Orders Regarding Substitution of Applicants

Transcript

[Music] section 20 power of controller to make orders regarding substitution of applicants etc when an application is filed the applicant on whose behalf the application is made is mentioned in the application itself now assume that after a period of time the applicant wants to assign the invention to another person even before grant it still in the application stage he wants to assign it or it's a part of a company he wants to sell the company or he wants to sell the invention alone like it's a research organization somebody has shown interest in the invention so they have an agreement to sell the invention to that person in all these cases they could be a transfer of title a transfer of ownership from the applicant to another person either through a sale of a company either through an assignment or to the sale of the invention or the technology itself in all these cases there has to be a substitution of the name of the applicant now after the grant if there is an assignment there are provisions under the act where a patentee can be substituted we are not talking about a patentee substitution we are talking about an applicant whose name is there in the application how do we substitute a new applicant's name because for certain reasons the applicants has changed the person who was the applicant is no longer the applicant and somebody else has come in his or her place the controller has certain powers now let us look at that 21 if the controller is satisfied on a claim made in the prescribed manner at any time before a patent has been granted so 20 a point to be noted section 20 the powers of the section controller under section 20 is before the grant of the patent so how do you change the name of a patentee section 20 does not apply because the patentee we call him a patentee when the patent is granted we do not call him an applicant we refer to the person as an applicant up until the time of the grant after the grant is called a patentee or the patent holder so to substitute the name of a patentee this is not the provision so you need to bear that in mind because this provision applies before the patent has been granted that by virtue of an assignment or agreement in writing now these are the things that you need to note before the patent has been granted by virtue of any assignment or agreement in writing made by the applicant or one of the applicants of the patent or by operation of law ok there are three things they could be an assignment assignment is where you give your right to another person they could be an agreement the agreement can be a takeover agreement if it's a company it can be a share purchase agreement if it's a company i purchase the majority shares and i become the older or 100 shares it could be any agreement which is critical for this transaction or by operation of law by operation of law ah say the company is acquired by another company operation of law or the company becomes bankrupt the company does not have money and all the assets of the company are sold the patents alone are purchased by another party so that's operation of law the patents are purchased by when the company gets into bankruptcy proceedings patents being the asset of the company are purchased separately so that is something we call operation of law the claimant would if the patent were to be granted be entitled there to or to the interest of the applicant therein or an undivided share now the claimant is the person who wants to come in as the new applicant ok so claimant would be if the patent is granted this is in the future if the parent is granted would be entitled there to he will be entitled to the to becoming the applicant or to the interest of the applicant or an undivided share of the patent or of that interest the controller may subject to the provisions of the section direct the application to proceed in the so the controller will direct the application to proceed in the name of the claimant or the names of the claimant and the applicant or the other joint applicants accordingly as the case may require there are three instances where so we understand in this section we try to understand who the claimant is there is a claimant here claimant is not the present applicant claimant we understand as a person who has received something from the applicant which entitles him to become an applicant so the claimant is used as the future applicant or the new applicant let us call him the new acclimate now this provision also contains instances where only an interest is given the entire invention is not sold the entire invention is not given so there are three applicants they all together want to bring in the fourth applicant do you understand there are already three people because they can be multiple you can make joint applications there are already three applicants say there are three scientists had filed a patent in their own name a fourth person has also helped them but his name did not come in the application now they fi they make an agreement with the fourth person to say that we recognize your right you have made a contribution and they say that we will include you as a inventor now based on that agreement it is an agreement in writing the fourth person can who can be regarded as a claimant will not get the entire invention he will only get an undivided share that is one-fourth of the invention if that is the arrangement so this provision applies for instances where a person gets the full patent full interest in it and also cases in which he may be a joint applicant so that's why it says a claimant who by three things by agreement by assignment or by operation of law operation of law i said there is a bankruptcy proceeding something illegal proceeding based on which the claimant came to acquire an interest so there is a claimant or claimants it could be one or more people and the claimant by virtue of three things an agreement assignment or operation of law was entitled to the application itself he came he was entitled to the application itself or to an interest or to an undivided share so three things he was entitled to the patent the application that the patent is in the applications it