Debating over Dates!! Assignment or Endorsement?

Can a simple date of signing of Form-1 spark off a legal drama? Seemingly so…Lets discuss  NEC Corporation v Assistant Controller of Patents, where statutory requirements and innovation collide. This case depicts how a simple signature date can spark a legal saga. Let’s find out!

Case Overview

In a significant decision dated 19 December 2023, Honourable Justice Senthilkumar Ramamoorthy of the Madras High Court addressed the subtler nuances between the “date of declaration” and the “date of assignment”.

Facts

Appellant NEC Corporation filed a national phase application before the Indian Patent Office (IPO) on October 24, 2014. In the application, the Appellant stated that the inventors were Iskren Ianev, Yannick Lair and Kouhei Gotou.

For those unacquainted with the procedural intricacies of the Patents Act 1970, if the inventor(s) is/are not the applicant(s), a Proof of Right to apply for a patent has to be submitted. This can be as an ‘endorsement or declaration’ in the appropriate paragraph of FORM-1 or as an ‘assignment’ from inventor(s) in favour of applicant(s), duly authenticated, which must be filed within six months from the date of filing of the application in India.

Subsequently, the inventors’ declarations were provided by the Appellant through FORM-1, stating that the inventors had assigned the invention to the Appellant.

A Date to Remember!

While all the three inventors signed the declaration in FORM-1, one of them, Yannick Lair, signed with the date as February 7, 2015 (date of declaration). Seems straightforward, right? Not quite. This date set the stage for the legal drama.

(Source: Website of India Patent Office)

Later the patent application was rejected by the IPO, which is the basis of the present Appeal. The rejection stemmed from an alleged violation of Section 7(2) of the Act of 1970, due to perceived discrepancies in the inventor’s declaration dates, deeming the Proof of Right inappropriate leading to IPO’s refusal of patent grant.

Appellant’s Stance

The Appellant argued that the submission of declaration by the inventors was well within the prescribed timeline of 6 months (ending on 24 April 2015) from the filing date under Rule 10 of the Patent Rules 2003 and thus was in compliance with the statutory requirements.

Additionally, they contended that the inventors had assigned the invention to the appellant earlier. However, one of the inventors, Yannick Lair, had merely jotted down the date while signing the declaration in FORM-1. This date of signing the declaration in FORM-1 (“date of declaration”) was misconstrued as the “date of assignment.”

The Appellants substantiated their contention by highlighting the Assignment and Inventor’s Declaration which was on record for the corresponding application made before the US Patent Office (USPTO), confirming that the inventors were employed by the Appellant and the invention was developed during the normal course of their employment. In the 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 USPTO and any corresponding foreign patent office.

Court’s Analysis and Judgement

The Court noted that the Appellant had provided the necessary declarations within the prescribed timeline. According to Sections 6 and 7 of The Patents Act, 1970, the Assignee is required to furnish Proof of Right within six months of filing the patent application, which had been complied with by the Appellant.

Moreover, the Court deliberated on the distinction between the “date of assignment” and the “date of declaration” and concluded that the assignment had occurred before Yannick Lair’s declaration at the IPO and that the refusal order had mixed the two dates.

Thus, the Court set aside the refusal order, directing the IPO to reassess the patent application and decide on merits within four months. This ruling significantly refines the understanding and application of Sections 6 and 7 of the Patents Act 1970 and Rule 10 of Patent Rules, 2003.

Moreover, the judgment accentuates the importance of clarity in patent documentation ensuring every date, signature, and form is meticulously filled and documented. Further, interpretation of the statute to understand nuanced differences between similar legal terms is also highlighted.

A skilled law firm can help navigate the complexities of patent applications, ensuring that all documents are in order, diligently prepared and deadlines are met. The team of lawyers at SJP are adept at providing expert advice firstly for preventing such issues and also for handling any legal challenges effectively thus saving time and money. Stratjuris Law Partners offers end-to-end services for patent filing and protecting your innovation.

Stay tuned for more insights into the world of patents and law. Keep innovating and make sure your legal bases are covered!

REFERENCES

CMA(PT)/29/2023 – NEC Corporation v Assistant Controller of Patents