Patent is an exclusive right granted for an invention. It grants the inventor a monopoly right to his invention .
Patent Assignment Deed is an agreement whereby it lists out the rights and obligations of the assignor and assignee with respect to patented product or process. This agreement transfers the monopoly rights of the assignor towards his patented product or process to the assignee.
Assignor is the person who transfers the patent title, right, etc. and assignee is the person who receives title as well as the rights associated with it. The assignor transfers the same to the assignee after payment of a consideration by the assignee to the assignor.
Further, Indian Patent Act, 1970 says that it is mandatory to register Patent Assignment Deed under Section 68 of the Indian Patents Act, 1970.
Patent Assignment Deed spells out the rights and duties with respect to the patented process or product. It is an evidence of the contractual agreement between the assignor and the assignee.
Briefly, the Patent Assignment Deed lists out:-
1) Name and addresses of assignor and assignee
2) Description of the patent assigned product or process whose ownership is being transferred.
3) A statement that all intellectual property rights related to the product or process are being transferred.
4) Date of the agreement execution
5) Lastly, signature of assignor and assignee and of two witnesses.
The Patent Assignment Deed shall also include:-
1) Consideration made to the assignor by the assignee
2) Clauses related to infringement of the patent assigned product or process
3) Future assignments , i.e., anything which the assignor creates in future for its patent assigned product or process is also transferred to the assignee.
The Patent Assignment Deed spells out the rights and duties of the Assignor and the Assignee with respect to the patented product or process. Some of them are mentioned below :-
1) Assignor can transfer his monopoly right, i.e., intellectual rights with respect to the patent assigned product or process fully or conditionally to the Assignee for a consideration.
2) Assignee will get the monopoly right as Assignor assigns the patented goods. Now the Assignee shall step into the shoes of the Assignor by virtue of the deed. Thereby , the Assignee will get an absolute right to use and enjoy the patented goods.
3) Assignee has the right to get indemnified against any inconvenience caused while he exercises his rights.
4) The Assignee has to pay the consideration to the assignor within stipulated time, failing which the assignor can take legal action against the assignee for recovery of consideration.
5) Prior to the assignment, the Assignor needs to ensure that the title is free from any encumbrances.
6) Lastly, Assignee can bring legal action against the assignor in case if by the acts of the assignor, any damage is caused to the assignee.
There exists four types of patent assignment :-
1) Assignment of rights- Patent Issued:- This is for patent which have been already issued.
2) Assignment of Rights – Patent Application:- This is for patents still in he application process. After filing this form, assignee can be listed as the patent applicant.
3) Assignment of Intellectual Property Rights – No Patent Issued or Application filed:- This is for unregistered inventions with no patent.
4) Exclusive rights
There are several advantages associated with the Patent Assignment Deed. Some of its advantages are enlisted herewith:-
1) It helps the parties to understand to their rights and obligation with respect to the said patent.
2) The Assignment Deed is a prima facie evidence of the contractual relationship between the Assignor and the Assignee.
3) There are less chance of ambiguity since all terms and conditions of the agreement are mutually agreed upon by the assignor and the assignee
4) The formation of Patent Assignment deed gives legality and enforceability to the transfer of the patented product or process.
Therefore, Patent Assignment Deed is a legal agreement between the Assignor and the Assignee by virtue of which the assignor transfers the intellectual right towards the patent assigned product or process to the Assignee.
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