Assignee under Patents Act

Introduction

The term “Assignee” refers to a person to whom some right, interest, or title to property is transferred. In Patent law, the term Assignment refers to transfer of patent rights and such transfer of patent rights is often permanent.

According to Section 2 [Definitions and interpretation] of Indian Patent Act, the assignment of patent refers to the transfer of patent rights by the patent holder (assignor) to another person (assignee). The term Assignee also includes:

a. The assignee of the assignee; and
b. The legal representative of a deceased assignee.

After death of the assignee, its legal representatives are also called as assignee.

Requirements for creation of any interest in a patent:

Section 68 of the Indian Patents Act 1970 provides for the mortgage of, license or creation of any interest in the patent.

Assignments, etc., not to be valid unless in writing and duly executed.1 —An assignment of a patent or of a share in a patent, a mortgage, license or the creation of any other interest in a patent shall not be valid unless the same were in writing and the agreement between the parties concerned is reduced to the form of a document embodying all the terms and conditions governing their rights and obligations and duly executed

Requirements:

  1. The assignment, mortgage or license should be reduced to writing in a document embodying all the terms and conditions governing the rights and obligations between the parties;
  2. An application for registration of such document should be filed in the prescribed manner in Form-16 within the time prescribed under section 68. The document when registered will have effect from the date of execution.

Why and where is this patent agreement necessary?

A patent is important because it helps to safeguard your invention. It protects any product design that meets a certain identification according to its originality, practicality, suitability, and utility. The patent owner has the right to stop others from commercially utilizing the patented invention. A patent contract can protect an invention for 20 years. This time period starts as you file a patent application. Patent protection means that the invention cannot be commercially made, used, imported and sold by others without the patent owner’s consent. Only the owner of a patent has the complete right to utilize its value to the exclusion of all other parties. Therefore, protecting ownership of a patent and its accompanying rights can be very important to a company. A patent license agreement typically gives an assignee exclusive right to manufacture, sell, and use a patented invention, subject to terms and conditions. A patent license agreement will also define the number of royalties the assignee owes the assignor.

Forms/Nature of Transfer of Patent Rights:

Grant of a Patent confers to a patentee the right to prevent others from making, using, exercising or selling the invention without his permission. The following are the ways in which a patentee can deal with the patent:

  1. Assignment
  2. Licenses
  3. Transmission of patent by operation of law

1. Assignment

The term ‘assignment’ is not defined in the Indian Patents Act. Assignment is an act by which the patentee assigns whole or part of his patent rights to the assignee who acquires the right to prevent others from making, using, exercising or vending the invention. There are three kinds of assignments

  • Legal Assignment
  • Equitable Assignment
  • Mortgage

2. Licenses:

The Patents Act allows a patentee to grant a License by the way of agreement under section 70 of the Act. A patentee by the way of granting a license may permit a licensee to make, use, or exercise the invention. A license granted is not valid unless it is in writing. The license is contract signed by the licensor and the licensee in writing and the terms agreed upon by them including the payment of royalties at a rate mentioned for all articles made under the patent. Licenses are of the following types,

  • Voluntary License
  • Statutory License(such as compulsory License)
  • Exclusive/Limited License
  • Express/Implied License

3. Transmission of Patent by Operation of law

When a patentee dies, his interest in the patent passes to his legal representative; in case of dissolution or winding up of a company or bankruptcy transmission of patent by operation of law occurs.

Sample draft of the agreement/contract

PATENT ASSIGNMENT AGREEMENT

This Patent Assignment Agreement (“this Agreement”) is made and executed on this Day/Month/Year.

BY AND BETWEEN

(Name of Assignor), Age: __ years, Nationality: ________, Occupation:_______, Residing at —————————————————————————————————————. (Hereinafter referred to as “the Assignor”, which expression shall mean and include his legal heirs, successors, executors, administrators, assigns, etc.)

AND

_____________ College of Engineering, Pune, an autonomous institute of Government of Maharashtra, having its registered office at ________________________________, Pune 411005, Maharashtra, India, through its authorized signatory (Director’s Name), Age: — years, Occupation: Service, (hereinafter referred to as “the Assignee”, which expression shall mean and include its administrators, executors, assigns, etc.)

Both the Assignor and the Assignee jointly shall be referred to as “the parties”.

WHEREAS:

A]      The Assignor and (Name of Assignee) have invented (Name of Invention) (“the Invention”),

B]      The Assignor has individually applied to the Controller of Patents (“the CoP”) by virtue of application number ____________ in order to obtain registration of patents over the Invention in his own name. The details of the patent are more specifically described in Schedule A to this Agreement. The application was published in the patent journal on Month/day/year. The application for grant of patent is pending prosecution before the CoP,

C]       During the pendency of prosecution of the patent application, the Assignee is desirous of acquiring 50% (fifty per cent) rights, title, ownership, and interest in the Patent over the Invention;

Conclusion

An assignment is the transfer of all the proprietary rights by the patentee to the assignee while the license is the right granted to work the invention by withholding the proprietary rights with the patentee4. An assignee can in turn reassign his rights to third parties while the licensee cannot change the title or cannot reassign his rights to the third person. An assignee is assigned with all the rights that the patent owner can enjoy while the licensee cannot enjoy such rights. Also an assignee has the right to sue the infringer while the licensee is not empowered with the rights to sue any party for the infringement of the patent in his name. Having known the difference between assignment and license from the aforesaid, the patentee can decide the best possible way of commercializing his/her invention.

Reference

  1. https://ipindia.gov.in/writereaddata/Portal/ev/sections/ps69.html
  2. Indian Patent Act 1970 Bare Act
  3. https://lawbhoomi.com/
  4. https://indiankanoon.org/

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