application was rejected as being in violation of Section 7(2) of the Patents Act, 1970. Thus, the present appeal was filed.
The appellant submitted that although the inventors had assigned the invention to the appellant earlier one of the inventors, Yannick Lair, put down the date of signing the declaration while signing. The inventor’s declarations were within the statutory timeframe, emphasizing that the date on Yannick Lair’s declaration was misconstrued as the assignment date.
The Court took note of Section 6 of the Patents Act which sets out the persons who are entitled to apply for a patent. Apart from the true and first inventor, clause (b) of sub-section (1) enables the assignee of the true and first inventor to make the application. If an application is made by the assignee, Section 7(2) requires the applicant to provide proof of the right to make the application within the prescribed period, that is six months from the date of filing of the application.
The Court said that the appellant has provided declarations from the inventors within the prescribed period and the only question to be considered is whether the declaration of Yannick Lair is in consonance with the statutory prescription.
The Court noted that the declaration issued by the appellant on 14-10-2022 asserts that the inventors were employed by the company and that the invention was a work product in course of employment. In such declaration, each inventor, including Yannick Lair, has recorded that the invention has been assigned and that the assignee is entitled to claim rights in respect of the application filed before the US Patents office and any corresponding foreign patent office.
The Court said that the assignment was pre-dated from the declaration dated 07-02-2015 by Mr.Yannick Lair. Further, it said that there is a distinction between the date of assignment and the date of declaration relating thereto, and the impugned order is the consequence of conflating the two. Therefore, the impugned order is unsustainable and is set aside.
The Court also directed the Controller of Patents and Designs to decide the patent application on merits and in accordance with law.
[NEC Corporation v Assistant Controller of Patents and Designs, 2023 SCC OnLine Mad 7894, decided on 19-12-2023]
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