Obtaining

In one line

Where an opponent proves that the applicant took the invention from them, the Controller may treat the patent as the opponent's rather than simply refusing the application.

In the wording a student can write in an exam: section 26 of the Patents Act, 1970 provides that where in an opposition the Controller finds that the invention or a part of it was obtained from the opponent in the manner set out in section 25(1)(a) or 25(2)(a), he may pass the orders in that section, including a direction that the patent stand amended or that an application be treated as the opponent's own.

The problem it answers

Refusal is not a remedy for theft. If the Controller merely refuses the application, the true inventor gets nothing. The invention has been published, so it is in the public domain, and the true inventor cannot file afresh because their own invention is now prior art against them.

So section 26 lets the Controller transfer rather than destroy. The invention stays in the system and the right ends up with the person entitled to it.

The provision itself

Section 26(1). Where in any opposition proceeding the Controller finds that:

(a) the invention, so far as claimed in any claim of the complete specification, was obtained from the opponent in the manner set out in clause (a) of sub-section (2) of section 25, and revokes the patent on that ground, he may, on request by such opponent made in the prescribed manner, direct that the patent shall stand amended in the name of the opponent;

(b) a part of an invention described in the complete specification was so obtained from the opponent, he may pass an order requiring that the specification be amended by the exclusion of that part of the invention.

Section 26(2). Where an opponent has, before the date of the order requiring amendment under clause (b), filed an application for a patent for an invention which included the whole or a part of the invention held to have been obtained from him, and that application is pending, the Controller may treat that application and specification, so far as they relate to the invention held to have been obtained from him, as having been filed, for the purposes of the Act relating to the priority dates of claims, on the date on which the corresponding document was or was deemed to have been filed by the patentee in the earlier application; but for all other purposes the opponent's application proceeds as an ordinary application.

Note carefully what section 26 does and does not reach. Clause (a) is expressed by reference to section 25(2)(a), the post-grant ground, and it operates where the Controller revokes the patent. It is not a power exercised on a pre-grant representation. A pre-grant opponent who makes out section 25(1)(a) gets the application refused, and their route to a patent of their own is section 26(2)'s priority rule only if they have an application pending, or section 52 after a revocation.