INDIA Law and Practice Contributed by: Anu Paarcha, Aniruddh Bhatia, Mishthi Dubey and N Parvati, Saikrishna & Associates
before filing of the suit or pursuant to filing of the suit. For instance, the Commercial Courts Act, which governs commercial disputes in India (including patent disputes), requires a party to exhaust the remedy of pre-suit mediation in cases where the suit does not contemplate urgent interim relief. If the party has already filed a patent lawsuit, the parties may request the court to refer the dispute for mediation, or the court may do so voluntarily under the CPC. Furthermore, the Hon’ble Delhi High Court has outlined the Patent Suit Rules – wherein, as per Rule 12 of said Rules, if, at any stage of the suit, the court is of the opinion that the parties ought to explore mediation, the court may so direct even without the consent of the parties. When a party moves an application for pre-suit mediation, it will have to fill out the mediation application form, which will contain the details of both the applicant and the opposite party. Thereafter, in the application for initiating pre- suit mediation, the applicant will have to state the background of the dispute. Once this application and the form are submit- ted to the mediation centre, a mediator will be appointed. This mediator may be one who was mutually agreed upon between the parties or may be appointed by the mediation centre. If the parties arrive at a settlement, a draft set- tlement agreement will be drawn up, reflecting the terms as agreed upon between the parties. This settlement agreement will be signed by both parties. Additionally, the entire mediation procedure will be confidential, and therefore any information/
discussions exchanged during the mediation cannot be disclosed to any third party or used in litigation. Apart from court-directed mediation, the parties could also settle their disputes by way of private negotiations. 10. Assignment and Licensing 10.1 Requirements or Restrictions for Assignment of Intellectual Property Rights As per Section 68 of the Act, assignment of a patent or of a share in a patent must be in writ- ing, and should contain all the terms and condi- tions that will govern the rights of both assignor and assignee. This agreement must be duly signed by both parties. Further, as per Section 69 of the Act, the assign- ee will have to apply in writing to the Controller of Patents for registration of their title or the assign- ment agreement, accompanied by two copies of the assignment agreement. Moreover, in cases where the patent is granted to two or more persons, a patent or a share in a patent cannot be assigned without the consent of the other person(s). 10.2 Procedure for Assigning an Intellectual Property Right In order to assign an Indian patent, both par- ties will have to draw up an assignment agree- ment, which will thereafter be duly executed by them. This agreement must outline all terms and conditions that were agreed upon between the parties. An appropriate stamp duty – as per the Indian Stamp Act, 1899 – is also required to be paid on such assignments.
240 CHAMBERS.COM
Powered by FlippingBook