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This article is written by Jayanti Banerjee, pursuing Certificate Course in Introduction to Legal Drafting: Contracts, Petitions, Opinions & Articles from LawSikho. The article has been edited by Zigishu Singh (Associate, LawSikho) and Smriti Katiyar (Associate, LawSikho).

Introduction

In this Global Fifth Industrial Revolution age, a new kind of right has come to dominate other aspects of business, i.e. a right to intellectual property. Now the question arises: What is Intellectual Property?

Intellectual property (IP) is nothing but the creations of the mind, such as inventions; literary and artistic works; designs; and symbols, names and images used in commerce.

If we speak in terms of law, then the intellectual rights of a person are protected by patents, copyright and trademarks, which enable people to earn recognition or financial benefit from what they invent or create.

One of the IPs is a patent. A patent is an exclusive right granted for an invention, which is a product or a process that provides, in general, a new way of doing something, any invention, any new innovative way of doing a particular thing, etc. 

It is important to get the patents registered because it can help safeguard your invention, therefore registering for a patent and drafting an agreement becomes an essential element for safeguarding your own interest. It can protect any product, design or process that meets certain specifications according to its originality, practicality, suitability, and utility. In most cases, a patent can protect an invention for up to 20 years. In this article, we are going to learn about how we can draft an agreement for assigning a patent. 

What is a patent assignment?

A patent is an ownership right granted for an invention. A patent assignment is an agreement where an inventor transfers all the rights or interests in the patent to another party or business. It is a legal process to transfer ownership from the inventor to a particular business or entity. In layman language, A license is permission granted to use another’s property. An owner of intellectual property can give another person the right to make, use or sell property or items protected by this intellectual property by means of a contractual license.

A patent contract is an agreement between two or more parties including the terms and conditions of such patent licensing. 

A license can be applied to any type of IP- trademark, patent, copyright and design, etc.

A patent assignment is an agreement where the assignor transfers the patent rights to the assignee. It is a process of how to patent an idea or transfer his or her interest to an assignee, and enforce the patent. The assignee receives the original owner’s interest and rights to intellectual property. He can sue others for making and selling the invention or design.

Patent licensing is an act of the third party by selling and using the patented patent rights to extricate its benefits. The owner of the patent gives license to a third party to use, sell and take advantage of its patented invention for a price previously negotiated as royalties.

Why and where is this patent agreement necessary?

A patent is important because it helps to safeguard your invention. It protects any product design that meets a certain identification according to its originality, practicality, suitability, and utility. The patent owner has the right to stop others from commercially utilizing the patented invention. A patent contract can protect an invention for 20 years. This time period starts as you file a patent application. Patent protection means that the invention cannot be commercially made, used, imported and sold by others without the patent owner’s consent. Only the owner of a patent has the complete right to utilize its value to the exclusion of all other parties. Therefore, protecting ownership of a patent and its accompanying rights can be very important to a company. A patent license agreement typically gives an assignee exclusive right to manufacture, sell, and use a patented invention, subject to terms and conditions. A patent license agreement will also define the number of royalties the assignee owes the assignor.

Important clauses in the agreement

1.     License clause,

2.     Payment clause,

3.     Indemnity clause,

4.     Term clause,

5.     Termination clause,

6.     Representations and warranties of the licensor,

7.     Representations and warranties of the licensee,

8.     Relationship of parties,

9.     Assignment,

10.  Dispute resolution clause.

Sample draft of the agreement/contract

PATENT ASSIGNMENT AGREEMENT

This Patent Assignment Agreement (“this Agreement”) is made and executed on this Day/Month/Year.

BY AND BETWEEN

(Name of Assignor), Age: __ years, Nationality: ________, Occupation:_______, Residing at —————————————————————————————————————. (Hereinafter referred to as “the Assignor”, which expression shall mean and include his legal heirs, successors, executors, administrators, assigns, etc.)

AND

_____________ College of Engineering, Pune, an autonomous institute of Government of Maharashtra, having its registered office at ________________________________, Pune 411005, Maharashtra, India, through its authorized signatory (Director’s Name), Age: — years, Occupation: Service, (hereinafter referred to as “the Assignee”, which expression shall mean and include its administrators, executors, assigns, etc.)

Both the Assignor and the Assignee jointly shall be referred to as “the parties”.

WHEREAS:

A]      The Assignor and (Name of Assignee) have invented (Name of Invention) (“the Invention”),

B]      The Assignor has individually applied to the Controller of Patents (“the CoP”) by virtue of application number ____________ in order to obtain registration of patents over the Invention in his own name. The details of the patent are more specifically described in Schedule A to this Agreement. The application was published in the patent journal on Month/day/year. The application for grant of patent is pending prosecution before the CoP,

C]       During the pendency of prosecution of the patent application, the Assignee is desirous of acquiring 50% (fifty per cent) rights, title, ownership, and interest in the Patent over the Invention;

 NOW THE AGREEMENT WITNESSES AS FOLLOWS:

 1. Assignment

The Assignor hereby assigns to Assignee the rights, title, and interest (including but not limited to, the patent claims, all rights to prepare derivative works, all goodwill and all other rights), in and to the Patent.

