The True and First Inventor

1The Patents Act does not define the expression ’true and first inventor’. It merely excludes the first importer of an invention into India, and a person to whom an invention is first communicated from outside India, from the ambit of the expression."(Patents Act 1970, s 2(1)(y).)

2On the issue of identifying the inventor, the British courts have held that it is essential to identify the inventive concept of the claims first and then to see who was responsible for it or who devised it. (Henry Brothers (Magherafelt) Ltd v Ministry of Defence and Northern Ireland Office (1997) RPC 693, p 706 (Pat Ct), (1999) RPC 442, p 448 (CA). In the above case, the patent was for prefabricated blast-resistant building structures. Before the Patents Court, the applicant made a claim for compensation for Crown use under ss 55 to 58 of UK Patents Act 1977. The court ordered revocation of the patent on the ground that ’the patent was granted to a person who was not entitled to be granted that patent’. See also Stanelco Fibre Optics Ltd’s Applications [2004] EWHC 2263, (2005) RPC 15, para 12; Minnesota Mining and Manufacturing Co’s International Patent Application (2003) RPC 541.) Inventive effort or intellectual contribution to the invention is the criterion for determining whether a person is a true and first inventor. Financial or material contribution, however, shall not entitle a person to be a true and first inventor. A partnership firm or a corporate entity, for this reason, cannot be the sole applicant claiming to be the inventor. (VB Mohammed Ibrahim v Alfred Schafranek AIR 1960 Mys 173, p 175.) But a firm or a company may be registered as a joint patentee along with the first and true inventor.

3A person making a suggestion, such as a claim limitation, having no substantial bearing on the inventive concept, will not be regarded as a joint inventor. (Stanelco Fibre Optics Ltd’s Applications [2004] EWHC 2263, (2005) RPC 15, para 15A.) Similarly, a person who adds common general knowledge of those in the art to the inventor’s idea cannot be regarded as an inventor. (University of Southampton’s Applications [2006] EWCA Civ 145, (2006) RPC 21, para 39.)

4An application should state that the person making the application is in possession of the invention and also mention the name of the inventor. The application for grant may be made in the joint names of the employer and the employee; in such cases the employee may be entitled to compensation. (See UK Patent Act 1977, ss 40 and 41, which provides for compensation to the employee.) Usually, the employer will apply for the grant of the patent in its own name. The employer (applicant) shall disclose the name of the true and first inventor and shall make a declaration that he believes the person so named to be the true and first inventor. (Patents Act 1970, s 7(3).)

5Section 28 of the Patents Act provides for a mechanism by which the inventor may secure his right to be identified with the invention. If the Controller is satisfied, by a request or a claim made before him:

(a) 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

(b) that the application for the patent is a direct consequence of his being the inventor, the Controller shall cause such person to be mentioned as inventor in any patent granted in pursuance of the application in the complete specification and in the register of patent: Provided that the mention of any person as the inventor under this section shall not confer or derogate from any rights under the patent.

6The Controller is empowered, upon a request or claim made to him, to cause the inventor’s name to be mentioned in any patent granted as well as in the register of patents, in the manner mentioned in r 70. (Patents Act 1970, s 28(1).) A request for the inventor’s name to be mentioned shall be made in Form 8 either by the applicant (where the applicant is the inventor) or jointly by the applicant and the inventor (where the applicant is not the inventor). If any other person desires to be mentioned as the inventor, a claim shall be made to that effect in Form 8. Such a request or claim shall be made before the grant of the patent. (Ibid, s 28(4).)

7When a request or a claim is made under s 28, the Controller shall give notice to every applicant and interested persons and give opportunity to hear the persons concerned before deciding the request or claim. The Controller shall follow the same procedure as in the case of opposition proceedings. (Ibid, s 28(6); Patents Rules 2003, r 69.) Section 28 provides for special powers for rectification of the register in cases where a person who ought not to have been mentioned as the inventor has been mentioned as one. Any person may apply to the Controller for a certification of rectification, which may be granted after hearing the interested persons. Upon the issue of such a certificate, the specification and the register shall be rectified accordingly. (Ibid, s 28(7).) A proceeding under s 28 confers a special power on the Controller to rectify the register consequent to a request or a claim being made in accordance with that section. The general power of rectification of register vests with the Appellate Board." (Ibid, s 71.)

8The applicant has to make a declaration as to inventorship in Form 5 showing the name, nationality and address of the true and first inventor. Such a declaration is not required in the case of an ordinary application filed along with the complete specification. However, a declaration is needed in case of a Convention application, a PCT National phase application and where the complete specification is filed after the provisional specification is made. (Patents Act 1970, s 10(6); Patents Rules 2003, r 13(6).)

9Under the 1911 Act, in Shining Industries v Shri Krishna Industries (1974) the Allahabad High Court concluded “that the mechanism of the lock (Exh. II) was not a new invention on the date its patent was applied for and that neither the respondent nor Bodhraj Anand was the first and true inventor thereof” (para 39), and held that “Clauses (b) and (c) of Sub-section (1) of Section 26 are clearly attracted on this finding and the counter-claim should therefore succeed.” (para 48)