Powers of Controller To Make Orders Regarding Substitution of Applicants, Etc

135. Agency.
—
(1) The authorisation of an agent for the purposes of the Act and these rules shall be in Form 26 or in the form
of a power of attorney within a period of three months from the date of filing of such application or document,
failing which no action shall be taken on such application or documents for further processing till such
deficiency is removed. (substitutes "The authorisation of an agent for the purposes of the Act and these rules
shall be in Form 26 or in the form of a power of attorney" by 2016 amendment)
(2) Where any authorisation has been made under sub-rule (1), service upon the agent of any document
relating to any proceeding or matter under the Act or these rules shall be deemed to be service upon the
person so authorising him and all communications directed to be made to a person in respect of any
proceeding or matter may be addressed to such agent, and all appearances before the Controller relating
thereto may be made by or through such agent.
(3) Notwithstanding anything contained in sub-rule (1) and (2), the Controller may, if it is considered
necessary, require the personal signature or presence of an applicant, opponent or party to such proceeding or
matter.
20. Powers of Controller to Make orders regarding substitution of applicants, etc.
(1) If the Controller is satisfied on a claim made in the prescribed manner at any time before a patent
has been granted, that by virtue of any assignment or agreement in writing made by the applicant or
one of the applicants for the patent or by operation of law, the claimant would, if the patent were then
granted, be entitled thereto or to the interest of the applicant therein, or to an undivided share of the
patent or of that interest, the Controller may, subject to the provisions of this section, direct that the
application shall proceed in the name of the claimant or in the names of the claimants and the
applicant or the other joint applicant or applicants, accordingly as the case may require.
(2) No such direction as aforesaid shall be given by virtue of any assignment or agreement made by
one of two or more joint applicants for a patent except with the consent of the other joint applicant or
applicants.
(3) No such direction as aforesaid shall be given by virtue of any assignment or agreement for the
assignment of the benefit of an invention unless-
(a) the invention is identified therein by reference to the number of the application for the
patent; (b) there is produced to the Controller an acknowledgment by the person by whom the
assignment or agreement was made that the assignment or agreement relates to the
invention in respect of which that application is made; or(c) the rights of the claimant in
respect of the invention have been finally established by the decision of a court; or(d) the
Controller gives directions for enabling the application to proceed or for regulating the manner
in which it should be proceeded with under sub-section (5).
(4) Where one of two or more joint applicants for a patent dies at any time before the patent has been
granted, the Controller may, upon a request in that behalf made by the survivor or survivors and with
the consent of the legal representative of the deceased, direct that the application shall proceed in the
name of the survivor or survivors alone.
(5) If any dispute arises between joint applicants for a patent whether or in what manner the
application should be proceeded with, the Controller may, upon application made to him in the
prescribed manner by any of the parties, and after giving to all parties concerned an opportunity to be
heard, give such directions as he thinks fit for enabling the application to proceed in the name of one
or more of the parties alone or for regulating the manner in which it should be proceeded with, or for
both those purposes, as the case may require.
Section 7(2) of the Indian Patents Act states that where the patent application is made by virtue of an
assignment of the right to apply for a patent for an invention, the applicant is required to furnish, either at the
time of filing the application or within six months of the date of filing of the application, a proof of right to
make the application. In other words when an application for patent is made in India by anyone other than the
true inventor(s), then a proof of right to file the patent application in India is to be established.
Section 68 of the Indian Patents Act states that for the assignment to be valid, it has to be in writing in the form
of a document mentioning the terms and conditions of the assignment.
Practice of the Indian Patent Office:
The earlier practice of the Indian Patent Office did not require “proof of right” to be filed when the applicant(s)
and/or inventor(s) of the convention application and/or the PCT application are the same in respect of the Indian
application. However in the case of NTT DOCOMO Inc vs. The Controller of Patents and Designs the
Intellectual Property Appellate Board held that the “proof of right” must be filed for all applications filed in
India where the applicants are not the true inventors.
Different forms of Proof of Right:
Signing of Form 1 by the Inventors: Form – 1 which is the application to file for a patent in India can be
endorsed by the inventors assigning their rights in the invention to the applicant.
Assignment Deed: A notarised/certified copy of the assignment deed signed by the inventors assigning the
rights in the invention in favour of the applicant.
Proof of right in case of Convention Applications:In additional to the above mentioned forms of proof of
right, the applicant can show proof of right by obtaining a notarised/certified copy of the assignment recorded
with the patent office in the convention country.
Proof of right in case of PCT Applications:If the applicant(s) and/or inventor(s) in India are same as that in
the PCT application, then there is no need for proof of right. In the event of any change in the applicant(s)
and/or inventor(s) of the PCT application before filing the national phase application in India, the said change
has to be notified by the International Bureau in Form PCT/IB/306. In the absence of such notification by the
IB, the national phase application needs to be filed in India as per the information available with the IB and
subsequently an application to record the assignment needs to be filed by the present assignee.The applicant can
show proof of right by obtaining signatures of the inventors in Form 1 endorsing the assignment of rights or by
obtaining a notarized/certified copy of the assignment deed.
Power of Controller to make orders respecting division of application. –

