In the previous post, I discussed the Indian position on wrongful obtainment and also took a small detour into UK law to understand how they resolve their entitlement claims. In this post, I will be arguing for a more systematic approach to deciding our wrongful obtainment claims based on the precedents present in UK law, and we will also discuss Markem Corp v Zipher Ltd (England and Wales Court of Appeal, 2005), which Yeda overruled and its relevance in the Indian context.

Moving towards a Wrongful Obtainment Standard:

Having a clear step-by-step approach to analysing a wrongful obtainment claim is useful and builds a level of certainty in adjudication. As was seen earlier, even though the Patent Office and IPAB in FDC had given some guidance, no clear systematic standard or test was provided as to how the wrongful obtainment claims would be decided. Likewise, there is no consistency in how wrongful obtainment claims are decided. For example, the Asian paints order did not refer to any presumption in favour of the applicant. NIT Durgapur’s order, as pointed out earlier, also lacked any detailed legal reasoning. 

Secondly, the presumption in favour of the applicant is slightly problematic. While filing for a patent application, as pointed out earlier, the applicant files Form 1, in which the details of the true and first inventor/s are provided. In the case of an assignee, a declaration from the inventor/s is provided. Further, Section 6 itself states, “any person claiming to be the true and first inventor”. Thus, anyone claiming to be the true and first inventor can file or assign away the rights to an assignee, who then can apply, and then it is presumed that they are eligible as per Section 6. It is not a claim tested or examined by the Patent Office. The applicant has not done anything to earn the presumption in his favour. Merely filing an application with a declaration is insufficient to infer the case in his favour and impose a higher evidentiary burden on the opponent unless other policy justifications or statutory mandates exist. Neither the Patent Office nor IPAB in FDC seems to advance any clear reasons to presume it in favour of the applicant in a wrongful obtainment claim. The Sustainable Community Order cites old UK precedents to justify the presumption. However, as explained above, there are strong reasons not to follow them. Two additional arguments exist against the presumption in favour of the applicant; firstly, even though ‘any person’ can file for opposition under Section 25(1) for making a claim of wrongful obtainment under Section 25(1)(a) it is required that the invention should have been obtained from him or someone from whom he claims his right. Thus the scope of who can challenge under 25(1)(a) is narrowed. Additionally, as per the new Patent rules, the requirement of the opponent to show a prima facie case gives more reason to deny the applicant the presumption in his favour when the opponent has crossed the prima facie threshold. Thus, with numerous benefits stacked in favour of the applicant, there is no specific policy reason to add one more to the list.

Thirdly, with regards to the relevance of ‘wrongful’ before obtainment, as discussed earlier, the rule laid down by the UK Court of Appeal in Markem Corp v Zipher Ltd (Markem), which was overturned by the House of Lords in Yeda is instructive, the rule is as follows:

“[A] must be able to show that in some way B was not entitled to apply for the patent, either at all or alone. It follows that A must invoke some other rule of law to establish his entitlement – that which gives him title, wholly or in part, to B’s application.”   

Thus, as per Markem, it’s not enough to show entitlement over the invention; one must also establish a claim in some other rule of law (allegations of breach of contract or a duty of confidence) for the entitlement claim to succeed. Even though Yeda overturned Markem, clarifying that it is not required in an entitlement claim to establish an additional cause of action like a breach of contract or breach of duty of confidence. Yet this position might be relevant in India since the question is not about obtaining the invention but ‘wrongful obtaining’ it.

Thus, the modified Indian Wrongful Obtainment test can be as follows:

1. Identify the inventive concept of the invention in question 
2. Trace the inventive concept to the inventor or inventors (without any presumption in favour of the applicant)
3. Determine how ownership changes due to the operation of any assignment or contract. 
4. Is there a breach of law established by the applicant which consequently leads to the obtainment of the invention? (adopting this step from Markem if wrongful obtainment requires the existence of an element of illegality or fraud)

The test’s third and fourth step of the test can be grounds for contestation for the following reasons. The 3rd and the 4th steps require the Patent Office to decide on questions of law and fact that are beyond Patent law.
The third step would require the Patent Office to engage in contract interpretation. The fourth step will require the Patent Office to decide on questions of breach of confidence, breach of contract, etc. However, these won’t necessarily be problems if raised in the case of a revocation petition under Section 64, as the matter would be before a High Court. Yet it has to be noted that in all the Patent Office orders involving wrongful obtainment, the Patent Office had no choice but to wade into these areas due to the nature of the dispute and the contentions raised by the parties and since wrongful obtainment itself is not defined in the act.      

As to whether wrongful obtainment should have an element of illegality or fraud, there are two separate and distinct issues: one is legal, and the other involves policy. IPAB in FDC adopted a position similar to that of the House of Lords in Yeda, where wrongful obtainment might not necessarily imply the existence of fraud or illegality. Yet, this interpretation advanced by FDC does not account for as pointed out in the previous post of using the word ‘wrongful’ before obtainment in the statute and Section 52, which makes a connection between fraud and wrongful obtainment.
On the policy front, there is the question of whether to impose an additional burden on the opponent to also show an additional cause of action over and above obtainment, as provided above. Likewise, this would also apply equally to the third step, which is whether the Patent Office is capable of assessing claims and making legal determinations on questions beyond patent law. This blog has repeatedly pointed out how the Patent Office is facing difficulties in deciding legal issues that neatly fall under the four corners of Patent law (I am referring here to the significant number of unreasoned orders from the Patent Office in recent times; see here, here and here).

With all the caveats added, I do think that India can benefit from borrowing and adopting the UK test for entitlement claims to decide its own wrongful obtainment claims. 

For the sake of clarity, I have also made a table to explain the Indian and UK positions and the proposed modification to the UK test to adjust it for application in Indian law.

If more informed readers are aware of any other wrongful obtainment orders, please leave the details in the comments.

I wish to thank Swaraj and Praharsh for their valuable input on the post.