Organizations often face situations wherein the names of applicants may need to be added or removed from an Indian patent application. The Indian Patent Act envisages addition or removal of applicants to occur broadly in three scenarios. The scenarios are dealt under Section 20 (1), (4) and (5), and the corresponding Rules are 34(1), 35(1), 36(1).

Section 20(1) and Rule 34 deal with a scenario wherein one or more applicants need to be added or removed by virtue of an assignment, an agreement or operation of law. The assignment or agreement has to be made in writing by the existing applicant of the patent. Further, in case there are two or more joint applicants currently on file, then consent of each of the joint applicants is required. In case a new applicant is being added, the assignment, agreement or operation of law should be to the effect that, if a patent were to be granted eventually, then the new applicant would be entitled to the rights of the existing applicant. Alternatively, the assignment, agreement or operation of law should be to the effect that, if a patent were to be granted eventually, then the new applicant would be entitled to an undivided share in the patent. The request for addition or removal of applicant should be accompanied with original assignment, agreement, an official copy or notarized copy for inspection by the Controller. The Controller may, at his discretion request further proof of title or written consent.

Moving on, Section 20(4) and Rule 35 deal with a situation wherein an applicant, among joint applicants, dies before the patent is granted. The surviving applicant(s) may request the application to proceed in their name alone. However, the application can proceed in the name of the surviving applicant(s) only if there is consent, to that effect, given by the legal representative of the deceased. The request must be accompanied by proof of death of the joint applicant and consent by the legal representative of the deceased. Additionally, documentary evidence to prove that the person giving the consent is the legal representative of the deceased applicant has to be provided. The documentary evidence can be in the form of a certified copy of the will of the deceased applicant or letters of administration in respect of the estate of the deceased applicant.

Section 20(5) and Rule 36 deal with dispute arising between joint applicants of a patent. The dispute may be related to whether the application should be proceeded with or the manner in which the application should be proceeded with. In case of such disputes, any of the applicants can make a request to the Controller seeking direction. The request to the Controller must be accompanied by a statement which fully discloses the facts which the applicant making the request relies on. The request must also set out the outcome or direction sought by the applicant. The Controller will send a copy of the application and the statement to every other joint applicant giving them an opportunity to respond. The Controller will also give all the concerned parties an opportunity to be heard, and then give direction as he thinks fit. The Controller may give directions to enable the application to proceed in the name of one or more of the parties, or to regulate further proceedings as needed.

An application to the Controller to add or remove applicants under the provision of any of the above discussed sections should be made in FORM 6 with the prescribed fee. The form is used for providing details such as, names of applicant(s) to be added or removed, names of original applicants and reason for change, among other details that are to be entered.

Form 6 may also be used to add or remove an applicant from an Indian national phase application where change in applicant has occurred after the international filing date, and the change is not reflected in a notification from the International Bureau (Form PCT/IB/306).

It shall be noted that adding or removing an applicant is not the same as changing or correcting the name of an applicant. In case of clerical errors or legal name change of a person or an organization, the change can be made using Form 13.

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