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 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]
1. Substituted by Patents Amendment Act, 2005 ( 15 of 2005) for the words:
68. Assignments, etc., not to be valid unless in writing and registered-
An assignment of a patent or of a share in a patent, a mortgage, licence or the creation of any oilier 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 the application for registration of such document is filed in the prescribed manner with * [the Controller within six months from the execution of the document or within such further period] not exceeding six months in the aggregate as the Controller on application made in the prescribed manner allows:
Provided that the document shall when registered, have effect from the date of its execution.
* Substituted for "the Controller within six months from the commencement of this Act or the execution of the document, whichever is later or within such further period" by Patents (Amdt) Act, 2002. dated 25.06.2002 w.e.f 20.05.2003.
(1) Where any person becomes entitled by assignment, transmission or operation of law to a patent or to a share in a patent or becomes entitled as a mortgage, licensee or otherwise to any other interest in a patent, he shall apply in writing in the prescribed manner to the Controller for the registration of his title or, as the case may be, of notice of his interest in the register.
(2) Without prejudice to the provisions of sub-section (1), an application for the registration of the title of any person becoming entitled by assignment to a patent or a share in a patent or be coming entitled by virtue of a mortgage, licence or other instrument to any other interest in a patent may be made in the prescribed manner by the assignor,mortgagor, licensor or other party to that instrument, as the case may be.
(3) Where an application is made under this section for the registration of the title of any person the Controller shall,upon proof of title of his satisfaction,-
(a) Where that person is entitled to a patent or a share in a patent,register him in the register as proprietor or co-proprietor of the patent, and enter in the register particulars of the instrument or even by which he derives title; or
(b) Where that person is entitled to any other interest in the patent, enter in the register notice of his interest, with particulars of the instrument, if any,creating it:
Provided that if there is any dispute between the parties whether the assignment, mortgage, licence, transmission, operation of law or any other such transaction has validly vested in such person a title to the patent or any share or interest therein, the Controller may refuse to take any action under clause (a) or, as the case may be, under clause (b) until the rights of the parties have been determined by a competent court.
(4) There shall be supplied to the Controller in the prescribed manner for being filed in the patent office copies of all agreements, licences and other documents affecting the title to any patent or any licence there under authenticated in the prescribed manner and also such other documents as may be prescribed relevant to the subject-matter:
Provided that in the case of a licence granted under a patent, the Controller shall, if so requested by the patentee or licensee, take steps for securing that the terms of the licence are not disclosed to any person except under the order of a court.
(5) Except for the purposes of an application under sub-section (1) or of an application to rectify the register, a document in respect of which no entry has been made in the register under sub-section (3)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.
This web site is designed for general information only. The information presented at this site should not be construed to be formal legal advice nor the formation of a lawyer/client relationship. Persons accessing this site are encouraged to seek independent counsel for advice in India abroad regarding their individual legal, civil criminal issues or consult one of the experts online.