In a case argued by Remfry & Sagar, the Intellectual Property Appellate Board (IPAB) has issued a landmark ruling on the issue of ‘submission of proof of applicant’s right’ to file a patent application in India for PCT national phase applications. In its order of October 27, 2020 (OA/63/2020/PT/DEL), the IPAB has held that the legal requirement of filing ‘proof of right’ can be met by filing of the PCT Declaration under PCT Rule 4.17(ii).

Historically, applicants have generally been addressing this requirement through submission of documents such as an assignment deed or executed Application Form 1 signed by the inventors. However, in the case of PCT national phase applications, for the benefit of its applicants/clients, the Firm has been at the forefront in developing a practice (with a sound legal basis) that endeavours to meet this requirement by submission of a PCT Declaration under Rule 4.17(ii) supporting the ‘applicant’s entitlement to apply for or be granted a patent’. ‘PCT Applicant’s Guide - National Phase for India’, which has been endorsed by India and the Indian Patent Office (IPO), clearly states that the proof of right requirement can be met if the corresponding declaration is made at the PCT stage. Further, PCT Rule 51bis 2(ii) envisages that a designated office shall not require any document/evidence for an applicant’s entitlement to apply for patent, if Declaration under Rule 4.17(ii) is contained in the request or is submitted directly to the designated office, unless, the designated office may reasonably doubt the veracity of the said Declaration. However, in spite of these provisions, there was a lack of uniformity in the practice of the Indian Patent Office in accepting such a Declaration which led to applicants having to furnish an assignment document or a duly executed Form 1, without being provided a reason as to why the veracity of the PCT Declaration was being questioned.

In the present case, after perusing all facts and arguments the IPAB pertinently observed that there was no denial on the part of the appellant about the requirement of ‘proof of right’ in case of PCT National phase applications. Rather, what the appellant precisely argued was that in case of availability of the Declaration under Rule 4.17(ii) of the PCT, such requirements were considered to have been met. The Board further noted that no indication was available to suggest that the IPO had, at any point of time, shown a reasonable doubt on the veracity of the Declaration furnished. Thus, it went on to hold that the IPO had not comprehensively accounted for legally accepted norms by which the requirements of filing ‘proof of right’ could be satisfied and that such legal requirement could be met by filing of the PCT Declaration under PCT Rule 4.17(ii).

This order assumes great significance as it is the first judicial endorsement on this issue setting up much needed precedence on the acceptability of PCT Declaration 4.17(ii) in lieu of assignment deeds/executed Form 1 as a valid proof of right document.