Foreign-Related Intellectual Property Lawyer: What Are the Legal Rules Governing Intellectual Property Assignment in India

1. Requirements or Restrictions for Intellectual Property Assignment in India

Under Section 68 of the Act, an assignment of a patent or of a share in a patent must be made in writing and must contain all the terms and conditions governing the rights of both the assignor and the assignee. The agreement must be duly executed by both parties.

In addition, under Section 69 of the Act, the assignee must apply in writing to the Controller for registration of title or registration of the assignment agreement, together with two copies of the assignment agreement.

Further, where a patent is granted to two or more persons, the patent or any share in the patent may not be assigned without the consent of the other person or persons.

1. Procedure for Intellectual Property Assignment in India

To assign an Indian patent, the parties must first prepare an assignment agreement and then formally execute it. The agreement must clearly set out all the terms and conditions agreed between the parties. Such assignment must also be duly stamped in accordance with the Indian Stamp Act, 1899.

After execution of the agreement, the assignee must apply in writing to the Controller in the prescribed form, namely Form 16, for registration of title to the patent. Form 16 must be accompanied by two copies of the executed assignment agreement. Once the Controller is satisfied with Form 16 and the contents of the assignment agreement, the Controller will register the assignee as the proprietor or co-proprietor of the patent in the register of patents. The entry in the register will also include details of the legal instrument under which the assignee acquired title to the patent or share in the patent.

1. Requirements or Restrictions for Intellectual Property Licensing in India

Under Section 68 of the Act, for a patent license, the licensor and the licensee must enter into a patent license agreement containing all the terms and conditions agreed during negotiations. The license agreement must be in writing, otherwise it has no legal effect.

After execution of the agreement, under Section 69 of the Act, the licensee must apply in writing to the Controller for registration of title, together with a copy of the license agreement. At the request of either the patentee or the licensee, the copy of the license agreement submitted to the Controller will be kept confidential.

In addition, where a patent is granted to two or more persons, the patent or any share in the patent may not be licensed without the consent of the other person or persons.

Further, Section 140 of the Act prohibits the inclusion of certain clauses in a license agreement. For example, the licensor may not prohibit the licensee from acquiring and using from other licensors any product other than the patented product or a product manufactured by the patented process. The agreement must also not contain clauses relating to exclusive grant-back obligations, restrictions on challenging the validity of the patent, or mandatory package licensing.

1. Procedure for Intellectual Property Licensing in India

The following types of licensing apply in India:

Voluntary license: where the patentee voluntarily agrees to grant a license for the patent.

Compulsory license: only after the expiration of three years from the grant of the patent, the Controller may grant a compulsory license upon application by any person who can establish any one of the following:

the reasonable requirements of the public with respect to the patented invention have not been satisfied;

the patented product is not available to the public at a reasonably affordable price;

the patented invention is not worked in India.

For the grant of a voluntary patent license, the licensor and the licensee must first prepare and sign a license agreement. The agreement should include:

the type of license, whether exclusive or non-exclusive;

the scope of the license, including the patent being licensed and the territory covered by the license;

the term;

the obligations of the licensor and the licensee;

the royalty provisions.

After execution of the agreement, the licensee must apply in writing to the Controller for registration of title to the patent, together with a copy of the license agreement.

As regards compulsory licensing, under Section 84 of the Act, the applicant must file an application with the Controller and state the nature of the applicant’s interest on which the application is based. In considering the application, the Controller will take into account the following factors:

the nature of the invention;

the applicant’s ability to work the invention;

the applicant’s ability to undertake the financial risk involved in working the patent;

whether the applicant has made efforts to obtain a license from the patentee on reasonable terms and conditions but has not succeeded within a reasonable period.

Disclaimer

Laws and procedures may change. This article provides general information only and does not constitute legal advice. If you encounter an intellectual property dispute overseas, please contact us immediately to consult a professional foreign-related lawyer.