Patent: Patent Assignment and Licenses / A Presentation at NALSAR Hyderabad - Dr Kalyan C Kankanala Contact Us for Intellectual Property Services BananaIP Counsels Regd Office No.40,3rd Main Road,JC Industrial Estate, Kanakapura Road,Bangalore – 560 062. Email: contact@bananaip.com Telephone: +91-80-26860414 /24/34

1. Copyight, Brain League IP Services Now BananaIP 2009. Non-commercial
use is permitted.
Patent Assignments
and Licenses
By
Dr. Kalyan C. Kankanala
Brain League IP Services Now BananaIP

2. Transfer of Patents
• Assignment
• License

3. Assignment
• Transfer of Ownership
• Partial or Complete
• Writing and Signature
• Register

4. License
• Authorization or Permission
• Exclusive Rights
• Territory
• Writing
• Signature
• Register

5. Types of Licenses
• Exclusive
• Non-exclusive
• Sole

6. Important clauses
• Recitals
• Definitions
• Grant
• Royalties
• Term and Termination

7. Recitals
• Parties – Licensor/Licensee
• Addresses
• Dates
• Background of the transaction

8. Definitions
• Interpretation clause
• Consistently used words
– Specific/certain/lucid
• Attribute specific meaning
• Apply to entire agreement

9. Examples
• Licensor shall mean ABC company having a place of
business in Bangalore and shall include its
subsidiaries, assignees and legal representatives.
• Licensee shall mean Kalyan, resident of xyz,
Bangalore and shall include his successors, assignees,
administrators, executors and other legal
representatives.
• Licensed Patent shall mean patents granted in USA
under patent numbers xxx, yyy and patent
applications pending before Indian Patent Office
having filing numbers xxx, and YYY.

10. Grant Clause
• Most important
• Defines scope of agreement
• States
– Parties
– Type
– Subject
– Rights
– Territory
– Term

11. Example
• Licensor grants to Licensee a nonexclusive license
to use the Licensed Software within the territory
of India from 1st January, 2005 to 1st January,
2006.
• This clause specifies
• Who grants to whom -Licensor to Licensee.
• Type of license - Nonexclusive License
• Rights – Use Licensed Software
• Territory - India
• Dates - January, 2005 to 1st January, 2006

12. Term and Termination
• Term
• Events
– Material Breach - Nonpayment of royalty, etc.
– Bankruptcy
– Insolvency
– Act of god
• Rights after termination
• Confidentiality

13. Example
• Unless earlier terminated as hereinafter provided,
this Agreement shall extend to each country in the
Territory for a term of ten (10) years from the
Effective Date. The term of the agreement is
renewable at the option of the parties and such
term and conditions shall be finalized after
negotiations based on terms agreeable to both the
parties.

14. Royalty Clause
• Type of Royalty
– Lump sum royalty
– Fixed Royalty
– Running royalty
• Combination.
• Mode and Date of payment
• Accounting and Record keeping
• Non payment consequences.

15. Example
• XYZ agrees to pay ABC, a fixed royalty of
Twenty-Thousand-Dollars ($ 20,000) per every
Calendar Year after the first year. For the first
Calendar Year, XYZ shall pay ABC a fixed
royalty of Ten-Thousand Dollars ($ 10,000). Such
sum shall be paid on or before December 11th of
every Calendar Year.

16. Other Clauses
• Indemnity
• Warranty
• Liability

17. Copyight, Brain League IP Services Now BananaIP 2009. Non-commercial use is permitted.
NRDC V. ABS
• Patent License
• Not registered
• Expiry of patent term
• License invalid

18. Copyight, Brain League IP Services, 2009.
Non-commercial use is permitted.
• Compulsory Licenses

19. Copyight, Brain League IP Services, 2009.
Non-commercial use is permitted.
Working of a Patent
• Reasonable prices
• Public Health
• Public Interest
• Technology Transfer
• Industrial Progress

20. Copyight, Brain League IP Services, 2009.
Non-commercial use is permitted.
Conditions
• Reasonable requirements of public
• Reasonably affordable prices
• Working in India

21. Copyight, Brain League IP Services, 2009.
Non-commercial use is permitted.
Procedure
• Any person
• Three years – Patent Grant
• Prima Facie Case
• Publication
• Opposition
• Grant

22. Copyight, Brain League IP Services, 2009.
Non-commercial use is permitted.
Compulsory Licenses
• Related Patents
• Emergency
• Expoert

23. Copyight, Brain League IP Services, 2009.
Non-commercial use is permitted.
Example 1
• There is a SWINEFLU outbreak in India and more
than hundred lives are lost in a period of one month. X,
a pharma company, holds a patent over a drug to
prevent SWINEFLU. On recognizing the need for the
drug X starts manufacture of the drug on a large scale
by tying up with companies A, B and C. D, a generic
company approaches X for a manufacturing contract
and on being refused applies for a compulsory license.
• Will a compulsory license be granted to D?

24. Copyight, Brain League IP Services, 2009.
Non-commercial use is permitted.
Example 2
• A acquires a patent over a tyre and B
holds a patent over the rim used in such
tyres. A approaches B for a license of the
patented rim to manufacture and sell his
patented tyre. On B's refusal, A files for
a compulsory license.
• Will the license be granted?

25. Copyight, Brain League IP Services, 2009.
Non-commercial use is permitted.
Example 3
• Rove, a bike manufacturing company holds
twenty patents over electic bike technology. It
makes five electric bikes every year and sells
each bike at a cost of 5 lakhs. A, another bike
manufacturing company applies for a
compulsory license over all the patents.
• Will a compulsory license be granted?

26. Copyight, Brain League IP Services, 2009.
Non-commercial use is permitted.
Thank You