Registration of Assignments/Transfer of Right of Patent in India

Registration of Assignments/Transfer of Right

The Patents Act, 1970

Section 68, 69. Rule 90, 91, 92.

1) An assignment of a patent or of a share in a patent, a mortgage, licence or the creation of any other interest in a patent shall be valid only if 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 has been duly executed.

2) Any person who becomes entitled by assignment, transmission or operation of law to a patent or to a share in patent or becomes entitled as a mortgagee, licensee or otherwise to any other interest in a patent, may apply in writing in Form-16 to the Controller for the registration of his title or notice of his interest in the register, as the
case may be. Such an application can also be made by the assignor, mortgagor, licensor or other party as the case may be. Provided that in the case of a license granted under a patent, the Controller shall, if so requested by the patentee or licensee, take steps for securing that the terms of the license are not disclosed to any person except under the order of a court.

3) Where such application is made for the registration of title or notice of interest of any person, the Controller, upon proof of title or interest to his satisfaction, shall enter in the register such particulars as are appropriate.

4) If there is any dispute between the parties, the Controller may refuse to take any action to make an entry in the register until the rights of the parties have been determined by a competent court.

5) Except for the purpose of making an application for registration of right, title or interest in the register of patents, or for an application for rectification of the register of patents in the Appellate Board, a document in respect of which no entry has been
made in the register, shall not be admitted by the Controller or by any court as evidence of the title of any person to a patent or to a share or interest therein unless the Controller or the court, for reasons to be recorded in writing, otherwise directs.

6) If requested by the patentee/licensee, the terms of the license shall be kept confidential and not disclosed to any person, except under the order of Court.

7) Every assignment and every other document giving effect to or being evidence of the transfer of a patent or affecting the proprietorship thereof or creating an interest therein as claimed in such application, shall, unless the Controller otherwise directs, be presented to him together with the application which shall be accompanied by a copy (scanned) of the assignment or other document certified to be true copies by the applicant or his agent and the Controller may call for such other proof of title or written consent as he may require.

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