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Introduction

In December 2025, the Delhi High Court delivered a landmark judgment in Nippon Steel Corporation v. Controller of Patents (C.A.(COMM.IPD-PAT) 10/2025), addressing the crucial procedural requirement of “proof of right” under the Patents Act, 1970. The case arose after the Patent Office refused Nippon Steel’s application for failing to show adequate proof that it was entitled to file the application, especially regarding an inventor who had passed away. The Court examined whether the documents submitted such as employment-related IP assignments were sufficient to meet the statutory requirement under Sections 6, 7, and 68. It ultimately clarified that proof-of-right requirements should not be applied rigidly in a manner that obstructs legitimate patent rights.

Facts of the Case

The dispute began when Nippon Steel Corporation filed Indian Patent Application No. 202117029591 on 1 July 2021 before the Indian Patent Office. The invention related to a “High-Strength Steel Sheet and Manufacturing Method of High-Strength Steel Sheet.” The application listed four inventors associated with the invention. At the time of filing the application, three of the inventors signed the prescribed application form (Form-1). However, one of the inventors had passed away prior to the filing and examination of the application. In order to establish its entitlement to file the patent application, the company submitted documents including its internal intellectual property regulations and declarations showing that inventions developed by employees during the course of their employment belonged to the company.

After the application was filed, the company submitted a request for examination on 21 November 2022 under the Patents Act. The Patent Office subsequently issued a First Examination Report on 12 December 2022. The report raised various objections relating to the patent application, including an objection concerning proof of right under Section 7(2) of the Patents Act. Section 7(2) requires that when a person other than the inventor files the patent application, the applicant must produce proof that it has the right to apply for the patent. In response to the objections raised in the First Examination Report, the company filed its reply on 1 May 2023 along with amended claims and explanations addressing the issues raised by the examiner.

During the examination process, the Patent Office issued a hearing notice and scheduled a hearing for 7 March 2024. The company requested an adjournment, and the hearing was subsequently conducted on 4 April 2024. During the hearing proceedings, the company submitted written submissions and also produced an affidavit together with an Employer-Employee Agreement signed by the deceased inventor. According to the company, this agreement clearly established that inventions developed by employees during their employment were the property of the employer and therefore belonged to Nippon Steel Corporation.

Despite these submissions, the Controller of Patents passed an order on 27 November 2024 refusing the patent application. The Controller held that the company had failed to establish proof of its right to apply for the patent. The Controller observed that the company had not provided the death certificate of the deceased inventor and had not produced a specific assignment from the legal representatives of the deceased inventor transferring the patent rights. The Controller also concluded that the employment agreement relied upon by the company did not constitute sufficient proof of assignment of the invention. The refusal order relied on Sections 6(1)(b), 6(1)(c), 7(2) and 68 of the Patents Act. Aggrieved by the refusal, Nippon Steel Corporation filed an appeal before the Delhi High Court under Section 117A of the Patents Act, which provides for appeals against certain decisions of the Controller of Patents.

Argument in Favour

The appellant, Nippon Steel Corporation, challenged the refusal order on several legal grounds. The company argued that it had fully complied with the statutory requirement of proof of right under Section 7(2) of the Patents Act. According to the company, this requirement had already been satisfied through the documents that were submitted along with the patent application and during the hearing process. The company relied on the Employer-Employee Agreement signed by the inventor, the company’s internal intellectual property regulations and the declarations filed along with the application. The company argued that these documents collectively demonstrated that inventions created by employees during the course of their employment automatically belonged to the company.

The company further relied on Section 6(1)(b) of the Patents Act. Section 6 of the Act specifies the persons who are entitled to apply for a patent. Under Section 6(1)(b), an assignee of the inventor is entitled to apply for a patent. The appellant argued that it was the lawful assignee of the rights in the invention because the inventor had agreed through the employment agreement that any intellectual property created during employment would vest in the company. Therefore, the company argued that it was legally entitled to file the patent application as an assignee of the inventor’s rights.

The appellant also argued that the Controller had incorrectly relied on Section 6(1)(c) of the Patents Act. Section 6(1)(c) allows the legal representative of a deceased person to apply for a patent if the inventor dies before filing the application. The appellant argued that this provision was not relevant in the present case because the company was not claiming the right to apply as the legal representative of the deceased inventor. Instead, the company was claiming the right to apply as the assignee of the inventor’s rights.

In support of its arguments, the appellant relied on earlier judicial decisions. One of the cases cited was NTT DoCoMo Inc. v. Controller of Patents and Designs (2013). In that case, the Intellectual Property Appellate Board discussed the concept of proof of right in patent applications and recognised that applicants must demonstrate their entitlement to file the application. The appellant argued that the decision did not restrict the nature of documents that could be used as proof of right. The appellant also relied on the decision of the Madras High Court in NEC Corporation v. Assistant Controller of Patents and Designs (2023), where the court recognised that an assignee could validly apply for a patent when the assignment of rights had been established.

