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1993 Supreme(Cal) 446
High Court of Calcutta
A.N. Ray, J.
International Control Automation Finance – Appellant
Versus
Controller of Patents & Designs – Respondent
Matter Re Nos. 160189, 157898 etc. of 1992
Decided On: Sep 24, 1993
Advocate Appeared:
S. Chakraborty, M.C. Ghosh, D.P. Mukherji.
The registered grantee or proprietor of a patent has the power to assign, grant licenses under, or otherwise deal with the patent, and such equitable rights in patents can be enforced in the same manner as in respect of any other movable property.
Headnote:
PATENTS - RECTIFICATION OF REGISTER - ERRORS OR DEFECTS IN ENTRY - ASSIGNMENTS NOT REGISTERED WITHIN PRESCRIBED PERIOD - POWER OF REGISTERED GRANTEE OR PROPRIETOR TO DEAL WITH PATENT - EQUITABLE RIGHTS - ENFORCEMENT.
Fact of the Case:
The petitioners sought rectification of the register of patents under Section 71 of the Patents Act, 1970, alleging errors in the entry of assignments. The second petitioner had been registered as the proprietor of nine patents, but the first petitioner claimed to be the ultimate assignee of eight of those patents based on assignments made on March 5, 1991.
Finding of the Court:
The court held that the second petitioner had valid equitable rights to the patents on March 5, 1991, even before the perfection of their title by registration of their name, and could therefore assign such equitable interest to the first petitioner on the same day. The court found that the notices sent by the second petitioner and the first petitioner to the registry were both valid and that the Controller of Patents should have rectified the register to reflect the correct ownership of the patents.
Issues: 1. Whether the assignments made on March 5, 1991, were valid and enforceable. 2. Whether the second petitioner had the power to re-assign the patents to the first petitioner before the perfection of their title by registration. 3. Whether the notices sent by the petitioners to the registry were valid and sufficient to rectify the register.
Ratio Decidendi: 1. The court interpreted Section 70 of the Patents Act, 1970, which gives the registered grantee or proprietor the power to assign, grant licenses under, or otherwise deal with the patent. The court held that the first part of Section 70 does not specifically limit the class of possible assignors only to the registered proprietors, and that equitable rights in patents can be enforced in the same manner as in respect of any other movable property. 2. The court found that the second petitioner obtained equitable rights to the patents on March 5, 1991, and could therefore assign such equitable interest to the first petitioner on the same day. 3. The court held that the notices sent by the second petitioner and the first petitioner to the registry were valid and sufficient to rectify the register, and that the Controller of Patents should have rectified the register to reflect the correct ownership of the patents.
Final Decision: The court allowed the petitioners' application for rectification of the register and ordered that the name of the second petitioner be rectified in favor of the first petitioner for eight out of the nine patents.
Ajay Nath Ray, J.
1. THIS application is made under Section 71 of the Patents Act, 1970 by three petitioners.
2. THAT Section contains the power of the High Court to rectify the Register of Patents in certain cases and the first sub-section of the said Section is important for our purposes. The same is set out below:-
"71. Rectification of register by High Court –
(1) The High Court may on the application of any person aggrieved –
(a) by the absence or omission from the register of any entry; or
(b) by any entry made in the register without sufficient cause; or
(c) by any entry wrongly remaining in the register; or
(d) by any error or defect in any entry in the register; make such order for the making, variation or deletion, of any entry therein as it may think fit."
The reason why the petitioners call for a rectification of the register on the ground of errors contained in it is as follows. During the period 1983-1986 the third petitioner became entitled to nine several patents which were duly entered in the register in its favour.
3. ON the 5th March, 1991 two successive assignments took place in regard to eight out of the said nine patents. The first assignment was granted for all nine by the third petitioner to the second. The second assignment on the same date for eight out of the nine patents was again granted in its turn by the second petitioner to the first.
4. THE assignments were all made by Deed and therefore in writing and no question of their invalidity in that regard thereto arises.
On the 12th February, 1992 the second petitioner applied for registration of the documents of assignment granted in its favour by the third petitioner as required by Section 68 of the Patents Act, 1970. The said Section is reproduced below :-
"68. Assignments, etc., not to be valid unless in writing and registered--An assignment of a patent or of a share in a patent, a mortgage, licence or the creation of any other interest in a patent shall not be valid unless the same were in writing and the agreement between the parties concerned is reduced to the form of a document embodying all the terms and conditions governing their rights and obligations and the application for registration of such document is filed in the prescribed manner with the Controller within six months from the commencement of this Act or the execution of the document, whichever is later or within such further period not exceeding six months in the aggregate as the Controller on application made in the prescribed manner allows: Provided that the document shall, when registered, have effect from the date of its extrusion."
5. ON the next day i.e. 13th February, 1992 the second petitioner applied for recording by registration of its title in respect of the nine patents in the register. This is required by Section 69, the first-sub-section of which is set out below:
"69. Registration of assignments, transmissions etc. – (1) Where any person becomes entitled by assignment, transmission or operation of law to a patent or to a share in a patent or becomes entitled as a mortgagee, licensee or otherwise to any other interest in a patent, he shall apply in writing in the prescribed manner to the Controller for the registration of his title or, as the case may be, of notice of his interest in the register."
6. THE two notices to be sent to the registry upon assignment were thus sent by the second petitioner, the first notice being intended for registration of the Deed of Assignment and the second being intended for bringing the name of the second petitioner on record in the register. This double notice is the usual course in the matter of assignment of patents so that the office can keep both a record of the primary documents causing change of title, as well as a register which gives the up- to-date position of the title holders in regard to the patent at one glance. THE two way recording is parallel to accounting by cash book and ledger.
Since on the 5th March, 1991 the
