What is Patent Assignment?

The word ‘assignment’ has not really been defined in the Patents Act. However, it refers to the act
through which the assignor transfers some or all the rights to the patent to an assignee. Post
assignment, the assignee would have the right to sue anyone who violates the patent by using the
invention without their consent. Section 70 of the Patent Act grants power to the proprietor (assignor)
to assign, grant license, etc. to other individuals (assignee) with respect to the patent. This graSection
50(3) of the Patents Act, 1970 states that in case a patent is co-owned by two or more individuals, any
share of the patent cannot be assigned to anyone else without the consent of all co-owners.nt of power
must be in written and duly executed for it to be a legally acceptable transfer of rights.

Types of Patent Assignments

Legal Assignment: A legal assignment is where the assignee may enter their name as the patent owner
in the government records. A patent created through a deed can only be assigned through a deed. Once
the assignor has completed the process, the assignee gains all the rights of the patent.

Equitable Assignment: Any form or agreement including a letter in which the proprietor agrees to share
a certain share of the patent with another individual is referred to as the equitable assignment of the
patent. While the assignee cannot get their name entered in the register as one of the owners, they can
notify the register of their interest in the patent.

Mortgages: Mortgages are assignments where the owner provides partial or complete right to an
assignee in exchange for a certain amount of money. Once the amount is repaid, the owner gains back
all rights to the mortgaged property. The lender cannot register themselves as the proprietor in the
records, but get their name entered in the register as mortgagee.

Requirements for Patent Assignment

As mentioned before, patent assignment can only be considered a valid assignment if it has been
drafted in writing and duly executed through the legal process.

The written draft must define all the rights and obligations of both the parties with respect to the
patent.

The assignee shall apply in writing to the Controller of Patents to enter their name into the register of
patents. Once the Controller of Patents is satisfied that the assignee has a genuine interest in the
patent, they shall enter the details of assignment into their register.

Amendments and Termination

Amending Patent Assignment Agreement

In case of infringement or mutual concession, the parties involved in the assignment may agree to
amend certain parts of the agreement. Amendments in the patent assignments can majorly be
processed in the equitable assignment deed. The deed should be registered with the Controller of
Patents if it needs to be amended and cannot be halfway through the assignment process.

Termination of Patent Assignment Agreement

Deed termination is not really possible, as it is irrevocable and permanent in nature. Transferring the
title of a patent through assignment is pretty much a permanent decision. It can only be terminated if it
is a mortgage assignment deed.

Patent Licensing

Patent licensing is a process of granting permission to a third party to extract benefits by selling and
using the licensed product. The patent owner gives license to a third party to use his patented invention
based on the agreement and royalty. The license can be given for a period of time as per the mutual
understanding between patent owner and licensee. During this time period, the licensee can use
patented invention and can take financial benefits.

Licensing is a contract between two parties where licensor agrees the terms and conditions of patent
owner. Since it is a contract or agreement, it must follow the Sections 10 and 11 of Indian Patent Act
1970. As per Section 68 of the Patent Act 1970, the agreement must be in writing.

Types of Patent Licensing

Exclusive License: In Exclusive licensing, all the rights except title of the invention are given to the
licensee. Patent owner transfers the ownership of the patent to the licensee. Patent owner has only the
title of the invention.

Non Exclusive License: In Non Exclusive Licensing, the license of the patent can be granted to more than
one party and all of them can commercialize the patent into the market. Thus, patent owner has rights
to license his patented invention to more than one party.

Sub License: Licensee has rights to issue Sub license to different organizations for making the product of
patented invention. Patent owner give rights to licensee and the licensee has the right to issue the
license further to a third party that can use patented invention. The financial benefits will depend on the
contract between the primary licensee and third party.

Licensing under Indian Patent Act 1970

Sections 84-92 of IPA 1970 are related to Licensing of a patent. According to the IPA 1970, patent
licensing should be in writing between the licensor and the licensee. Section 84 of IPA 1970 states the
terms and conditions required for issuing Compulsory Licensing. The Act has the provision and
empowers the Controller to issue the Compulsory Licensing to a third party. Compulsory Licensing is
possible only if the patented invention is useful to public health or in National Emergencies or health
crisis. According to the 84 Section of IPA 1970, after three years from the grant of the patent, any
interested person can write an application to the Controller for grant of Compulsory License.

Limitations of Patent Licensing

Licensing could be less profitable. It may happen that if patent owner make the invention available in
market can achieve more profit than licensee. Though investing capital is a risk, but profits can be more
than expectations.

Patent owner has to depend on the licensee for profits. Patent owner is totally dependent on the
licensee, his sources, his skills and the efforts for marketing the patented invention and further for
financial benefits. Thus, if proper licensee is not selected then the product may fail in market.
What are ‘compulsory licenses’ under the Patents Act?

In simple terms, compulsory licenses are authorizations given to a third-party by the Government to
make, use or sell a particular product or use a particular process which has been patented, without the
need of the permission of the patent owner. The provisions regarding compulsory licenses are given in
the Indian Patents Act, 1970 and in the TRIPS (Trade-Related Aspects of Intellectual Property Rights)
Agreement at the International level.

