8/16/2021 VIDEAIM IP - LEADING IPR FIRM IN BANGALORE/GURGAON

ADDING OR REMOVING INVENTOR

FROM PATENT APPLICATION – IS SEC-
TION 28 OF INDIAN PATENT ACT
RELEVANT?

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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

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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

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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

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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.: --------------------

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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
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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,-

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(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.

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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.

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TAKEAWAY POINTS:

1. Once Declaration of Inventorship is

filed, one cannot add or remove names of
inventors;
2. It is best to file Declaration of
inventorship at the time or after filing Complete
Specifications, and not at
the time of Provisional specifications;
3. Section 28 does not allow addition or
removal of new names of inventors which have
not been declared under
Declaration of Inventorship (Form 5);
4. 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)

VIDEAIM IP – LEADING IPR FIRM IN BANGALORE/GURGAON /

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