Assignment

1The Patents Act does not define the expression 'assignment' though it does provide for a definition of the term 'assignee'. It is possible to assign the entire rights in a patent or a share in a patent. Where the patentee assigns shares in a patent, the assignees become co-owners of the patent. Under the Patents Act, an assignee also includes 'the legal representative of a deceased assignee'. (Patents Act 1970, s 2(1)(ab).) An assignment may also pertain to an application for patent, as the right to apply for a patent is an assignable right. (Ibid, s 20.) All assignments, to be valid, have to be in writing. (Ibid, s 68).

2The assignee will take the assignment subject to the terms attached to such assignment. (See Dansk Rekylriffel Syndikat Aktieselskab v Snell [1908] 2 Ch 127, p 136.) As the intention of the parties is expressed in the terms and conditions of the agreement which shall govern their rights and obligations, a true construction of the same will be crucial in understanding the scope of the assignment. (See Patents Act 1970, s 68.) Thus it will not be open for any person, who has notice of an arrangement to share profits with the patentee, to say that he will 'keep all the profits and will not be liable to account'. (See Bagot Pneumatic Tyre Co v Clipper Pneumatic Tyre Co [1902] 1 Ch 146, (1902) 19 RPC 69, p 75; Barker v Stickney [1919] 1 KB 121 (CA).) (See Werderman v Société Générale d'Electricité (1881-82) LR 19 Ch D 246, pp 251-52 (CA).)

3Section 68 of the Patents Act details that the mode of assignment shall be in writing, reduced in the form of a document containing all the terms and conditions, and the same shall be duly executed. Section 2(1)(f) of the Patents Act does not require any particular document or form of grant for an exclusive licence. (See Morton-Norwich Products Inc v Intercen Ltd (No 2)[1981] FSR 337, p 344, a case decided under similar provisions (ss 63 and 101) of the UK Patents Act 1949.) Sections 68 and 69 will not govern an agreement to assign a patent as it is not in itself an assignment or any of the transactions mentioned in the above sections. (See Coflexip Stena Offshore Ltd's Patent (1997) RPC 179.) The contents of an agreement may be proved either by primary or secondary evidence. (Bharatiya Sakshya Adhiniyam 2023, s 56.) Where an original assignment is destroyed or lost, or cannot be produced before the court in reasonable time, the court may rely on secondary evidence as proof of assignment. (Ibid, s 60(c).)

4In Cipla v F Hoffmann-La Roche (2015) (paras 177-178) the Division Bench held, with respect to assignment deeds said to be back-dated, that "(e)ven assuming no right could be created retrospectively in favour of Pfizer Products Inc., right certainly vested on May 18, 2005 the date of assignment agreement" , and that "(t)he Registration Act does not envisage a deed of assignment of a trademark/copyright or patent to be compulsorily registered not being an immovable property."