 2. Consideration

The Assignee shall pay to the Assignor the actual sum up to a maximum amount of Rs. 50,000/- (Rupees Fifty Thousand only), upon sending application to CoP for the inclusion of assignee’s name as a joint applicant in the said patent over the Invention.

 3. Representations and warranties

The Assignor represents and warrants to Assignee:

A] The Assignor has all the right to enter into this Agreement;

B] This Agreement is valid, and enforceable in accordance with its terms;

 4. Both parties agree that

a) In the event CoP fails to grant a patent over the Invention in favour of the Assignor, this Agreement shall be infructuous and the consideration amount is repaid to the assigner.

(b) This Agreement shall come into effect only after the patent over the Invention is granted in favour of Assignor.

(c)  Assignee shall be entitled to file an application before CoP under section 20 of the Patents Act, 1970 in order to incorporate its name as the joint applicant for the patent over the Invention.

5. Termination

Parties shall not have any right to terminate the Agreement either by future contractual arrangement or by operation of law.

 6. Entire agreement

The Transaction Documents, together with the exhibits and schedules contain the entire understanding of the parties with respect to the subject matter hereof and supersede all prior agreements, oral or written, with respect to such matters, which the parties acknowledge have been merged into such documents, exhibits and schedules.

8. Arbitration

 8.1. Any disputes, claims and/or questions whatsoever arising out of the Agreement or any dispute regarding the representations, obligations, between the parties or the construction, interpretation or the application thereof or any clause or thing herein contained or as to any act Agreement or commission or omission of any person or as to any other matter in any way relating to the Agreement shall be referred to a sole arbitrator appointed by the parties. The decision given by the Arbitrator shall be final and binding upon the parties.

8.2 The venue of such Arbitration shall be at __________________________

8.3 The Arbitrator shall invoke the provisions of Arbitration and Conciliation Act, 1996 and shall have summary powers to decide the dispute and shall also have the power to dispense with the provisions of Civil Procedure Code and the Indian Evidence Act.

9. Governing Law and Jurisdiction 

Courts shall have exclusive jurisdiction in all issues/disputes covered by the Agreement. This Agreement shall be governed by and construed in accordance with the Indian laws.

10. Waiver

No waiver of any right under this Agreement shall be deemed effective unless contained in writing and signed by the party, and no waiver of any right shall be deemed to be a waiver of any future right or any other right arising under the Agreement. All rights, remedies, undertakings, obligations contained in the Agreement shall be cumulative and none of them shall be a limitation of any other remedy, right, undertaking, and obligation.

12.  Notice

Any notice or approval permitted or required under the Agreement shall be in writing and shall be sent by registered or certified mail, or by overnight courier, or by or telex (confirmed by mail), to the addresses set forth below that the parties may hereafter specify:

If to Assignor                                          If to Assignee

With copy to:                                           With copy to: 

All notices shall be deemed to be effective on the date of receipt.

IN WITNESS WHEREOF, the parties have executed this Agreement as of the date first above written.

ASSIGNOR                                                                                                               ASSIGNEE

Schedule

Details of patents

Patent application number:   

Name of the applicants: Name of Assignor

Name of the inventors: Name of Assignor and Dr Name of Assignee

Title of the invention:

Conclusion

It is important that all the requirements are properly met while preparing, executing and recording an assignment of a patent. If there is any failure it could result in the loss of rights and potential exposure to third parties.

An IP license agreement should be in writing with the relevant terms which should be clearly defined. A license agreement should be well-drafted to provide details of the exact rights to be imposed on the assignee. An IP license agreement has certain integral parts like the definition of licensed property, the geographical locations a right given to the assignee to sublicense the IP granted to it.

A patent or IP licensing is important because it helps to safeguard your invention.  It protects any product design that meets a certain identification according to its originality, practicality, suitability, and utility. The Patent owner has the right to stop others from commercially utilizing the patented invention.

References

  1. https://henry.law/blog/patent-assignment/
  2. https://blog.ipleaders.in/important-provisions-ip-assignment-agreement/
  3. https://www.inhousecommunity.com/article/assignment-patent-rights/
  4. https://www.wipo.int/about-ip/en/
  5. https://www.sec.gov/Archives/edgar/data/1100969/000119312504190607/dex1019.htm
  6. https://www.wipo.int/edocs/pubdocs/en/patents/867/wipo_pub_867.pdf

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