Patent Assignment Agreement

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Patent Assignment Agreement

An assignment of Intellectual property Rights involves the transfer of ownership of IP (patent) from the owner (assignor) to the assignee (physical or legal entity) with permanent effect.Assignment is an act by which the patentee assigns whole or part of his patent rights to the assignee who acquires the right to prevent others from making, using, exercising or vending the invention.The assignment contract must accurately identify the subject matter of what is assigned. In case of patented inventions for instance, this may include: granted patents but also provisional patent applications, including PCT applications, or trade secrets that are intended to remain as such.Knowledge transfer is a process that allows research results, discoveries, scientific findings, intellectual property (IP), technology, data and knowhow to flow between different stakeholders.

The assignment should be reduced to writing in a document embodying all the terms and conditions governing the rights and obligations between the parties. Most commonly, the term refers to the transfer of such assets from universities and research institutions to industry or governmental institutions, thereby generating economic value and industry development. As per the Patent Act, patents to be assigned in partial manner or complete manner in exclusive as well as non-exclusive. Section 68 of Patents Act, 1970 states that a patent assignment must be made in writing and thereafter it should be registered with the Controller to operate as a legally enforceable contract. Assignment data analysis can provide actionable insights for those operating in the transaction market and IP stakeholders alike, enabling them to anticipate the future strategy of a company: the acquisition of patents covering a specific technology could well be an indicator of the company’s future plans and strategies.

Features of Patent:

1.The invention must be new.

2.The invention must be useful.

3.The invention must be nonobvious.

4.patentable subject matter (in some countries a ‘manner of manufacture’

Documents Required

Passport Photo

Passport photo of all parties.

PAN Card

PAN card of all parties.

Aadhar Card

Aadhar card of all parties.

Utility Bill

Utility bill of Electricity or Telephone.

Address Proof

Valid Address Proof of all the parties.

Licence

Valid Driving Licence of all the parties.

Terms and Conditions

Terms and Conditions between the parties.

FAQ

A patent can be licensed or assigned only by the owner of the patent. In case of co-owners or joint-owners, a co-owner can assign or license the patent only upon consent of the other owner(s).

Assignment is an act by which the patentee assigns whole or part of his patent rights to the assignee who acquires the right to prevent others from making, using, exercising or vending the invention.

A patent or patent application is assignable by an instrument in writing, and the assignment of the patent, or patent application, transfers to the assignee(s) an alienable (transferable) ownership interest in the patent or application.

Assignor (Owner) is the person who is willing to transfer the title of patent and Assignee is the person who is willing to receive the title, interest and such other rights of patent from the Assignor by giving the required consideration.

It helps parties to understand their rights and duties with respect to the said Patent. Since all the provisions are written and mutually agreed upon by the parties it minimizes ambiguity.

Generally an agreement may be in writing or oral but Section 68 the Patents Act, 1970 mandates that the assignment agreement shall not be valid unless the same is in writing embodying all the terms and conditions governing the rights and obligations of the parties and are duly executed.