Does India Follow “First to File” or “First to Invent” Rule in Patent Filing?

PatLit is pleased to welcome the following guest post from fellow blogger Sai Deepak (of The Demanding Mistress, here). Here Sai addresses a fundamental issue, that of entitlement to a patent. This is what he has to say:

Does India Follow “First to File” or “First to Invent” Rule in Patent Filing?

It is a common perception that, under the Indian patent regime, whoever files a patent application over an invention first, is the one entitled to a patent on it. But does this perception have a basis in the Patents Act, 1970? Importantly, is this perception correct?

One of the things that a litigator’s training teaches you is that, no matter how pedantic it may seem, interpretation of the law must not be based on what people think or assume, but must be solidly rooted in what the statute says, which is further backed by logic and common sense. In short, the letter of the law must be given its due, and the enquiry must begin with the wording of the provision, as opposed to a pre-conceived notion of what we think the law is, or ought to be.

If one applied this proposition to the issue at hand, the provision to look into is Section 6 of the Patents Act:

6. Persons entitled to apply for patents 

(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. 

(2) An application under sub-section (1) may be made by any of the persons referred to therein either alone or jointly with any other person.

From the above, it is clear that Section 6 governs the entitlement of a person to file an application for a patent. The provision says that “any person claiming to be the true and first inventor of the invention” may file an application for a patent. The provision uses both “true” and “first”, in that order. This means the person must have invented the invention by himself (or by themselves in case there are several inventors) without free-riding on the efforts of another person. The second condition is that the person must also be the “first one to truly invent” the invention. Nowhere does the provision seem to convey a “first to file” rule where entitlement is based on prior filing.

Given this, where do we get the conclusion from that India follows a “first to file rule” when the emphasis is clearly on the first person to truly invent the invention?

Merely because a person files an application for a patent “claiming to be the true and first inventor”, does it follow that his claim is irrebuttable? Since the requirements under Section 6 are conjunctive and hence two-fold i.e. “true and first”, even if the person’s claim of being the true inventor is in fact true, it is possible that he may not be the first inventor. It is only his belief/claim that he is the first inventor because to the best of his knowledge no one seems to have published the invention in public domain or has filed for a patent.

Be that as it may, his belief could be misplaced, and it might be possible for another person to prove that he (the other person) is not only the true inventor, but was also the first one to invent the invention. If so, does the Act provide for a remedy which could be invoked to prove “true and first inventorship”?

To the best my knowledge and understanding, there is no such remedy under the pre and post-grant opposition mechanisms in Section 25(1)(a) or (2)(a) since both refer to an invention which has been “wrongfully obtained”, which is also dealt with under Section 64(1)(c) which deals with revocation of patents. Reproduced below are the relevant provisions:

25. Opposition to the patent

(1) Where an application for a patent has been published but a patent has not been granted, any person may, in writing, represent by way of opposition to the Controller against the grant of patent on the ground—
(a) that the applicant for the patent or the person under or through whom he claims, wrongfully obtained the invention or any part thereof from him or from a person under or through whom he claims; 

(2) At any time after the grant of patent but before the expiry of a period of one year from the date of publication of grant of a patent, any person interested may give notice of opposition to the Controller in the prescribed manner on any of the following grounds, namely:—
(a) that the patentee or the person under or through whom he claims, wrongfully obtained the invention or any part thereof from him or from a person under or through whom he claims;64. Revocation of patents.— 

(1) Subject to the provisions contained in this Act, a patent, whether granted before or after the commencement of this Act, may, be revoked on a petition of any person interested or of the Central Government by the Appellate Board or on a counter-claim in a suit for infringement of the patent by the High Court on any of the following grounds, that is to say—
(c) that the patent was obtained wrongfully in contravention of the rights of the petitioner or any person under or through whom he claims;

“Wrongfully obtained”, as understood from these provisions, refers to a situation where the true inventor has been defrauded by another person who has applied for a patent or who has been granted one. In other words, the patent applicant/patentee is not the “true inventor” since he has obtained the invention “wrongfully”. If the true inventor’s challenge under these provisions is successful, the patent application/patent shall be transferred to his name pursuant to Sections 26 and 52 respectively.

However, an allegation of an invention being “wrongfully obtained” is distinct from the issue under discussion. The distinction is that while Sections Section 25(1)(a) or (2)(a) and 64(1)(c) address a situation where fraud is committed on the true inventor, the issue under discussion refers to a situation where the patent applicant has not committed fraud, but is merely under the factually misplaced belief that he is the “true and first inventor”.

Based on my reading of the Act, the remedy for the second situation lies in Section 64(1)(b) which provides for a ground of revocation based on to “entitlement to apply for a patent”. This, in my opinion, is a reference to Section 6 which says who says who is entitled to apply for a patent. Reproduced below is Section 64(1)(b):

64. Revocation of patents. 

(1) Subject to the provisions contained in this Act, a patent, whether granted before or after the commencement of this Act, may, be revoked on a petition of any person interested or of the Central Government by the Appellate Board or on a counter-claim in a suit for infringement of the patent by the High Court on any of the following grounds, that is to say—

(b) that the patent was granted on the application of a person not entitled under the provisions of this Act to apply therefor:

To cut a long story short, while Section 64(1)(c) addresses an allegation of the invention being “wrongfully obtained”, Section 64(1)(b) addresses a situation where the “true and first inventor” challenges the grant of a patent by virtue of him being the “true and first inventor”. Therefore, if a person X believes that another person Y ought not to have been granted a patent since X conceived of the invention before Y, and Y is merely the first filer of the patent application, X has a remedy under Section 64(1)(b) after the patent has been granted. Surprisingly, such a remedy has not been provided for under the pre and post-grant oppositions in Section 25(1) or (2). Consequently, X has to wait until a patent is granted in order for him to challenge its grant.

However, what is certainly clear from the above is that the statute adopts a “first to invent” rule, and not “first to file”. Despite the absence of any ambiguity in the statutory framework, it is indeed intriguing that most people assume that India follows the “first to file” rule.

The policy argument that could be used to support the “first to invent” rule is that if the true and first inventor does not wish to file for a patent, and instead wishes to protect his invention as a trade secret, why should another person be granted a patent merely because he is the “first to file”?