Patent Assignment in India

Section 20 and Rules 35 and 36 of the Patents Act 1970 govern the procedure for the substitution of applicants in case of patent applications. If after filing an application for patent, the applicant assigns the rights of his invention by written assignment or agreement to some other person, then that person (the claimant) may make an application, in Form 6 (sample Form 6, pasted below) along with a fee of Rs. 4,000/- (in case of an online filing by a legal entity such as corporate), for substituting his name.

The application should include an original patent assignment or patent assignment agreement. An application should be made in duplicate and be accompanied by the statement setting out fully the facts upon which the applicant relies and the directions which he seeks.

Such an application may be made any time before the grant of the patent. If the Controller is satisfied that by any assignment in writing the other person (to whom the invention has been assigned) be entitled to:

  • a patent; or
  • a specific interest in the patent; or
  • an undivided share of the patent; or
  • to a specific interest in the undivided share of the patent, then the Controller may direct that the application shall proceed in the name of the other person (the claimant).

In case there are two or more joint patent applicants currently on file, then the consent of each of the joint applicants is required. In case of addition of a new applicant, the agreement, assignment or operation of law should be to effect that, if a patent were to be granted ultimately, then the newly added applicant would be entitled to the rights of the existing applicant.

The Controller may call for proof of tide or written consent of patent assignors. There may be a situation in case of a patent application filed by joint applicants and one of the applicants dies before the grant of the patent. In that case, in accordance with Section 20(4) and Rule 35, the request by the survivor(s) of the patent applicant, to proceed with the application in their name, can be made in Form 6 along with a fee of Rs. 4000/-, in case of an online filing, which shall also include the consent of the legal representative of the deceased person and the proof of death.

The form is used for providing details such as, names of the applicant(s) to be added or removed, names of original applicants and reason for the change, among other details that are to be entered.

In case the survivor(s) is an individual then the fee that he is required to pay is Rs. 800/- in case of an online filing. Such a request should be made before the patent is granted.

Form 6 may also be used to add or remove an applicant from an Indian national phase patent application under PCT where a change in applicant has occurred after the international filing date, and the change is revealed in a notification from the International Bureau (Form PCT/IB/306).

It shall be illustrious that adding or removing an applicant is not the same as changing or approving the name of an applicant. In the case of clerical errors or legal name change of a person or an organization, the change can be made using Form 13 as a request for amendment.

Patent Due Diligence

Patent attorneys regularly perform patent due diligence to ensure that patent assignment is duly recorded with the patent office. In practice, patent due diligence refers to a legal audit to determine the quantity and the quality of patents owned by or licensed to, a company, business or individual.

The patent due diligence also covers as to how such patent rights are protected by the relevant company or business. Patent assets add significant value to a business, and hence require the appropriate legal protection by way of patent filing and patent due diligence.

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