Challenges with adding or removing an inventor in a filed Indian patent application
30 November 2022
The Ayyangar Committee’s report, which was issued in 1959 and provides the legislative intent behind most of the provisions of today’s Indian patent law, states that an inventor has a moral right to be named as the inventor. Such a mention, besides affording the inventor mental satisfaction, gives prestige to the inventor and increases his economic worth. Therefore, the main purpose of naming the inventor is to ensure that the creator of an invention is entitled to the associated benefits or rewards. This is also to encourage inventors to continuously develop inventions and contribute to the growth of the country.
Therefore, it is imperative that the inventors are correctly credited for their contribution in development of an invention by being named in the corresponding patent application. Accordingly, at the time of filing the application, the applicant is required to provide the inventor(s) details, such as the full name, address, and nationality, which are then recorded in the patent register when the patent is granted. It is of utmost importance that the inventors for a particular invention are correctly identified for being named in the patent application before the application is filed, at least to avoid any unwanted disputes later. This is also because amending the list of inventors of an application after the application is filed has its own share of procedural and organizational challenges.
Interestingly, it happens quite often that the applicants wish to add or remove an inventor from the patent application after the application is filed. However, the procedure for amending the list of inventors of a filed application at the Indian Patent Office (IPO) is arguably not consistent amongst the country’s four patent offices (and even amongst the Controllers at the same patent office).
To start with, there are inconsistencies in terms of the form that is needed to be filed for requesting an addition or removal of an inventor from the application. The general understanding of the practise at the IPO nowadays indicates that the applicant is required to file Form 13 along with the prescribed fee to request for addition of an inventor to the patent application or for removal of an inventor from the patent application. It should be noted that the title of Form 13 says it is an application for amendment of the application for patent/complete specification/any document related thereto. Therefore, it may not be obvious to an applicant to file the Form 13 for this request.
In fact, quite often, the applicants file a Form 8 for filing such a request rather than Form 13. This may be because the title of Form 8 says it is a request or claim regarding mention of inventor as such in a patent. In practise, the IPO considers the Form 8 to be filed for having the name of the inventors published on the patent certificate. Usually, the patent certificate issued by the IPO when the patent to an application is granted only mentions the name of the applicant and not of the inventors. Therefore, it is understandable when inventors also request for publication of their names on the patent certificate. In such cases, the IPO asks the applicant to file the Form 8 along with the prescribed fee for having the names of the inventors published on the patent certificate.
However, the problem arises when the IPO also provides contradictory instruction in terms of filing Form 13 or Form 8 for addition or removal of the inventor. In some cases where the Form 8 is filed for this request, the Controller has asked for filing of Form 13. On the contrary, there are cases where the Controller asked for Form 8 when the applicant filed Form 13. In fact, in a few instances where the request was for removal of inventor from the application, the Controller asked for a petition u/R 137 to be filed along with Form 13, particularly stating that there is no provision for deletion of the inventor from the filed application in the Patents Act. Moreover, particularly in the case of deletion of the inventor’s name, the IPO sometimes requests for a non-objection certificate from the inventor-in-question, which appears to be a cautionary approach by the Controller to avoid any disputes later. This sort of uncertainty leads to lack of clarity in terms of following the proper procedure for effecting such a change in the list of inventors.
To dig deeper, the filing of Form 8 is governed by Section 28 of the Patents Act and Rules 66-70 of the Patents Rules. From a simple reading of Section 28 and Rules 66-70, it does not seem practical to have such an elaborate procedure as is prescribed in these provisions, only for the publication of the inventor(s)’ name on the patent certificate.
For example, Section 28(6) states that before deciding on the request or claim for a person to be mentioned as the inventor, the Controller shall, if required, hear the person in respect of or by whom the request or claim is made. Particularly, in case the claim is made by any person other than person making the request under Subsection (2), Section 28(6), states that the Controller shall give notice of the claim to every applicant or to any other person whom the Controller may consider to be interested. It further states that in case of a claim under Subsection (3), the Controller shall, if required, hear any person to whom notice of the claim has been given. Further, Section 28(7) states that 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 apply to the Controller for a certificate to that effect. This subsection appears to be for deletion of an inventor from the patent application.
Similarly, Rule 69 states that the procedure specified in Rules 55A and 57 to 63 relating to the filing of notice of opposition, written statement, reply statement, leaving evidence, hearing and cost shall, so far as may be, apply to the hearing of a claim or an application under Section 28 as they apply to the opposition proceedings subject to the modification that reference to patentee shall be construed as the person making the claim, or an application, as the case may be.
Therefore, it can arguably be construed that these relate to addition and removal of the inventor from the list of inventors of the application. Only if we refer to Rule 69, stating the procedure, which mentions that the procedure of opposition proceedings is to be implemented in the hearing under Section 28, it can be made out that such elaborate procedure cannot be prescribed only for the publication of the inventors’ name on the patent certificate. Therefore, it is arguable that Form 8 is meant only for the publication of inventors’ name(s), as it is being currently used.
Nevertheless, even if we consider Form 13 for filing such requests, there is ambiguity in terms of expectations of the Controllers at the IPO. This often leads to the applicants filing multiple forms, Form 8 and Form 13, requesting for amending the list of inventors of an application, which in turn incurs additional cost to applicants and eventually results in prolonged prosecution of the application. Therefore, it would be helpful for the applicants if there is consistency in terms of the process to be followed for addition or removal of inventors from a filed application.
As a stakeholder, it is our duty to help the IPO to improve the IP framework of the country and bring it to the highest standards, which would also entail proposing solutions to the issues that we have encountered, instead of just complaining about it. One possible solution to bring clarity to resolve this issue could be to have Form 8 be filed for addition of removal of the inventor from the patent application, as the procedure mentioned in the associated sections and rules also indicate its purpose to be that only. Further, the request to publish the name of the inventors on the patent certificate can be taken through a Form 30 along with the prescribed fee, if any, which is meant to be used when no other form is prescribed.
In the last few years, the IPO has been relentlessly working on improving the overall IP framework of the country and have been successful in resolving a lot of long pending issues, which is nothing short of being admirable. Therefore, it would not be unreasonable to expect a solution to this issue as well in the times to come.