How to Substitute the Applicant on a Pending Indian Patent Application Under Section 20 of the Patents Act
Where a patent application was filed in one name and the rights have since moved to another, somebody has to substitute the applicant on the Patent Office record. That is a statutory function under Section 20 of the Patents Act, 1970, not an administrative formality, and it is conditioned in ways that catch out assignees who assume a signed assignment is enough. The Bombay High Court's judgment of September 8, 2026 in Dr. Tarkeshwar Chandrakant Patil v. Indian Institute of Technology, Bombay, where an application drifted for thirteen years and was then refused for want of proof of right, is a working illustration of what goes wrong. This guide sets out the steps.
Step 1: Identify the Basis of the Claim
Section 20 carries the marginal heading "Powers of Controller to make orders regarding substitution of applicants etc." It allows the Controller, on a claim made before the patent is granted, to direct that the application proceed in the claimant's name where the claimant would be entitled to the patent, or to the applicant's interest in it, by virtue of an assignment or agreement in writing made by the applicant, or by operation of law.
Fix which of those three routes you are on before drafting anything. An assignment and an agreement are treated together and attract the conditions in Step 3. Devolution by operation of law, on a merger or on death, is a different evidentiary exercise and the instruments you need are different.
Step 2: Check the Territorial Scope of the Instrument
An assignment drafted for a foreign filing programme frequently describes territory by exception, for example by reference to one named country and all countries foreign thereto. In the IIT Bombay matter it was argued that such wording excluded India. The Court rejected that reading, but only after a contested hearing in a petition that should never have been necessary.
In practice, draft by inclusion. State that the assignment covers all territories including India, identify the Indian application by its application number, and record the effective date. Where an existing instrument is ambiguous, obtain a short confirmatory deed or a written acknowledgment from the assignor rather than litigating the construction later.
Step 3: Satisfy One of the Four Statutory Conditions
Where the claim rests on an assignment or agreement, the Controller may not give a direction under Section 20 unless one of the following is satisfied:
Identification by application number: The invention is identified in the instrument by reference to the number of the application.
Written acknowledgment: There is produced an acknowledgment in writing by the assignor, or by the person claiming under him, that the assignment or agreement relates to that invention.
A final decision of a court: The rights of the claimant have been finally established by a decision of a court.
Directions from the Controller: The Controller gives directions regulating the manner in which the application is to proceed.
The first condition is the cheapest to satisfy and the one most often missed, because assignments are frequently executed as part of a portfolio transfer that never descends to individual application numbers. A schedule listing the applications, incorporated into the deed, converts a contested question into a documentary one.
Step 4: Furnish Proof of Right Under Section 7(2)
Section 7(2) provides that where the application is made by virtue of an assignment of the right to apply for a patent, proof of the right to make the application must be furnished with the application or within the period prescribed after filing. Section 7(3) separately requires the application to state that the applicant is in possession of the invention and to name the person claiming to be the true and first inventor, with a declaration of belief where that person is not the applicant.
Proof of right and substitution are related but distinct. Proof of right answers whether the applicant is entitled to apply at all. Substitution answers who the application should now proceed for. An objection framed as one is often really about the other, so read the objection carefully before answering it.
Step 5: Where the Signatory Is an Institution, Trace the Authority
An assignment executed by an office holder of a university, research institution or company raises a question the Controller is entitled to ask: was that person competent to execute it. In the IIT Bombay matter the Court upheld the Dean, Research and Development as the competent authority by reference to the institution's own intellectual property policy.
Put that material on the file at the outset. The internal policy, board resolution or delegation that authorises the signatory belongs with the assignment, not in a later affidavit.
Step 6: Answer Objections Before They Become a Refusal
Under Section 14, where the examiner's report is adverse or requires amendment, the Controller must communicate the gist of the objections as expeditiously as possible and, if the applicant so requires within the prescribed period, give an opportunity of being heard. Ask for that hearing.
Section 15 is the provision to keep in view. It permits the Controller to refuse the application, or require it to be amended, where the application or any specification or other document does not comply with the Act or the rules. A refusal under Section 15 founded on an unanswered entitlement objection is an expensive outcome, because it converts a documentary gap into an order that must then be challenged.
Step 7: If It Is Refused, Use the Appeal
Section 117A provides an appeal against decisions, orders and directions of the Controller under the enumerated provisions, which include Section 15 and Section 20. The appeal must be made within three months of the decision, order or direction, or within such further time as may be allowed.
Note the change of forum. The Intellectual Property Appellate Board was abolished by the Tribunals Reforms Act, 2021 and its jurisdiction under the Patents Act transferred to the High Courts, so an appeal under Section 117A now lies to the High Court. Where the complaint is not merely an adverse decision but a failure to decide at all, or an order passed without considering the merits, practitioners have also invoked the High Court's writ and commercial jurisdiction, as happened in the IIT Bombay matter.
Common Pitfalls to Avoid
Assuming a signed assignment is self-executing: It is not. Until a direction is made under Section 20, the Patent Office record continues to show the original applicant, with all the consequences that follow for correspondence and for deadlines.
Describing territory by exception: Wording that names one country and refers to all countries foreign thereto invites an argument that India was excluded. Say India expressly.
Omitting the application number: Without it you are thrown back on the assignor's written acknowledgment or a court decision, which are slower and may not be available if relations have soured.
Leaving the signatory's authority undocumented: An institutional assignment without the internal authority behind it is an objection waiting to be raised.
Letting the register drift: Where the applicant designation changes without a reasoned order, neither side can rely on the record. Seek an order under Section 20 rather than accepting an unexplained entry.
Missing the three month appeal window: Section 117A runs from the date of the decision, order or direction, and an extension is discretionary rather than automatic.
Key Statutory Provisions
Section 7(2) of the Patents Act, 1970: Proof of the right to make the application where it is made by virtue of an assignment of the right to apply.
Section 7(3) of the Patents Act, 1970: Statement of possession of the invention, naming of the true and first inventor, and the declaration where the applicant is not that person.
Section 14 of the Patents Act, 1970: Consideration of the examiner's report, communication of the gist of objections and the opportunity of being heard.
Section 15 of the Patents Act, 1970: Power of the Controller to refuse the application or require amendment for non-compliance with the Act or the rules.
Section 20 of the Patents Act, 1970: Powers of the Controller to make orders regarding substitution of applicants, and the four conditions attaching to a claim founded on an assignment or agreement.
Section 117A of the Patents Act, 1970: Appeal against enumerated decisions of the Controller, including under Sections 15 and 20, within three months.
Sources and References
Section 20 of the Patents Act, 1970: substitution of applicants
Dr. Tarkeshwar Chandrakant Patil v. Indian Institute of Technology, Bombay, 2026:BHC-OS:19905
Patents Act, 1970, Sections 7(2), 7(3), 14, 15, 20 and 117A
Disclaimer: This article is for informational purposes only and does not constitute legal advice. Readers should consult a qualified legal professional for advice specific to their circumstances.
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