Rights and Obligations of a Patentee in India: Assignment, Licensing and Infringement

Once a patent is granted, the person registered as its owner becomes the patentee. The grant gives the patentee legal control over the commercial use of the patented invention in India.

However, patent rights are not unlimited. Indian patent law attempts to balance two interests:

• rewarding inventors for genuine innovation; and
• ensuring that patent monopolies do not harm competition, public health, technological development, or public access.

The rights and responsibilities of a patentee are mainly governed by the Patents Act, 1970 and the Patent Rules, 2003.

A patent may also be transferred or commercially used through an assignment or licence. This allows inventions to move from inventors and research institutions to businesses capable of manufacturing, marketing, and distributing them.

Who Is a Patentee?

A patentee is the person whose name is entered in the Register of Patents as the owner or proprietor of a granted patent.

The patentee may be:

• the original inventor;
• an assignee of the inventor;
• a company;
• a university;
• a research organisation;
• a government institution; or
• another person who has legally acquired ownership of the patent.

Where a patent is jointly owned, all registered owners are known as co-owners or co-patentees.

The person named as the inventor and the person who owns the patent may therefore be different. For example, an employee may be named as the inventor, while the employer may become the patent owner through an employment agreement or assignment.

Rights of a Patentee under Section 48

Section 48 of the Patents Act provides the main exclusive rights available to a patentee. The exact right depends on whether the patent protects a product or a process.

These rights are mainly negative rights. This means that a patent gives its owner the legal power to stop others from using the invention without permission. It does not always provide an unrestricted right to use the invention.

For example, a patented medicine may still require regulatory approval before it can be sold. Similarly, using one patent may sometimes require permission under an earlier patent owned by another person.

Rights in a Product Patent

Where the patent relates to a product, the patentee has the exclusive right to prevent an unauthorised person from:

• making the patented product;
• using the patented product;
• offering it for sale;
• selling it; or
• importing it into India for those purposes.

For example, if a company obtains a patent for a new medical device, another business cannot manufacture, sell, use, or commercially import the same patented device in India without permission from the patent owner.

Rights in a Process Patent

Where the patent relates to a process, the patentee has the right to prevent an unauthorised person from:

• using the patented process; and
• using, offering for sale, selling, or importing a product directly obtained through that process.

For example, if a new process for producing biodegradable plastic is patented, another manufacturer cannot use that process without the patentee’s permission.

The protection may also extend to the product directly produced by the patented process. Section 48 expressly distinguishes the rights granted for patented products and patented processes.

Right to Commercially Exploit the Invention

The patentee may commercially benefit from the invention during the patent term.

Depending on the nature of the invention, commercial exploitation may include:

• manufacturing the patented product;
• using the patented process;
• selling or distributing the invention;
• authorising another business to manufacture it;
• licensing the technology;
• assigning the patent;
• receiving royalties; or
• entering into technology-transfer agreements.

For example, an individual inventor may not have the financial capacity to manufacture a patented machine. The inventor may instead license the patent to an established manufacturer and receive royalty payments.

Commercial exploitation remains subject to other applicable laws, regulatory approvals, earlier patent rights, and the limitations contained in the Patents Act.

Right to Assign the Patent

A patent is a form of intangible property. Its owner may transfer the patent, or a share in it, to another person through an assignment.

After a complete assignment, the assignee becomes the new owner of the patent to the extent transferred.

For example, a university that owns a patent for a new agricultural technology may assign the patent to a company in return for a fixed amount or other commercial consideration.

Sections 68 to 70 regulate the transfer of ownership and other interests in patents.

Right to Grant a Licence

Instead of transferring ownership, the patentee may allow another person to use the patented invention under a licence.

A licence may permit the licensee to:

• manufacture the patented product;
• use the patented process;
• sell the invention;
• distribute it within a specified territory;
• use it for a particular industry; or
• commercially exploit it for a fixed period.

The patentee normally remains the legal owner of the patent and receives royalties, licence fees, or another agreed benefit.

Right to Take Action against Patent Infringement

Patent infringement occurs when a person performs an act covered by the patent rights without the consent of the patentee and without protection under a legal exception.

