India: Whether Registration Of License/ Assignment Deed Is Necessary Or Not Under The Patents Act, 1970?

Last Updated: 9 April 2015
Article by Aayush Sharma

Most Read Contributor in India, September 2016

When any grantee or applicant, license or assign their patent rights to any licensee then such license or assignment deed holds importance for its assignee and its licensee. Under the Indian Patents Act, 1970 provisions are there to register the assignment deed and license for any Patent Application register under the Patents Act, 1970.

A license agreement/ Assignment deed is an agreement between the right holder and licensee and/or assignee to use rights owned by the right holder in exchange of patent or consideration, in lieu of one time settlement or a periodic royalty. Generally, the agreement may be in writing or oral but under the Patents Act, 1970, Section 68 clearly states that the agreement/ license are not valid until they are registered under the Patents Act along with all terms and conditions following the rights and obligations followed by both the parties in the proper manner. Further, Section 69 of the Indian Patents Act, 1970 embodies the proper procedure for registration of assignment or license agreement in India.

In this article, the concern is discussed as to what is the need for registration of agreement or license in the Patents Act and the consequences, if such is not registered either intentionally or mistakenly? In this article such issue can be understood by referring the case Sergi Transformer Explosion vs. Kumar Pratap Anil & Ors. on 16 April, 2014 1. In this case the Sergi Transformer Technologies Pvt. Limited (herein referred to as "plaintiff") filed a suit injunction against Mr. Pratap Anil, CTR Manufacturing Industries Limited and Mr. Phillipe Magnier (proforma defendant in the light of Section 109(2) of the Indian Patents Act, 1970) (hereinafter referred to as "the Act") as he is the patentee of the suit Patent (herein referred to as "defendants") for infringing the Patent No. 189089 titled as "METHOD & DEVICE FOR PREVENTING/ PROTECTING ELECTRICAL TRANSFORMER AGAINST EXPLOSION & FIRE". The plaintiff claimed to be the exclusive licensee of the above mentioned patent by the virtue of the license given on 01/08/2006. Meanwhile, the plaintiff also initiated the process of agreement registration in the Kolkata patent office dated 15/03/2010. Within this registration process, the defendant filed an application under order VII, rule 11 read with section 151 of the civil procedure code, 1908 to dismiss the above mentioned suit stating the facts that agreement is still not registered in the Patent office and hence it's not valid. The various grounds raised by the defendant is that when the agreement is not registered under the Patents Act, then such license agreement is not valid and duly executed. Further, the licensing agreement signed on 01/08/2006 was not valid till 2010 which the plaintiff used for filing such suit and applied for registration of such document in patent office. Arguing on such factual, the plaintiff stated that the non registration of the licensing agreement doesn't makes it void and also there is no bar under the provision of section 69 and 109 of the Patents Act to bring the suit against infringement filing. Also, in the act there is no time mentioned for request for registration of license agreement/ assignment deed for licensee.


The Hon'ble Delhi High Court, on considering the facts and observations between both the parties, held that Section 68 (before amendment) states that, a license or assignment agreement shall have effect from the date of execution, only on registration and an application for such registration has to be filed with the Controller within six months from the date of execution of document. Post-amendment, Section 69(5) of the Act, says that the validity of the license or assignment agreement as evidence shall only be considered after the document is registered in the Patent office of the Controller, unless the Controller or the Court direct otherwise with reasons recorded in writing. Further, under Section 69 of the Act, there is no time prescribed for filing such an application for registration.

Moreover, the court on reading the Sections 68, 69, 109 and 110 of the Act stated that although there exists no bar to file a suit for infringement by the exclusive licensee even if the license agreement is not registered under the Act, in light of the wordings "unless the Controller or the Court directs otherwise" under Section 69(5) of the Act, the Court clarified that the only case where an un-registered license or assignment agreement shall be admitted in evidence of the title of any person to a patent is- 'if the Controller or the Court specifically directs in this regard in writing'.

Considering such case where the Plaintiff had filed the license agreement before the patent office for registration, the Controller had not passed any specific order. Therefore, the Court held that unless the agreement is registered or the court passes any such order, the license agreement is not to be considered as evidence by the Court. With respect to the averments on the illegality of the license agreement of Sergi Transformer, the Court held that these issues would be considered by the Patent Office when it decides on Sergi Transformer's application to register the agreement. Although the Court declined to dismiss the suit on the basis of lack of registration of Sergi Transformer's license agreement, the Court directed the Patent Office to decide on the registration of Sergi Transformer's license agreement within 6 months from the date of the order. Further, the Court also directed that all pending applications and suit proceedings in relation to the instant subject matter stand adjourned till the Patent Office passes an order on the registration of Sergi Transformer's agreement.


After observing the case stated above, it is clear that the license or assignment deed is valid only when registered in the office of the Controller and further mandatory registration of license or assignment deed in the patent office creates huge back log of pending applications where assignment is to be registered. Such situation is more complex in case of granted patents where assignment is not recorded for longer periods. The court also delays the proceedings as same in this case where court is slow in giving the decision. These pending proceedings for registration of license will be matter concern for licensee and patentees.



The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

In association with
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.