The appellant also referred to international patent practice, including guidance contained in the European Patent Office materials and the Manual of Patent Examining Procedure of the United States Patent and Trademark Office. According to the appellant, employment agreements and internal corporate intellectual property policies are commonly accepted as valid evidence establishing ownership of inventions created by employees.

Argument Against

The Controller of Patents defended the refusal order and argued that the company had not satisfied the statutory requirements of the Patents Act. According to the Controller, the company failed to disclose the death of the inventor at the time of filing the patent application and did not provide a death certificate to establish the fact of death. The Controller argued that in cases where an inventor has passed away, the patent application must either be filed by the legal representative of the deceased inventor or must include an assignment executed by the legal representative transferring the rights in the invention.

The Controller relied on Section 6(1)(c) of the Patents Act to argue that where an inventor is deceased, the legal representative of the deceased person is the person entitled to apply for the patent. Since the company had not produced any assignment from the legal representative of the deceased inventor, the Controller argued that the company had not established its entitlement to apply for the patent.

The Controller also relied on Section 68 of the Patents Act. Section 68 provides that assignments relating to patents must be in writing and duly executed. According to the Controller, the employment agreement produced by the company was general in nature and did not specifically refer to the particular invention for which the patent application had been filed. The Controller therefore concluded that the employment agreement could not be treated as a valid assignment of rights in the invention.

Court’s Decision

After considering the submissions of both parties, the Delhi High Court allowed the appeal and set aside the refusal order passed by the Controller of Patents. The Court held that the Controller had misinterpreted the relevant provisions of the Patents Act and had applied them in an overly rigid manner.

The Court first examined the scope of Section 68 of the Patents Act. Section 68 requires assignments relating to patents to be in writing and duly executed. The Court observed that this provision primarily applies to assignments of a granted patent or interests in a patent. In the present case, however, the issue concerned the right to apply for a patent and not the assignment of a granted patent. Therefore, the Court held that the Controller’s reliance on Section 68 was misplaced.

The Court then examined Sections 6 and 7 of the Patents Act. Section 6 specifies who may apply for a patent, and Section 7(2) requires an applicant who is not the inventor to provide proof of the right to apply for the patent. The Court observed that the statute does not prescribe a specific format or type of document that must be submitted as proof of right. Instead, the requirement is simply that the applicant must demonstrate that it has the legal entitlement to apply for the patent.

The Court carefully considered the Employer-Employee Agreement and other documents produced by the appellant. The Court noted that the agreement was signed by the inventor and clearly indicated that intellectual property developed during employment would belong to the company. When read together with the company’s internal intellectual property regulations and declarations, the Court found that the documents sufficiently established the company’s entitlement to apply for the patent.

The Court also relied on the principle laid down by the Supreme Court in Kailash v. Nanhku (2005). In that case, the Supreme Court held that procedural rules are intended to assist the administration of justice and should not be applied in a manner that defeats substantive rights. Applying this principle, (the Delhi High Court observed that the Controller had adopted an excessively technical approach to the proof of right requirement.

Another factor considered by the Court was the past practice of the Patent Office. The Court observed that several other patent applications involving the same inventors had previously been granted based on similar documents establishing proof of right. This indicated that the Patent Office itself had accepted such documents as sufficient evidence of entitlement.

For these reasons, the Court concluded that the refusal order could not be sustained. The Court therefore set aside the order of the Controller and directed the Patent Office to proceed with the examination of the patent application in accordance with law.

Conclusion

The judgment in Nippon Steel Corporation v. Controller of Patents clarifies the legal position regarding the requirement of proof of right under the Patents Act, 1970. The Delhi High Court emphasised that the law does not impose rigid formal requirements regarding the nature of documents that may be used to establish an applicant’s entitlement to apply for a patent. The essential requirement under Section 7(2) is that the applicant must demonstrate that it has the legal right to file the application, and this requirement may be satisfied through a combination of documents such as employment agreements, corporate intellectual property policies and declarations.

The decision also highlights the importance of interpreting statutory provisions in their proper context. The Court clarified that Section 68, which deals with assignments of patents, cannot automatically be applied to situations involving the assignment of the right to apply for a patent. By distinguishing between these two situations, the Court ensured that the statutory provisions are applied in a manner consistent with their purpose.

More broadly, the judgment reinforces the principle that procedural requirements should facilitate the protection of legitimate rights rather than obstruct them through overly technical interpretations. By setting aside the refusal order and directing the Patent Office to reconsider the application, the Court affirmed that genuine inventions should not be denied patent protection merely because of rigid procedural objections. The decision therefore contributes to greater clarity and predictability in the administration of patent law in India and provides guidance for both patent applicants and the Patent Office when dealing with the issue of proof of right in future cases.