It is of immense importance that one discloses all the information, specifically all the details related to applicants and inventors as required by the standards of Form 1, Indian Patent Act, 1970, while filing a patent application in India. It might lead to intricacies in cases where all the details related to inventors or applicants are not disclosed while filing of the patent application. As, the application Form -1 of the Indian Patent Act contains an endorsement by the true and first inventor, inventor’s assignee or Legal representative of any deceased true and first inventor or his/her assignee, assigning the right to apply for the patent. Otherwise, an original assignment deed or its notarised copy, clearly containing an assignment from the true and first inventor(s) to the applicant would suffice as the proof of right under the Act. However, unable to disclose or submit a proof of right may raise objections and may also lead to inconvenience during patent prosecution stage.
A statement was made in the Rajya Sabha on July 20, 2021, indicating that the intellectual property rights for Covaxin were jointly owned by Bharat Biotech International Limited (BBIL) and Indian Council of Medical Research (ICMR). However not until recently, Bharat Biotech International Limited has released an announcement on June 22,2024 stating that due to the rush to develop vaccine and file an appropriate patent prior to any other entity, ICMR was not included in the original application despite of the fact that the COVID-19 vaccine was developed under a Memorandum of Understanding (MoU) signed between ICMR-NIV(Pune) and BBIL in April 2020.
On July 11, 2024, BBIL has submitted a Form-6 assigning partial rights to National Institute of Virology (NIV), attached with a revised copy of Form-1 and Form-2, Assessment Deed and Form-18 to request for the examination of patent application.
Though, BBIL’s original application number 202041007559 was filed on 21st August 2020 and still awaits for examination, however a search report published by WIPO questioning the patentability criteria (novelty, inventiveness and industrial applicability) may affect the examination at IPO.
As a matter of precaution, it is always preferable to submit either a signed Form 1 or a copy of the signed assignment deed as “proof of right”. Non-submission of these documents within the time period of six month from the date of filing of the application in India may call for a late fee or even refusal of the patent on the ground that the applicant has not complied with the requirements of the Indian Patents Act, 1970 mandated under section 7.
