INDIA Law and Practice Contributed by: Anu Paarcha, Aniruddh Bhatia, Mishthi Dubey and N Parvati, Saikrishna & Associates
Once the agreement is executed, the assignee has to apply in writing to the Controller of Pat- ents in the prescribed form (Form-16) for reg- istration of their title over the patent. Form-16 must be accompanied by two copies of the exe- cuted assignment agreement. Once the Control- ler is satisfied with the contents of Form-16 and the assignment agreement, the assignee will be registered as proprietor or co-proprietor of the patent in the register of patents. This entry in the register will also contain the particulars of the instrument by which the assignee has derived its title over the patent or share of a patent. 10.3 Requirements or Restrictions to License an Intellectual Property Right As per Section 68 of the Act, while licensing a patent, both the licensor and licensee have to execute a patent licence agreement, which should contain all terms and conditions that were agreed upon between the parties during the negotiations. A licence will not be legally valid unless it has been rendered in writing. Once the agreement is executed, as per Sec- tion 69 of the Act, the licensee must apply in writing to the Controller for registration of their title. This has to be accompanied by copies of the licence agreement. Upon request by the patentee or licensee, the copies of the licence agreement provided to the Controller will be kept confidential. Further, in cases where the patent is granted to two or more persons, a patent or a share in a patent cannot be licensed without the consent of the other person(s). Moreover, Section 140 of the Act prohibits inser- tion of certain clauses in a licence agreement. For instance, a licensor cannot prohibit the licensee from acquiring and using any product
other than the patented article or article made by a patented process from another licensor. In addition, there cannot be any clauses relating to exclusive grant-back, prevention to challenges of validity of the patent, or coercive package licensing. 10.4 Procedure for Licensing an Intellectual Property Right In India, the following types of licences apply. • A voluntary licence, wherein the patentee voluntarily agrees to license the patent. • A compulsory licence, wherein only following expiry of three years after granting of the pat- ent, and upon application submitted by any party, the Controller will grant a compulsory licence for the patent if the applicant is able to show that: (a) the reasonable requirements of the public regarding the patented invention are not being met; (b) the patent is not available to the public at an affordable price; or (c) the patent is not being worked in India. For granting of a voluntary licence for patents, both the licensor and licensee will have to first draft and execute a licence agreement. This agreement will include: • the type of licence (exclusive or non-exclu- sive); • the scope of the licence (which patents are being licensed, the territories that the licence will cover); • duration; • obligations of licensor and licensee; and • royalty terms. Once the agreement is executed, the licensee has to apply in writing to the Controller for reg-
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