Transfer of Patent Rights
Transfer of Patent Rights
What is Transfer of Patent Rights?
Transfer of patent rights means the legal process where the ownership of a patent is moved from one person (the assignor) to another (the assignee). This transfer can be voluntary (by agreement) or involuntary (by operation of law).
Legal Provisions (Indian Patents Act, 1970)
Governed primarily by Sections 68 to 72 of the Patents Act, 1970.
The transfer must be in writing and can be either:
Assignment: Sale or transfer of patent rights by contract.
Transmission: Transfer by operation of law (e.g., death, insolvency).
Types of Transfer
| Type | Explanation |
|---|---|
| Assignment | Voluntary transfer of patent ownership by agreement between parties. Usually for consideration (sale, license, or business transfer). |
| Transmission | Transfer due to legal events like inheritance, bankruptcy, court order, etc. Happens automatically by law. |
Key Features of Assignment
Must be in writing and signed by the assignor.
Can cover whole patent rights or rights in a particular territory or for a specific period.
Can be exclusive or non-exclusive.
Must be registered with the Patent Office to be valid against third parties (Section 69).
Registration of Transfer
The assignee must apply to the Patent Office to register the assignment or transmission.
The Patent Office examines and records the change in ownership in the patent register.
Until registration, the assignor remains the legal owner for dealings with third parties.
Effect of Transfer
| Aspect | Effect |
|---|---|
| New owner acquires all rights and liabilities related to the patent. | |
| The assignee can sue for infringement and exploit the patent. | |
| The rights and obligations under the patent law pass to the new owner. | |
| Transfer affects licenses and agreements related to the patent. |
Summary Table
| Aspect | Details |
|---|---|
| Governing Law | Indian Patents Act, 1970, Sections 68-72 |
| Modes of Transfer | Assignment (voluntary), Transmission (by operation of law) |
| Form | Must be in writing and signed |
| Registration | Required with Patent Office to be effective against third parties |
| Rights Transferred | Entire patent rights or territorial/limited rights |
| Legal Effect | New owner enjoys full ownership rights and liabilities |
Practical Example
A company developing new tech assigns its patent rights to another company in exchange for royalty payments.
On the death of a patent holder, patent rights transmit to legal heirs automatically.
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