In this article, Deepshikha Sarkar discusses First to File and First to Invent rules.

INTRODUCTION

The first to file (FTF) and the first to invent (FTI) rules are pretty much what their names suggest. As per this rule, it is decided as to who shall have the right to get his invention patented.

Under FTF system, the person who files first for the patent of an invention is eligible for the grant of patent. It completely disregards the date at which the invention was made.

As opposed to this under the FTI rule if multiple people file a patent application for the same invention, the patent is granted after determining who was first to invent. This can be determined by the help of proceedings, etc.

Mostly, nations subscribe to the FTF system and hence the priority date is the basis of grant of patent. With the America Invents Act of 2011, the United States switched its patent system from first to invent to first to file on March 16, 2013. This switch, was specifically to First Inventor To File (FITF). The FITF system is the FTF syste, in essence, the difference arises in the process of ascertaining the prior art; the disclosure of the same invention within the previous year is considered as prior art unless it comes from the same inventor. This is also known as the first to disclose system.

Position in India

The position in India can not be so easily ascertained. Although it is popular belief that the Indian patent regime grants the patent to the person who first filed an application. And the FTF regime is prevalent here.

Although the Indian Law is not completely in consonance with this belief. At Least the literal interpretation of the letter of the statute does not say so.

The relevant law in this matter is Section 6 Patents Act, 1970 where in the persons who can apply for patents are enlisted. Sub section (a) states “by any person claiming to be the true and first inventor of the invention;”.

The law says that a person needs to be a true and first inventor. Both these requirements are mandatorily to be fulfilled.

• First, “True” in the sense that the inventor (or inventors) should be the person who has actually made the product with his own efforts without copying from others. It should genuinely be his invention.
• Second, the true inventor must also be the first one to invent it. So we see that the system of First to File is nowhere reflected in the Section quoted above, contrary to popular belief. In fact it portrays the fact that India follows First to Invent rule.

What is important to note is that the applicant has to be both the true & the first inventor. Even if the applicants claim of being the true inventor is genuine, there is a possibility that he is not the first inventor. The applicant only claims based upon his belief that he is the first inventor. The fact that no one has published the invention in the public domain or filed for a patent is just his belief as per his best knowledge.

It is possible that his knowledge is not correct and another person may be able to prove that he was not only the true inventor, but also the first.

There are some very important questions which arise at this juncture

• How is it possible that both the FTF and FTI systems being contradictory seem to coexist?
• Are claims of first to file undeniable on the basis of mere priority date (Can a person who claims to be the true and first inventor be refuted)?
• Does the law provide for a remedy that can be invoked to prove/disprove true and first inventorship?

In attempt to answer these some Sections of the Patents Act, 1970 need to be looked into. Section 25 (1) (a), (2) (a), Patents Act, 1970

Section 25 of the Patents Act, 1970 – Opposition to the patent

(1) Where an application for a patent has been published but a patent has not been granted, any person may, in writing, represent by way of opposition to the Controller against the grant of patent on the ground-

(a) That the applicant for the patent or the person under or through whom he claims, wrongfully obtained the invention or any part thereof from him or from a person under or through whom he claims

(2) At any time after the grant of patent but before the expiry of a period of one year from the date of publication of grant of a patent, any person interested may give notice of opposition to the Controller in the prescribed manner on any of the following grounds, namely:-

(a) That the patentee or the person under or through whom he claims, wrongfully obtained the invention or any part thereof from him or from a person under or through whom he claims;”

Section 64 (1) (b) & (c) of the Patents Act, 1970

“64 Revocation of patents

(1) Subject to the provisions contained in this Act, a patent, whether granted before or after the commencement of this Act, may, 149 [be revoked on a petition of any person interested or of the Central Government by the Appellate Board or on a counter-claim in a suit for infringement of the patent by the High Court] on any of the following grounds that is to say-

(b) That the patent was granted on the application of a person not entitled under the provisions of this Act to apply therefore

(c) That the patent was obtained wrongfully in contravention of the rights of the petitioner or any person under or through whom he claims;”

What can be concluded from reading these sections together is that in the Stage of Opposition (Pre or Post grant) (Sec 25) opposed when it has been “wrongfully obtained” The element of ‘fraud’ is at play.

Whenever there is no fraud on the part of the Applicant, that is, when an Applicant has made an invention which is similar to another without having knowledge of that other invention then it is called parallel invention. In such a case the priority of the invention is not seen, what is considered is the priority of the application. The inventor who filed before gets the better right. This is direct implication that the Patents Act, 1970 follows the “First to file rule”