or to an interest or to an undivided share of the patent or that interest in such cases the controller shall direct the application to proceed in the name of the claimants claimant or claimant or in case there are existing applicants who also continue with him then in their names jointly so i hope you understand the scheme there is a claimant the claimant comes gets an interest in the application based on three things there is an agreement between the existing applicants or there is an assignment or by operation of law he gets an interest and what kind of interest is that he has an he is entitled to the application or to an interest in it which is not the full right but part of it or he is entitled to an undivided share or an interest in that and divided share now so when he is entitled to the invention itself or to a share in the invention then the controller can shall proceed as if the claimant has become an applicant the controller shall proceed with the claimant now shown as the applicant so the word claimant is used here so that we do not get confused with the old applicant and the new applicant 22 no such direction as for search shall be given by virtue of an assignment or agreement any assignment or agreement made by two or more joint applicants for a patent except with the consent of other joint applicants now what did we see in twenty one in twenty one we saw a claimant making a claim that he should be treated as an applicant we saw that in 21 22 states if there are joint applicants then the consent of all the applicants is required before including somebody as a claimant if the controller needs to give a direction this provision requires the claimant to make an application to the controller under form 6 and the controller will have to give a direction so the direction is what is being sought under this provision 22 says that the controller will not give that direction till the consent of all the joint applicants are received let me give you an example there are three applicants to a particular application now a b and c a and b have an agreement with d and they want to bring d into the list of applicants so d becomes the claimant these agreement is only with a and b but not with c but c is an existing applicant there are three applicants a b and c a and b have an agreement with d based on that agreement they want to bring d as a claimant he become he they want to bring him as a new applicant as per 22 the controller will not do it he will not issue a direction till they get the consent of c so the provision is very simple in case you need to bring if you are a joint applicant with others you cannot bring a new applicant without everyone consenting so that is what it says except with the consent of other joint applicants so all the joint applicants a b and c will have to consent if all of them do not consent the controller will not pass a direction it is just to protect the interest of the existing applicants 23 no such direction as for said shall be given by virtue of any assignment or agreement for the assignment of a benefit of an invention so this is with regard to assignment of a benefit of an invention unless a the invention is identified therein by reference to a number identified by reference to the number of the application there will be there is produced to the controller an acknowledgement by the person by whom the assignment or agreement was made acknowledgement by the person who made the assignment or agreement that the assignment or agreement relates to an invention in respect of which the application is made that it relates to the invention or c the right of a claimant in respect of the invention have been finally established by decision of a court this is where by operation of law you saw that operation of law the rights of a claimant has been established by a decision of the court or d the controller gives direction for enabling the application to proceed for regulating the manner in which it should be proceeded under subsection 5 controller gives direction subsection 5 under subsection 5. we will see what subsection 5 is but in this in 23 we say that it puts the requirements for the controller to pass a direction before passing a direction saying that somebody is a claimant there are certain requirements the first requirement no such direction as a force shall be given by virtue of an assignment or an agreement for the assignment of a benefit so where there is an assignment of a benefit in an invention as assignment is where you want to give a part of the right to another person then the controller will insist that the invention is referenced by the application number because we are still in the application stage so the assignment that agreement should refer to the application number so if the parties come with an agreement without the application number mentioned in the agreement the controller will not act by it so there can be a question what are the requirements of the document that has to be filed along with form 6. you can give multiple choices it should contain the patent number it should contain the application number it should have a cross reference to all the names of the party you can you can come up with many answers the correct answer will be it should have a cross reference to the application number okay so so you could create questions on that but understand this is yet another case of cross reference so you could make a chart on all the cross references under the patents act so wherever you can do a control f on the act and find all the references and you can make a chart with the provisions type of reference reference to which part or reference to what ah the section of the relevant rule and the gist of it so that it becomes easier to memorize so so this pertains to the first requirement is that there has to be a reference to the application number then or there is an acknowledgement by the person who made the assignment that the assignment relates to the invention in respect of its application is made the person who makes the assignment should say that this assignment is pertaining to this application is not mentioned the number is not mentioned but he says this is with regard to an application it is