Under Indian Patents Act, 1970 the provisions of ‘compulsory license’ are specifically given under
Chapter XVI, and the conditions which need to be fulfilled are given is Sections 84-92 of the said Act.

As per Section 84, any person who is interested or already the holder of the license under the Patent can
make a request to the Controller for grant of compulsory license on expiry of the three years, when the
above conditions are fulfilled.

Section 92 A- For exports, under exceptional circumstances. Section 92A- In case of national emergency,
extreme urgency of public non-commercial use by notification of the Central Government. Section 92 A
(1) – To a country which has insufficient or no manufacturing power in the pharmaceutical sector to
address public health.

GOVERNMENT USE OF PATENTED INVENTIONS. — In 1933, the Ten- nessee Valley Authority was given
access to all patent office records and the privilege of appropriating a license to use those patents it
needed, while the patentee was given a cause of action against the Authority for recovery of reasonable
compensation.1 Prior to passage," much hysteri- cal opposition " was voiced against this section of the
Act as authorizing the "confiscation and invasion of private property rights." But as- suming that the TVA
would be acting as an agent of the Government, this provision did no more than restate the existing law.
Today, as the impact of the Government's needs upon the patent rights of inventors is increased by the
huge building programs of the army and navy, an inquiry into the right of the Government to use
patented inventions and the remedies of patentees consequent upon such use is again timely.

Sec. 99-Meaning of use of invention for purposes of Government.

(1) For the purposes of this Chapter, an invention is said to be used for the purposes of Government if it
is made, used, exercised or vended for the purposes of the Central Government, a State Government or
a Government undertaking.

(2) Without prejudice to the generality of the provisions of sub- section (1),-

(a)the importation, by or on behalf of the Government, of any invention being a machine, apparatus or
other article covered by a patent granted before the commencement of this Act, for the purpose merely
of its own use; and

(b) the importation, by or on behalf of the Government, of any invention being a medicine or drug
covered by a patent granted before the commencement of this Act-

(i) for the purpose merely of its own use; or

(ii) for the purpose of distribution in any dispensary, hospital or other medical institution maintained by
or on behalf of the Government or in any other dispensary, hospital or other medical institution which
the Central Government may, having regard to the public service which such other dispensary, hospital
or medical institution renders, specify in this behalf by notification in the Official Gazette, shall also be
deemed, for the purposes of this Chapter, to be use of such invention for the purposes of Government.

(3) Nothing contained in this Chapter shall apply in respect of any such importation making or using of
any machine, apparatus or other article or of any such using of any process or of any such importation,
using or distribution of any medicine or drug, as may be made by virtue of one or more of the conditions
specified in section 47.

Sec100- Power of Central Government to use inventions for purposes of Government

(1)Notwithstanding anything contained in this Act, at any time after an application for a patent has been
filed at the patent office or a patent has been granted, the Central Government and any person
authorised in writing by it, may use the invention for the purposes of Government in accordance with
the provisions of this Chapter.

(2) Where an invention has, before the priority date of the relevant claim of the complete specification,
been duly recorded in a document, or tested or tried, by or on behalf of the Government or a
Government undertaking

(3) If and so far as the invention has not been so recorded or tried or tested as aforesaid, any use of the
invention made by the Central Government or any person authorised by it under sub-section (1),

Section 100(6): The right to make, use, exercise and vend an invention for the purposes of Government
under sub-section (1) shall include the right to sell on non-commercial basis, the goods have been made
in exercise of that right, and a purchaser of goods so sold, and a person claiming through him, shall have
the power to deal with the goods as if the Central Government or the person authorized under sub-
section (1) were the patentee of the invention.

Surrender and Revocation of Patents

Section 63 of the Patents Act, 1970 allows a patentee to surrender a patent. The patentee can
offer to surrender his patent by giving notice to the Controller. The offer to surrender the
patent should be published by the Controller, and every person interested in the patent must
also be notified of the same.After the publication, any interested person can oppose the surrender, by
giving notice to the Controller which should be notified by the Controller to the patentee. If the
patentee or the opponent wants to be heard, the Controller, on being satisfied that the patent may be
surrendered and after the hearing, may accept the offer and revoke the patent by order.

Revocation of Patents

Section 64 of the Patents Act, 1970 deals with the ‘Revocation of patents’. A patent that has

been granted to an invention can be revoked by the Appellate Board in the following ways:

1.on a petition filed by any interested person; or

2.on a petition filed by the Central Government; or

3. on a counter-claim in a suit for infringement of the patent by the High Court.
Grounds for Revocation of Patents

A patent may be revoked on any of the following grounds:

1. where an invention as claimed in a valid claim of earlier priority date which is

included in the complete specification of another patent;

2. where the patent application was filed by a person who is not entitled under the

provisions of the Act and was granted a patent on such application;

3.where the patent was wrongfully obtained and the rights of the petitioner or any

person under/through whom he claims, were contravened;

4. when the subject of a claim of the complete specification is not an invention within

the meaning of the Act;

5. where the invention that is being claimed is not new having regard to what was

publicly known or used in India before the priority date of the claim and also having

regard to what was published in any of the documents, whether in India or elsewhere;