Wrongful obtainment is an unexplored area of Patent law when compared to other, fancier and more contested topics, such as Inventive step or Subject matter exclusion. It rarely comes up for discussion, and any legal development surrounding wrongful obtainment usually goes under the radar. Hence, it was a surprise to notice two recent orders (pdf1, pdf2) dated 04/02/2025 (Sustainable Community order) and 13/02/2025 (NIT Durgapur order) of the Patent Office issued in relation to wrongful obtainment in quick succession (Thanks to Sandeep Rathod for pointing them out in Linkedin here and here). The Patent Office, in both cases, eventually rejected the patent application post-examination on other grounds. The interesting bit about both patent applications is the pre-grant opposition made by the opponents on the grounds of wrongful obtainment under Section 25(1)(a), which brought attention to how the Patent Office decides questions with regard to wrongful obtainment.
After a bit of searching, I was able to find one more, i.e., a total of three orders (pdf1, pdf2 and pdf3), from the Patent Office that dealt with ‘wrongful obtainment’. Likewise, the erstwhile IPAB in FDC Ltd v. Sanjeev Khandelwal (FDC) had also made some observations on wrongful obtainment and how a pre-grant opposition claim under Section 25(1)(a) should be adjudicated. In this two-part post, my primary goal is to construe the legal position as it exists in India regarding wrongful obtainment based on Patent Office orders and the lone IPAB case, then critique certain aspects of it and finally argue for a more systematic standard based on UK law to adjudicate wrongful obtainment claims.
The post will be divided as follows: first, I will explain the relevant sections of the Indian Patent Act to ground our understanding of wrongful obtainment. Then, I will touch on the pre-grant opposition orders and the IPAB ruling in FDC to get an idea of how ‘wrongful obtainment’ claims are adjudicated in India. Then, I will touch on case laws and relevant sections in the UK Patent Act, which can shed some light on how we can systematically deal with our own wrongful obtainment claims.
What does it mean to ‘wrongfully obtain’ a patent?
‘Wrongful obtainment’ is a specific ground through which an opponent can file opposition proceedings at the pre and post-grant stages and seek revocation under Section 64. The Act itself does not define what constitutes a ‘wrongful obtainment’. However, it can be understood when the relevant sections dealing with wrongful obtainment are read along with Section 6. As per this section, any person claiming to be the true and first inventor/s can file an application for a Patent. Secondly, an assignee of the true and first inventor/s can also file for a patent application.
The term ‘true and first inventor’ can be traced back to Clause 6 of the Statute of Monopolies, which was recommended by the Ayyangar Committee, keeping in mind the meaning it has acquired in commonwealth countries that follow English law. In English law, the true and first inventor is understood to be the actual devisor of the invention. The Indian Courts have adopted a similar but broader definition. Applicants must identify themselves as a true and first inventor or inventors or as an assignee of the same when applying for a patent application. Thus, a claim of wrongfully obtaining an invention arises when the applicant does not fall under Section 6 and still claims he is an eligible applicant under Section 6 with regard to that patent application. Wrongful obtainment acquires significance in the context of increased collaboration between companies, scientists, and researchers to engage in joint projects and create new products; collaboration and joint research gone wrong can give rise to wrongful obtainment claims. Wrongful obtainment might also be invoked more frequently with a rise in paper mills selling IP rights and UGC, making patents a proxy for measuring academic performance can lead to both frivolous patents being filled and patents being granted to individuals who are not the true and first inventor(s).
Adjudicating Wrongful Obtainment Claims:
The Patent Office, in at least three instances and the IPAB in FDC, as noted earlier, had the opportunity to give some guidance on how a wrongful obtainment claim is adjudicated. On a collective reading of the decisions rendered by the Patent Office and the IPAB in FDC, the following broad principles emerge:
1) The opponent who is alleging wrongful obtainment must show clear and convincing evidence or strong evidence to prove his/her claim, and there is a presumption in favour of the applicant (a position expressed in Sustainable Community order and the observations of the IPAB in FDC Ltd v. Sanjeev Khandelwal, refer para 88-94)
2) The Asian paints order (pdf3) also discussed the extensive evidence presented by the parties. It weighed the evidence of both parties and did not talk about the presumption and evidentiary burden imposed on the parties. However, it was concluded that the opposition did not succeed in a claim of wrongful obtainment. However, as Yogesh pointed out, the order is woefully short of legal reasoning on how it reached a conclusion.