clearly identified by the person who makes the acknowledgement it is clearly identified that they are talking about a particular invention so the the person who makes the assignment acknowledges the invention so there is no doubt so what is this objective here in the first case a person who reached the agreement should know what the invention is in the second case we say that the person who makes the assignment should acknowledge that this is the invention that is being transferred or that has been uh that is for which they are seeking a direction or there is a decision of a court say there was a dispute with regard to inventors or dispute with regard to an agreement a joint development agreement two institutes come up with an agreement a memorandum of understanding and later on they have an agreement to develop an invention two institutes so researchers from both the institutes do work and file an application a third institute now comes and says i was also involved in the project i should also be shown as an applicant institute the first two institute say that no you were not involved and that becomes a dispute so the third institute approaches the court of law with lot of documents to show that it was also involved and assume that the third researcher or institution is successful in getting an order from the court of law saying that yes you made a contribution to the invention with lab notes and evidence of those they are finally able to prove that now based on that court order you can make a direction so the the court order will very clearly say what are the facts and circumstances of the case what invention they are pertaining to it may also say that the other two people have filed an application this is the application number it's pending before this pattern of all the details will be there so the controller has to insist on that court order and i give you the situation where there is a dispute with regard to who the applicants are and one party gets a favorable decision from the court then here the controller will have to ah insist or will have to see that the rights of the claimant in respect of the invention has been finally established by a decision of the court so when you file form 6 you will file form 6 with the court order that could be a question form 6 the accompanying documents in form 6 can be agreement assignment decision of a quote all of the above or something like that d the controller gives direction for enabling the application to proceed under subsection 5 of we are coming to it twenty four where one of the two or more join applicants for a patent dies at any time before the patent is granted the controller may upon the 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 what happens if there are multiple applicants and one of the person dies in this provision if there are three applicants a b and c and c dies before the grant of a patent a and b who are called survivors here the the surviving applicants with the consent of a legal representative of c c is dead so c is legal representative they get a consent they can ask for a direction to proceed in the name of a and b alone so a and a b and c were the three applicants c died in between before the application was granted a and b can make a request to the controller for a direction to say that proceed in our own names don't worry about c because c is now no more only condition is a and b will have to get the consent of the legal representatives whoever has survived whoever are the successors in interest whoever succeeds c is family members in most cases if it's a legal entity then whoever legally represents that person that's what we use the word legal representative of the deceased you find the same language used in section 6 legal representative can be an applicant under this provision so assume a case where c's legal representatives do not give the consent so they come in as applicant because section 6 allows them to do that so they will file a form 6 and they will say that we want to come in as the legal representative to ask the deceased applicant and their names will be substituted so there could be questions on the course of action in the case of a death of a applicant what could be the course of action in the case of a death of an applicant in the case of a death of an applicant the surviving applicants can proceed with the application in their names provided they get the consent okay provided they get the consent they can proceed in their names 25 if any dispute arises between join applicants for a patent whether or in what manner the application should proceed with the controller may upon application made to him in a prescribed manner by any of the parties and after giving all the part is concerned an opportunity to be heard that's a hearing again you find a hearing coming here 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 the purposes as the case may require 25 deals with disputes between joint applicants so all the instances above where where the joint applicants were not in dispute a and b wanted to proceed after the death of c c's representatives did not object they gave consent no problem there is an agreement all the parties have given consent no problem there is an assignment all the parties have given our parties to the assignment there is no issue but when one pass person refuses to give a consent for bringing another applicant so which means there is a dispute between the joint applicants then what should be the request to the controller now here it is said if disputes arise between the join applicants whether or in what manner the application should proceed now the controller can take an call on whether the application should proceed okay or in what manner it should proceed the controller may upon application made to them in the prescribed manner by any of the parties and after giving them a hearing opportunity so when there is a dispute any applicant can proceed to the controller under form six any applicant so so the form six is not only for substituting names of applicants form skips can also be used to resolve a dispute between applicants ok that that's an important thing if you see form 6 form 6 refers to all the sections on top 25 is