A patent owner may file a civil suit to stop infringement.

Under Section 104, a patent infringement suit cannot be filed in a court lower than a District Court having jurisdiction. If the defendant files a counterclaim seeking revocation of the patent, the suit and counterclaim are transferred to the High Court.

The patentee may seek remedies such as:

• an interim injunction;
• a permanent injunction;
• damages;
• an account of profits;
• seizure of infringing goods;
• forfeiture of infringing goods; or
• destruction of infringing goods and materials used mainly to produce them.

The patentee must generally choose between damages and an account of profits.

Damages compensate the patentee for the loss caused by infringement. An account of profits requires the infringer to surrender profits earned through the unlawful use of the invention.

Section 108 authorises courts to grant an injunction and, at the plaintiff’s option, damages or an account of profits. Courts may also order infringing goods and materials to be seized, forfeited, or destroyed.

Rights of an Exclusive Licensee

An exclusive licensee receives stronger rights than an ordinary non-exclusive licensee.

Under Section 109, an exclusive licensee may institute an infringement suit for violations occurring after the date of the licence. If the patentee does not join as a plaintiff, the patentee must ordinarily be added as a defendant.

When deciding relief, the court may consider the loss suffered by the exclusive licensee and the profits earned from infringement of the licensed rights.

Right to Surrender a Patent

A patentee may voluntarily surrender the patent under Section 63.

Surrender is not completed merely by sending a private declaration. The patentee must give notice to the Controller in the prescribed manner and offer to surrender the patent.

The Controller then:

1. publishes the offer;
2. notifies persons whose interests are recorded in the Register of Patents;
3. allows eligible persons to oppose the surrender; and
4. decides the matter after giving the parties an opportunity to be heard.

If the Controller accepts the offer, the patent is revoked.

This procedure protects licensees, mortgagees, co-owners, and other persons who may have a legal or commercial interest in the patent. Section 63 requires publication of the surrender offer and notice to persons whose interests appear in the register.

Right to Apply for a Patent of Addition

An inventor may develop an improvement or modification after filing or obtaining the main patent.

Sections 54 to 56 permit an eligible applicant to seek a patent of addition for such an improvement.

A patent of addition:

• is connected to the main patent;
• generally expires with the main patent;
• does not ordinarily require a separate renewal fee; and
• protects an improvement or modification of the main invention.

This allows the patentee to protect continuing technical development without treating every improvement as a completely unrelated invention.

Rights of Co-Owners of a Patent

A patent may be granted to or owned by two or more persons.

Under Section 50, unless there is an agreement stating otherwise, each co-owner is entitled to an equal and undivided share in the patent.

Each co-owner may generally exercise the patent rights for their own benefit without accounting to the other co-owners. However, one co-owner cannot ordinarily:

• grant a licence under the patent; or
• assign their share in the patent

without the consent of the other co-owners.

The co-owners may change these default rules through a written agreement. Section 50 sets out equal undivided ownership, independent exploitation, and the need for consent before one co-owner grants a licence or assigns a share.

Limitations on Patent Rights

Patent rights are valuable, but they remain subject to statutory limitations.

Government Use and Experimental Use

Section 47 makes every patent subject to certain conditions.

The patented invention may, in qualifying circumstances, be used:

• by or on behalf of the Government for government purposes;
• for experiments or research; or
• for teaching students.

Special provisions also apply to certain medicines supplied through notified government medical institutions.

These provisions ensure that patent rights do not completely prevent legitimate government, research, and educational use.

Regulatory Use or Bolar Exception

Section 107A permits certain acts involving a patented invention when they are reasonably connected with developing and submitting information required under a law regulating a product.

This is commonly known as the Bolar exception.

For example, a generic medicine manufacturer may carry out limited work before the expiry of a pharmaceutical patent to prepare the information required for regulatory approval. This helps the generic product enter the market after the patent expires without an unnecessary additional delay.

Parallel Importation

Section 107A also protects the importation of a patented product from a person who is legally authorised to produce, sell, or distribute it.

This is commonly referred to as parallel importation.

The exact application of this exception depends on the facts, the source of the product, and whether the seller was legally authorised.