3) As the IPAB in FDC observes, it is not necessary for an element of fraud or illegality to exist to make a case for wrongful obtainment. The opponent is only expected to establish that the invention was obtained from him or someonelse from whom he claims.
There are three issues with the existing position on wrongful obtainment, which I will discuss in detail in the second part of the post. To briefly touch on them, first is the presumption in favour of the applicant, which might not be warranted. Second, there is a lack of clarity or certainty and the absence of a systematic test/standard to decide wrongful obtainment questions, as can be seen in the Asian Paints order as well as the NIT Durgapur order, which were woefully short of reasoning as to how the issue was being decided. Finally, the IPAB’s interpretation of Section 25(1)(a) in FDC does not take into account the presence of “wrongful” before obtainment. I will discuss these three issues in detail in the second part of the post. Before that, a small detour into UK Patent Law.
Entitlement and Wrongful Obtainment: same or different?
The Patents Act 1977, which is the UK’s patent legislation, has a more systematic way of dealing with questions of what they call ‘entitlement’. As the UK’s Patent Manual states put it, “Questions about entitlement to patents may be referred to the comptroller under s.8 (patents under the 1977 Act which have not yet been granted), s.12 (patents under foreign or international law which have not yet been granted) or s.37 (granted patents under the 1977 Act)”.
Interestingly, in the UK, a separate set of provisions deal with the question of entitlement, empowering the Comptroller to decide the question of entitlement. This is in contrast to the Indian position wherein it is merely a ground to object to the grant of a patent or seek revocation. Likewise, the use of the word ‘wrongful’ before obtainment also implies that some illegality was implicit in the manner in which the invention was obtained, contrary to the position in FDC. It has to be noted that the Ayyangar committee report stated it had modelled Section 21(1), which later became Section 25(1) in the Indian Patent Act, on Section 14 of the UK Patent Act 1949, which curiously does not use the word ‘wrongful’. Likewise, Section 52 allows for the grant of a patent to the ‘true inventor’ in cases of obtainment through fraud, which is described as “…obtained wrongfully…” in the section. This makes a connection between fraud and wrongful obtainment, which gives more reason to argue that an act of illegality or breach of law should precede the obtainment of the invention and is also a necessary element in any wrongful obtainment claim.
Yeda and the Three-step Test:
In Yeda Research and Development Company Limited v. Rhone-Poulenc Rorer International Holdings Inc (Yeda in short) (2007), the House of Lords clarified the position with regard to entitlement. The Court observed, “The first step in any dispute over entitlement must be to decide who was the inventor or inventors of the claimed invention“. The Court goes on to observe that only after the inventor or inventors have been identified does the question of whether the applicant was the inventor or was an assignee due to the operation of law. The Court then proceeds to clarify how to identify the inventor. It goes on to the inventor as the person who is the actual devisor of the invention and further clarifies it by stating that the inventor is the person who came up with the inventive concept. Any entitlement enquiry is a fact-heavy enquiry leading to an analysis of a lot of evidence as to when the inventive concept was devised, who devised it, and how.
Thus, the entitlement question in the UK is a step-by-step enquiry and can be summarised as follows:
- Identify the inventive concept of the invention in question
- Trace the inventive concept to the inventor or inventors
- Finally, determine how ownership changes due to the operation of law or through any assignment or contract.
Even though this systematic enquiry might seem to clear the muddle and the metaphysics surrounding entitlement, a great deal of subjectivity is involved. For example, there are debates on where the inventive concept of an invention is located in the claims, complete specifications or both (See M Abdussalam’s wonderful paper on this specific issue). In the next post, I will discuss the issues that exist with the Indian position in more detail and suggest a four-step test based on the House of Lords ruling in Yeda and the Court of Appeal judgement (Markem Corp v Zipher Ltd).