The blog highlights the interpretation of section 28 of Indian Patent Act, 1970 which is not as straightforward as it seems. We are all familiar with provisions of section 28 which is “Mention of inventor as such in patent”. The logical explanation of the section seems straight forward i.e. if you are an inventor and have made substantial contribution to the invention then even at a later date, subject to the other conditions of the section the name can be added as inventor, if a request is made accordingly. However, the practice elucidates and imparts totally different understanding.
Section 28:“Mention of inventor as such in patent”
(1) If the Controller is satisfied, upon a request or claim made in accordance with the provisions of this section,—
- that the person in respect of or by whom the request or claim is made is the inventor of an invention in respect of which application for a patent has been made, or of a substantial part of that invention; and
- that the application for the patent is a direct consequence of his being the inventor,
the Controller shall, subject to the
provisions of this section, cause him to be mentioned as inventor in any patent
granted in pursuance of the application in the complete specification and in
the register of patents:
Provided that the mention of any person as inventor under this section shall
not confer or derogate from any rights under the patent.
(2)A request that any person shall be mentioned as aforesaid may be made in the prescribed manner by the applicant for the patent or (where the person alleged to be the inventor is not the applicant or one of the applicants) by the applicant and that person.
(3) If any person other than a person in respect of whom a request in relation to the application in question has been made under sub-section (2) desires to be mentioned as aforesaid, he may make a claim in the prescribed manner in that behalf.
(4) A request or claim under the foregoing provisions of this section shall be made before the grant of patent.
(5) Where a claim is made under sub-section (3), the Controller shall give notice of the claim to every applicant for the patent (not being the claimant) and to any other person whom the Controller may consider to be interested; and before deciding upon any request or claim made under sub-section (2), or subsection (3), the Controller shall, if required, hear the person in respect of or by whom the request or claim is made, and, in the case of a claim under sub-section (3), any person to whom notice of the claim has been given as aforesaid.
(6) Where any person has been mentioned as inventor in pursuance of this section, any other person who alleges that he ought not to have been so mentioned may at any time apply to the Controller for a certificate to that effect, and the Controller may, after hearing, if required, any person whom he may consider to be interested, issue such a certificate, and if he does so, he shall rectify the specification and the register accordingly.
If we read the above section the main points are:
- 28 (1) upon request;
- 28 (1) (a) a person who has made substantial contribution in an invention; and
- 28 (1) (b) and the application of patent is the direct consequence of such contribution
If these conditions are met the Controller shall allow the request, providing
- 28 (2) a request shall be made by that person (inventor to be added) in the prescribed manner;
- 28 (3) if any person other than the inventor to be added wants to make the application for mention of an inventor even then an application in the prescribed manner has to be made;
- 28 (6) a notice is served to all the applicant, and
- 28 (7) a certificate is issued to that effect in case the request is in order.
Section 28 is only applicable to the letter of patents, describes that if an Inventor’s name needs to be mentioned in the Letter of Patents, then before the grant the patent, the applicant and the inventor may request the same on Form 8 with payment of prescribed fee.
Contents of Letter of Patents (LOP/LPD)/Patent Certificate are:
Patent No.: ---------------------
Application No.: --------------------
Date of Filing: ------------------------
Patentee: ---------------------------------------------------------
It is hereby certified that a patent has been granted to the patentee for an invention entitled ----------------------------------------------------- as disclosed in the above mentioned application for the term of 20 years from the -------------------------------- in accordance with the provisions of the Patents Act,1970.
The LOP/LPD generally does not mention the name of the Inventors, it only mentions the Name of the Patentee.
If one wishes to mention the name of inventors in the LOP/LPD, then one must put a request in Form 8 to the Controller. Then the Contents of the LOP/LPD or Patent Certificate appear as follows:
Patent No.: ---------------------
Application No.: --------------------
Date of Filing: ------------------------
Patentee: ---------------------------------------------------------
Inventors: --------------------------------------------
It is hereby certified that a patent has been granted to the patentee for an invention entitled ----------------------------------------------------- as disclosed in the above mentioned application for the term of 20 years from the -------------------------------- in accordance with the provisions of the Patents Act,1970.
A very common question asked by applicants of a patent application is “Can the following section be also used to add or remove the name of an inventor in a patent application which has been filed”.
Before we answer the question following are some important provisions described in The Indian Patent Act 1970.
Section 6 of The Indian Patent Act 1970 describes who are entitled to apply for a patent.
Section 6: Persons entitled to apply for patent:
(1) Subject to the provisions contained in section 134, an application for a patent for an invention may be made by any of the following persons, that is to say,-
(a) by any person claiming to be the true and first inventor of the invention;
(b) by any person being the assignee of the person claiming to be the true and first inventor in respect of the right to make such an application;
(c) by the legal representative of any deceased person who immediately before his death was entitled to make such an application.”
Hence, “True and First Inventor” himself, or “Assignee” of true and first inventor, or “Legal Representative” of any deceased above persons can apply for a patent. The person or entity applying for the patent is called the “APPLICANT”. The patent application also names the Inventors in the patent application. The inventors to be declared are the true and first inventors.
The term “Inventor” though not defined in the Patent Act 1970 can be interpreted as the natural person who has contributed towards an invention with his skills, ingenuity, or technical knowledge. It can also be interpreted that an Inventor is always a natural person and not any entity.
As per sub-rule 6 of Rule 13 of The Indian Patent Act 1970, every patent application needs to be accompanied “Declaration of Inventorship”. This declaration provides the list of names, nationalities, and addresses of all “True and First Inventors” who have contributed towards the Invention with respect to which the patent application has been filed.
Rule 13: Specifications:
“(6) Except in the case of an application (other than a convention application or an application filed under the Patent Cooperation Treaty designating India) which is accompanied by a complete specification, a declaration as to the inventorship of the invention shall be filed in Form 5 with the complete specification or at any time before the expiration of one month from the date of filing of the complete specification, as the Controller may allow on an application made in Form 4.”
Now the QUESTION is whether one “CAN ONE ADD OR REMOVE NAME OF INVENTOR” or whether one can use Form 5 to Mention an inventor as such in patent?
Mention of an inventor depends on Declaration of Inventorship in FORM 5. Once Form 5 is filed for a patent application one cannot add or remove a name of a person as inventor.
Declaration of Inventorship is the document that lists the names, nationalities and addresses of inventors who have contributed towards the invention. Once filed, addition and/or deletion of names of the inventors is not permitted.
Therefore, the best strategy is to file the Declaration of Inventorship at the time of filing the Complete Specification or within 1 month of the filing the complete specifications so that if any significant comes up during trial or optimization of the invention, the person may be included.
TAKEAWAY POINTS:
- Once Declaration of Inventorship is filed, one cannot add or remove names of inventors;
- It is best to file Declaration of inventorship at the time or after filing Complete Specifications, and not at the time of Provisional specifications;
- Section 28 does not allow addition or removal of new names of inventors which have not been declared under Declaration of Inventorship (Form 5);
- Section 28 only allows to mention or remove the names of Inventors as declared Declaration of Inventorship (Form 5) in the LPD/LOP/Patent certificate.
Authors: Dr. Madhavi Muppirala ( Phd, Patent Agent), Amit Sudarsan (Toxicologist, LLM – IPR)