Section 107A recognises regulatory-use activities and qualifying imports as acts that are not treated as patent infringement.

Obligations of a Patentee

A patent gives its owner exclusive commercial rights, but it also creates continuing responsibilities.

These responsibilities help maintain the patent and ensure that it operates consistently with public interest.

Duty to Pay Renewal Fees

A patent remains in force only if the prescribed renewal fees are paid.

No renewal fee is charged for the first two years. Renewal fees become payable from the third year onwards and must generally be paid for each succeeding year.

If the renewal fee is not paid within the permitted period, the patent may cease to have effect. The Act allows restoration in certain circumstances, but restoration is not automatic.

The Indian Patent Office explains that renewal fees are payable from the third year onwards and that failure to pay may cause the patent to cease.

Duty to Disclose the Invention Properly

A patent is granted in exchange for public disclosure of the invention.

The complete specification must explain the invention clearly and sufficiently so that a person skilled in the relevant field can understand and perform it.

The patentee must not obtain protection by:

• hiding essential information;
• providing a misleading description;
• failing to disclose the best method known to the applicant; or
• claiming subject matter that is unsupported by the specification.

An insufficient or misleading disclosure may become a ground for opposition, refusal, or revocation.

The disclosure obligation mainly arises during the application process, but the validity of the granted patent continues to depend on whether the specification satisfied the legal requirements.

Duty to Furnish Information about the Working of the Patent

Section 146 allows the Controller to require a patentee or licensee to provide information about the extent to which the patented invention has been commercially worked in India.

Rule 131 and Form 27 prescribe the statement regarding the working of patented inventions.

Following the Patents (Amendment) Rules, 2024, Form 27 is generally furnished once for every period of three financial years, rather than every year. It must normally be filed within six months after the end of the relevant three-year period, subject to the available extension provisions.

The filing period begins from the financial year immediately following the financial year in which the patent was granted. The official Patent Office clarification confirms that one Form 27 is filed for each three-financial-year block.

The statement helps the Patent Office understand:

• whether the invention has been worked;
• whether the patented product or process is available to the public;
• whether licences have been granted; and
• whether the public requirements connected with the invention are being addressed.

Duty to Respond to a Notice under Section 146

Apart from the normal Form 27 requirement, the Controller may issue a written notice requiring a patentee or licensee to provide information about the working of the patent.

The information must be supplied within the period stated by law or within further time allowed by the Controller.

Failure or refusal to provide legally required information may result in action under the penalty provisions of the Patents Act. Section 146 gives the Controller power to call for working information from patentees and licensees during the life of the patent.

Duty Not to Abuse Patent Rights

Section 83 sets out important principles regarding the working of patented inventions.

These principles make it clear that patents are intended to:

• encourage invention;
• support technological innovation;
• promote transfer and dissemination of technology;
• contribute to social and economic welfare;
• protect public health;
• avoid unreasonable restraints on trade; and
• make the benefits of patented inventions available at reasonably affordable prices.

Patents are not granted merely to allow an owner to control the importation of a product without serving the Indian market.

If patent rights are abused, the invention is not adequately worked, or public access is unreasonably restricted, the law may permit compulsory licensing or, in certain cases, revocation.

Duty to Respect the Rights of Co-Owners and Licensees

A patentee must honour valid agreements and registered interests connected with the patent.

Where a patent is jointly owned, one co-owner must not grant a licence or assign a share without the consent required under Section 50, unless an agreement provides otherwise.

A patentee must also comply with:

• licence agreements;
• assignment agreements;
• royalty obligations;
• territorial restrictions;
• confidentiality obligations;
• quality-control terms; and
• rights recorded in the Register of Patents.

Application Duties and Post-Grant Obligations Are Different

Some responsibilities mentioned in patent discussions apply to the applicant before grant, not to the patentee after grant.

For example:

• filing a request for examination under Section 11B;
• replying to the First Examination Report;
• providing information about corresponding foreign applications under Section 8; and
• removing objections raised during examination

are mainly application-stage duties.

After the patent is granted, the principal continuing obligations relate to maintenance fees, working statements, information requested by the Controller, contractual commitments, and compliance with public-interest provisions.

