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Patent Assignments

and Licenses

By
Dr. Kalyan C. Kankanala
Brain League IP Services

Copyight, Brain League IP Services, 2009.


Non-commercial use is permitted.
Transfer of Patents

• Assignment
• License

Copyight, Brain League IP Services, 2009.


Non-commercial use is permitted.
Assignment

• Transfer of Ownership
• Partial or Complete
• Writing and Signature
• Register

Copyight, Brain League IP Services, 2009.


Non-commercial use is permitted.
License

• Authorization or Permission
• Exclusive Rights
• Territory
• Writing
• Signature
• Register

Copyight, Brain League IP Services, 2009.


Non-commercial use is permitted.
Types of Licenses

• Exclusive
• Non-exclusive
• Sole

Copyight, Brain League IP Services, 2009.


Non-commercial use is permitted.
Important clauses

• Recitals
• Definitions
• Grant
• Royalties
• Term and Termination

Copyight, Brain League IP Services, 2009.


Non-commercial use is permitted.
Recitals

• Parties – Licensor/Licensee
• Addresses
• Dates
• Background of the transaction

Copyight, Brain League IP Services, 2009.


Non-commercial use is permitted.
Definitions

• Interpretation clause
• Consistently used words
– Specific/certain/lucid
• Attribute specific meaning
• Apply to entire agreement

Copyight, Brain League IP Services, 2009.


Non-commercial use is permitted.
Examples
• Licensor shall mean ABC company having a place of business in Bangalore and
shall include its subsidiaries, assignees and legal representatives.

• Licensee shall mean Kalyan, resident of xyz, Bangalore and shall include his
successors, assignees, administrators, executors and other legal representatives.

• Licensed Patent shall mean patents granted in USA under patent numbers xxx,
yyy and patent applications pending before Indian Patent Office having filing
numbers xxx, and YYY.

Copyight, Brain League IP Services, 2009.


Non-commercial use is permitted.
Grant Clause
• Most important
• Defines scope of agreement
• States
– Parties
– Type
– Subject
– Rights
– Territory
– Term

Copyight, Brain League IP Services, 2009.


Non-commercial use is permitted.
Example
• Licensor grants to Licensee a nonexclusive license to use the Licensed Software within the
territory of India from 1st January, 2005 to 1st January, 2006.

• This clause specifies


• Who grants to whom -Licensor to Licensee.
• Type of license - Nonexclusive License
• Rights – Use Licensed Software
• Territory - India
• Dates - January, 2005 to 1st January, 2006

Copyight, Brain League IP Services, 2009.


Non-commercial use is permitted.
Term and Termination
• Term
• Events
– Material Breach - Nonpayment of royalty, etc.
– Bankruptcy
– Insolvency
– Act of god
• Rights after termination
• Confidentiality

Copyight, Brain League IP Services, 2009.


Non-commercial use is permitted.
Example
• Unless earlier terminated as hereinafter provided, this
Agreement shall extend to each country in the Territory for
a term of ten (10) years from the Effective Date. The term
of the agreement is renewable at the option of the parties
and such term and conditions shall be finalized after
negotiations based on terms agreeable to both the parties.

Copyight, Brain League IP Services, 2009.


Non-commercial use is permitted.
Royalty Clause
• Type of Royalty
– Lump sum royalty
– Fixed Royalty
– Running royalty
• Combination.
• Mode and Date of payment
• Accounting and Record keeping
• Non payment consequences.

Copyight, Brain League IP Services, 2009.


Non-commercial use is permitted.
Example
• XYZ agrees to pay ABC, a fixed royalty of Twenty-
Thousand-Dollars ($ 20,000) per every Calendar Year
after the first year. For the first Calendar Year, XYZ
shall pay ABC a fixed royalty of Ten-Thousand Dollars
($ 10,000). Such sum shall be paid on or before
December 11th of every Calendar Year.

Copyight, Brain League IP Services, 2009.


Non-commercial use is permitted.
Other Clauses

• Indemnity
• Warranty
• Liability

Copyight, Brain League IP Services, 2009.


Non-commercial use is permitted.
NRDC V. ABS

• Patent License
• Not registered
• Expiry of patent term
• License invalid

Copyight, Brain League IP Services, 2009.


Non-commercial use is permitted.
• Compulsory Licenses

Copyight, Brain League IP Services, 2009.


Non-commercial use is permitted.
Working of a Patent

• Reasonable prices
• Public Health
• Public Interest
• Technology Transfer
• Industrial Progress

Copyight, Brain League IP Services, 2009.


Non-commercial use is permitted.
Conditions

• Reasonable requirements of public


• Reasonably affordable prices
• Working in India

Copyight, Brain League IP Services, 2009.


Non-commercial use is permitted.
Procedure

• Any person
• Three years – Patent Grant
• Prima Facie Case
• Publication
• Opposition
• Grant

Copyight, Brain League IP Services, 2009.


Non-commercial use is permitted.
Compulsory Licenses

• Related Patents
• Emergency
• Expoert

Copyight, Brain League IP Services, 2009.


Non-commercial use is permitted.
Example 1

• There is a SWINEFLU outbreak in India and more


than hundred lives are lost in a period of one month. X,
a pharma company, holds a patent over a drug to
prevent SWINEFLU. On recognizing the need for the
drug X starts manufacture of the drug on a large scale
by tying up with companies A, B and C. D, a generic
company approaches X for a manufacturing contract
and on being refused applies for a compulsory license.

• Will a compulsory license be granted to D?

Copyight, Brain League IP Services, 2009.


Non-commercial use is permitted.
Example 2

• A acquires a patent over a tyre and B


holds a patent over the rim used in such
tyres. A approaches B for a license of the
patented rim to manufacture and sell his
patented tyre. On B's refusal, A files for
a compulsory license.

• Will the license be granted?


Copyight, Brain League IP Services, 2009.
Non-commercial use is permitted.
Example 3

• Rove, a bike manufacturing company holds


twenty patents over electic bike technology. It
makes five electric bikes every year and sells
each bike at a cost of 5 lakhs. A, another bike
manufacturing company applies for a
compulsory license over all the patents.

• Will a compulsory license be granted?

Copyight, Brain League IP Services, 2009.


Non-commercial use is permitted.
Thank You

Copyight, Brain League IP Services, 2009.


Non-commercial use is permitted.