mentioned there so you will use form 6 and intimate the controller to say that there is a dispute between the joint applicants so the controller will hear the parties give them a hearing controller can give such direction as he thinks fit now this is the important part now the controller can hear the parties and he can 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 or for both so he can either say that it shall proceed in the name of certain parties or for regulating the manner in which it should be proceeded with either the controller can say this application shall proceed in if there are three applicants and one person is not cooperating the controller can say it shall proceed in the name of a and b alone whatever for whatever reasons or it can say that it shall proceed in the name of a b and c but they should not be they should not do anything to stall the process they can say that it should proceed further because sometimes one applicant can stall the process you can say that i am not interested or i can go to the court and say that i filed a case till that is decided don't prosecute so many things can happen so he can give a direction as to in whose name it should go or the manner in which it should proceed so both these things can be done by the controller now let us look at the corresponding rules rule 34 manner in which a request may be made under section 24. rule 35 1 says it shall be made in form 6 and 35 2 says that the request shall be accompanied by proof of death of the joint applicant and a certified copy of the probate of the will of the deceased or letters of administration in respect of his estate or any other document to prove that the person who gives consent is the legal representative of the deceased applicant now there are quite a lot of details in this when you file form 6 under section 24 there is already a death one of the applicants has died so you have to produce the death certificate that is what is called the proof of death proof of death is what we can get from the authorities called the death certificate so proof of death has to be accompanied that's one thing the second thing is there has to be a statement of how the deceased person whom we called applicants see how applicant c wanted his application to proceed so if he had a will in cases where the will needs to be probated probate as a proceeding before the court if there is a will the court will have to verify and approve it that's called probate if then the certified copy of the probate of the will that is if in the will he has said assumes he had said in his will after my death a and b shall be can proceed as the joint applicants i am giving up my interest if that is there in the will the court the controller will look at the bill once there is a certified copy of the probate probate is a proceeding to authenticate a will let us understand probate as a proceeding to authenticate the will and once the probate is granted then a certified copy of the probate should be accompanied or letters of administration if after a person's death an administrator is appointed by the court there is lot of property for the deceased and the court appoints an administrator so it is a third party who takes care of the estate of that person then if there is an administrator appointed then the letter of administration has to be produced or any document to prove that he has given consent that the person who gives consent is the legal representative of the deceased applicant now or any document to show that the person who gives consent is the legal representative of the deceased they could be a what we call a succession certificate again something which you can get from the government so you get a succession certificate or you show that you had already received if the person is related to applicancy the deceased applicant as a son he can come up and show that everything else that belong to my father has already come to me like the bank dues i was the nominee in the bank i got the bank nominees dues or he shows that in his birth certificate the dc's name is shown as father any proof to show that he is the legal representative so two things under form has to be filed along with form six proof of death and proof to show that the legal representative has the person who gives consent is the legal representative so ah in the will the court will rely on a will if there is a direction in the will that the application shall be proceeded in the names of the joint let us assume that there is a direction in the will or if there are letters of administration in respect of his estate there is some indication in the letters of administration as to what should happen to his invention if those two are not there there should be some other document to prove that the person who gives consent is then which means there is no direction that the disease has given with regard to his invention if he has given no direction then his legal representatives can take a call they can take a call on how it will proceed so that is what is mentioned in rule 35 rule 36 deals with the manner of application under section 25 okay section 25 we saw deals with instances where there is a dispute between the joint applicants 36 1 says an application under 25 shall be made in form 6 and duplicate and shall be accompanied by a statement setting out fully the facts upon which the applicant relies and the direction which he seeks so in you use the same form form 6 but along with form 6 if there is a dispute under 25 you need to have a statement setting out the full facts of the dispute okay there is a dispute under 25 so a statement of the dispute has to be there in 25 whereas in 24 only documents so that's a difference between 25 but we use the same form form 6 has to be used 36 2 a copy of the application and satan shall be sent to the controller sent by the controller to every other joint applicant because there is a dispute if one joint applicant raises the dispute the controller has to make copy and send it to all the other applicants so that they can be a resolution because the controller can hear the parties and give directions so when he gives directions he has to consider the interest of all the parties [Music] you