This distinction is important because an applicant becomes a patentee only after the patent is granted.

Assignment of Patents in India

Meaning of Patent Assignment

A patent assignment is a legal transfer of ownership or an ownership interest in a patent from one person to another.

The person transferring the patent is called the assignor.

The person receiving the patent is called the assignee.

After a complete assignment, the assignee becomes entitled to exercise the ownership rights transferred under the agreement.

For example, an inventor may assign a patent to a manufacturing company for a lump-sum payment. The company then becomes the patent owner, subject to the terms of the assignment.

What Can Be Assigned?

An assignment may cover:

• the entire patent;
• an undivided share in the patent;
• rights within a specified territory;
• rights for a specific field of use;
• rights to manufacture;
• rights to sell or distribute; or
• another clearly defined ownership interest.

The wording of the agreement determines the extent of the rights transferred.

Main Types of Patent Assignment

Complete Assignment

A complete assignment transfers the entire ownership of the patent to the assignee.

After the transfer, the assignor normally loses the right to commercially exploit the patent unless the agreement reserves some rights.

Partial Assignment

A partial assignment transfers only a share or limited ownership interest.

For example, an owner may assign a 50% interest in the patent to an investor or business partner.

Territorial Assignment

A territorial assignment transfers rights for a particular geographical area.

However, because patent rights are territorial and an Indian patent operates throughout India, such arrangements must be drafted carefully. A territorial division between parties functions mainly through contractual restrictions and allocation of commercial rights.

Assignment for a Particular Field of Use

An assignment may limit the transferred rights to a particular industry or application.

For example, rights in a chemical patent may be transferred for agricultural use while the original owner retains rights for pharmaceutical use.

Legal Requirements for a Valid Assignment

Section 68 provides that an assignment, mortgage, licence, share, or other interest in a patent is not valid unless:

• it is made in writing;
• the agreement is reduced to a document;
• the document contains all the terms and conditions governing the parties’ rights and obligations; and
• it is duly executed.

An oral assignment is therefore insufficient.

The written agreement should clearly identify:

• the parties;
• the patent number or application;
• the rights being transferred;
• the consideration;
• the territory;
• the duration, where relevant;
• existing licences or obligations;
• future improvements;
• payment terms;
• liability for infringement claims; and
• dispute-resolution provisions.

Section 68 requires assignments, licences, mortgages, and other patent interests to be recorded in a written and duly executed document containing the terms governing the parties.

Registration of an Assignment

Section 69 requires a person who becomes entitled to a patent, share, licence, mortgage, or other interest to apply to the Controller for registration of the title or interest.

Under the Patent Rules, the application is generally made in Form 16.

The Controller may require:

• the assignment agreement;
• proof of title;
• written consent;
• authenticated copies of relevant documents; and
• other evidence required to verify the transaction.

After being satisfied with the documents, the Controller records the assignee as proprietor or co-proprietor, or records the relevant interest in the Register of Patents.

The Rules prescribe Form 16 for registration of title or interest under Section 69.

Importance of Registering the Assignment

Registration creates an official public record of the ownership change.

If the assignment or other interest is not entered in the register, the document may not ordinarily be admitted by the Controller or a court as evidence of title or interest. However, the Controller or court may permit it for reasons recorded in writing.

Therefore, parties should not rely only on signing the agreement. They should also complete the registration process.

Section 69 provides for registration and restricts the evidentiary use of unregistered documents, subject to limited discretion of the Controller or court.

Effects of Patent Assignment

A valid assignment may produce the following effects:

• ownership moves to the assignee to the extent stated;
• the assignee may commercially exploit the assigned rights;
• the assignee may grant licences, subject to the agreement;
• the assignor loses control over the rights transferred;
• existing licences and recorded interests may continue to affect the patent;
• the assignee may enforce the patent according to the transferred rights; and
• the Register of Patents is updated to show the new ownership or interest.

Section 70 confirms that a registered grantee or proprietor may assign, license, or otherwise deal with a patent, subject to co-ownership rules and previously recorded rights.

