Sunday, April 22, 2012

Is India “First to File” or “First to Invent”?

I am sure the title of the post must be really annoying because it goes without saying that the Indian Patents Act follows the “first to file” rule...or does it?

One of the things that a litigator’s training teaches you is that, no matter how pedantic it may seem, interpretation of the law must not be based on what people think or assume, but must be solidly grounded in what the statute says, which is further backed by logic and common sense.

Obviously I don’t mean even absurdities which are supported by the letter of the law must be taken seriously. What I mean is that the letter of the law must be given its due, and the enquiry must begin with the wording of the provision, as opposed to a pre-conceived notion of what we think the law is, or ought to be. At least this is how one must approach a legislation from a litigation perspective.

If I had to apply this proposition to the issue at hand, I ought to look at Section 6 of the Act before I make up mind on the position of Indian law:

6. Persons entitled to apply for patents
(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,—
(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.
(2) An application under sub-section (1) may be made by any of the persons referred to therein either alone or jointly with any other person.

Section 6 governs the entitlement of a person to file an application for a patent. The provision says that “any person claiming to be the true and first inventor of the invention” may file an application for a patent. The provision uses both “true” and “first”, in that order. This means the person must have invented the invention by himself (or by themselves in case there are several inventors) without being “inspired” by the efforts of another person.  

The second condition is that the person must also be the “first one to truly invent” the invention. Nowhere does the provision seem to convey a “first to file” rule. Given this, where do we get the conclusion from that India follows a “first to file rule” when the emphasis is clearly on the first person to truly invent the invention?

Merely because a person files an application for a patent “claiming to be the true and first inventor”, does it follow that his claim is irrebuttable? Since the requirements under Section 6 are conjunctive and hence two-fold i.e. “true and first”, even if the person’s claim of being the true inventor is in fact true, it is possible that he may not be the first inventor. It is only his belief that he is the first inventor because to the best of his knowledge no one seems to have published the invention in public domain or has filed for a patent.

Be that as it may, his belief could be misplaced, and it might be possible for another person to prove that he (the other person) is not only the true inventor, but was also the first one to invent the invention. If so, does the Act provide for a remedy which could be invoked to prove “true and first inventorship”?

To the best my knowledge and belief, there is no such provision in Section 25(1) or (2) because both refer to an invention which has been “wrongfully obtained”, which is also dealt with under Section 64(1)(c).

However, Section 64(1)(b) refers to “entitlement to apply for a patent”, which in my opinion is a reference to Section 6. If that be so, it follows that “true and first inventorship” is also a legitimate ground that may raised under Section 64(1)(b).

The policy argument that could be used to support this interpretation is that if the true and first inventor does not wish to file for a patent, and instead wishes to throw it open for the public’s consumption, why should another person be granted a patent merely because he is the “first to file”? In other words, why should the public be saddled with the grant of a patent, when the “true and first inventor” wishes to freely share his invention with the public?

I am sure some of us might be tempted to fall back on travaux preparatoires i.e. legislative debates on amendments and the like, to support to the “first to file” position. However, the rule of statutory interpretation is pretty straightforward- Do Not Rely On External Material if there is no ambiguity in the wording of the provision.

To my mind, Section 6 does not exhibit or succumb to ambiguity. Its emphasis is clear- “true and first inventorship”

Comments and corrections are welcome!


  1. Sai, I absolutely agree with you on this. The section is crystal clear and there is no ambiguity at all. I'm still clueless as to how the practice can trump the statutory provision. Perhaps, we should wait for a land-mark judgment wherein the judge will ask this simple question from perhaps the best Patent Counsel and he will not have any answer to this until judge declares India as first-to-invent system.

    [I have shared my views with some hypothetical situations in such cases of conflict at "".]

  2. Dear Ashwani,
    Thanks for the comment. I just went through your post, and I was wondering why didn't you deem it fit to mention the possibility of Section 64(1)(c) being used to revoke a patent? Awaiting your reply.

    Best Regards,

  3. I believe that 64(1)(b) - 'person not entitled under the provisions of this Act' (which is referring to section 6)shall be available for revocation and not 64(1)(c) which deals with "wrongful obtainment" and travel beyond section 6. [Certainly the second inventor did not obtained the invention wrongfully]. Had 64(1)(c)[wrongful obtainment] be available for revocation, similar grounds under section 25(1)(a) and 25(2)(a) would also be available, but which I think is not the case. I think you are saying the same thing in your 4th and 5th last paras. Let me know if I'm missing out anything here.

  4. Both of us are saying the same thing on "true and first inventorship". I was just wondering if there was a reason you did not make a specific reference to Section 64(1)(c) when dealing with the issue of "wrongfully obtaining" in one of your hypotheticals. Otherwise, both of us are exactly on the same page.


  5. Ashwani, I just checked again. In your hypothetical (a), i guess you meant Section 64(1)(c) where you refer to "wrongfully obtained".


  6. Thanks for pointing out the error. I meant '64(1)(c)' instead of '64(1)(b)' there.
    Yes - we are on the same page and I hope to have everyone else too.

  7. Sir, it is a great read .However i just wonder when its clearly written "true and first inventor" in the statute, how come we follow "First to File" ?

  8. Hi Adithya,
    I honestly am not sure of the origin of this perception, I'd certainly like to know if there's a rational basis for its existence.


  9. I could trace the possible origin of this perception(or perhaps misconception). Will get back with details.