(1) A person who has made an application for a patent under this Act may, at any time before the grant of the
patent, if he so desires, or with a view to remedy the objection raised by the Controller on the ground that the
claims of the complete specification relate to more than one invention, file a further application in respect of an
invention disclosed in the provisional or complete specification already filed in respect of the first mentioned
application.
The pertinent points to note in the said enabling provision are:
i. A divisional application can be filed at any time before the grant of the patent; and
ii. An applicant may file a divisional application voluntarily ("if he so desires"), or to remedy the Controller's
objection on the ground that the claims of the parent application relate to more than one invention;
Sub-Section (2) of Section 16 prescribes that the complete specification of the divisional application(s) shall not
include any new subject matter over the original application or disclosure:
16(2). The further application under sub-section (1) shall be accompanied by a complete specification, but such
complete specification shall not include any matter not in substance disclosed in the complete specification filed
in pursuance of the first mentioned application.
And, Sub-Section (3) of Section 16 ensures that the subject matter claimed in the divisional application shall be
distinct from that claimed in the original specification:
16(3). The Controller may require such amendment of the complete specification filed in pursuance of either the
original or the further application as may be necessary to ensure that neither of the said complete specifications
includes a claim for any matter claimed in the other.
Form 1: Application for Grant of Patent
 name and address of the inventor(s),

 name and address of the applicant(s),
 Information corresponding to prior patent applications relating to the current invention, which you or any authorized
entity has filed, and
 some declarations, among other information.
Form 2: Provisional / Complete Specification
Form 2 is used to furnish your patent specification. It may be provisional or a complete patent specification depending of the
type of patent application you are filing.
Form 3: Statement and Undertaking under Section 8
Form 3 is used to furnish information relating to patent applications filed in other countries for the current invention. You would
undertake that you will be keeping the patent office informed in writing the details regarding corresponding applications for
patents filed outside India.
Form 5: Declaration as to Inventorship
This application is used to declare the inventors of the current patent application.
Form 26: Power of attorney (if filed through Patent Agent)
Form 26 is used to assign the power of attorney to the patent agent to deal with the patent application, correspondence and
communication on your behalf.

Powers of Controller To Make Orders Regarding Substitution of Applicants, Etc

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135. Agency.

20. Powers of Controller to Make orders regarding substitution of applicants, etc.

Practice of the Indian Patent Office:

Different forms of Proof of Right:

Power of Controller to make orders respecting division of application. –

The pertinent points to note in the said enabling provision are:

Form 1: Application for Grant of Patent

 name and address of the inventor(s),

Form 2: Provisional / Complete Specification

Form 3: Statement and Undertaking under Section 8

Form 5: Declaration as to Inventorship

Form 26: Power of attorney (if filed through Patent Agent)

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