Licensing of Patents in India

Meaning of Patent Licensing

A patent licence is permission given by the patentee to another person to perform one or more acts that would otherwise infringe the patent.

Unlike an assignment, a licence does not normally transfer ownership.

The patentee remains the owner, while the licensee receives permission to use the invention within agreed limits.

For example, a start-up may own a patented medical device but lack manufacturing facilities. It may license a manufacturing company to produce and sell the device in return for royalties.

Voluntary Licence

A voluntary licence is granted through an agreement between the patentee and the licensee.

The parties decide the:

• permitted use;
• territory;
• licence period;
• royalty rate;
• minimum sales requirement;
• quality standards;
• confidentiality obligations;
• sublicensing rights; and
• termination conditions.

A voluntary licence provides flexibility because the parties may design the agreement according to their commercial needs.

Exclusive Licence

An exclusive licence gives the licensee exclusive rights within the agreed scope.

Depending on the terms, even the patentee may be prevented from granting the same rights to another person within that field or territory.

An exclusive licensee also has the statutory right under Section 109 to bring infringement proceedings for infringement occurring after the licence date.

Non-Exclusive Licence

A non-exclusive licence permits the patentee to grant similar rights to more than one licensee.

For example, a patent owner may grant non-exclusive licences to several manufacturers to increase production and market reach.

A non-exclusive licensee does not automatically receive the same independent right to sue as an exclusive licensee. Its enforcement rights depend on the law and the licence agreement.

Sole Licence

A sole licence is a contractual arrangement under which the patentee agrees not to license other third parties but retains the right to use the invention personally.

The exact effect depends on the wording of the agreement.

Compulsory Licence

A compulsory licence is not granted voluntarily by the patentee. It is authorised by the Controller under the conditions stated in the Patents Act.

It may be considered where, among other grounds:

• the reasonable requirements of the public are not satisfied;
• the invention is not available at a reasonably affordable price; or
• the invention is not worked in India.

Compulsory licensing is discussed separately in the next part because it has its own legal grounds, procedure, conditions, and important case law.

Important Terms in a Patent Licence Agreement

A properly drafted patent licence should clearly address:

• identification of the patent;
• nature of the licence;
• products or processes covered;
• permitted field of use;
• geographical area;
• duration;
• royalty amount;
• method of royalty calculation;
• minimum royalty or sales obligations;
• reporting and audit rights;
• confidentiality;
• technical assistance;
• ownership of improvements;
• sublicensing;
• infringement enforcement;
• indemnity;
• termination;
• consequences of patent expiry or revocation; and
• dispute resolution.

Unclear terms can lead to disputes over ownership, royalty calculations, improvements, sublicensing, or enforcement.

Legal Requirements for Patent Licensing

Under Section 68, a patent licence must be:

• in writing;
• contained in a document recording the terms and conditions; and
• duly executed by the parties.

The licensee’s interest should also be recorded under Section 69 through the prescribed procedure.

The Controller may, on request by the patentee or licensee, take steps to protect the confidentiality of licence terms, except where disclosure is ordered by a court.

Difference between Assignment and Licensing of a Patent

Assignment and licensing allow a patent to function as a commercial asset. Assignment transfers ownership, while licensing allows controlled use without necessarily giving up ownership.

Conclusion

A patent gives its owner valuable legal and commercial rights, but those rights are not unlimited. Under Indian patent law, a patentee may prevent unauthorised use of the patented invention, commercially exploit it, grant licences, transfer ownership, and take legal action against infringement.

At the same time, the patentee must pay renewal fees, provide required information about the working of the invention, honour the rights of co-owners and licensees, and exercise the patent without harming public interest. Statutory exceptions such as research use, government use, the Bolar exception, and parallel importation also limit the exclusive rights of the patent owner.

Assignment and licensing allow patents to operate as commercial assets. An assignment transfers ownership or an ownership interest, while a licence only permits another person to use the invention under agreed conditions. Both transactions should be recorded in a properly written and executed document, and the relevant interest should be entered in the Register of Patents.

Indian patent law therefore creates a balanced system. It rewards inventors and supports commercialisation while ensuring accountability, competition, technological development, and public access.