Co-ownership of a Patent

1Section 50 of the Patents Act deals with the right of co-owners of a patent. It is possible for the patent to be owned by more than one person. All the owners have a co-equal right in the invention. Owners include person in whose name the patent is registered as a grantee or proprietor. When a patent is granted to two or more persons, each of them shall be entitled to an equal undivided share in the patent. When two or more persons are registered as grantees or proprietors of a patent, each of them shall be entitled to the rights of a patentee under s 48 with regard to product and process patents, for his own benefit, without accounting to the other person or persons. However, in both of the above cases, the parties may enter into an agreement to the contrary.

2In the case of grant of licence under the patent belonging to two or more persons, such a licence shall not be granted and a share in the patent shall not be assigned by one of those persons except with the consent of the others. While no licence can be made without the consent of all the owners, the position with regard to sale of a patented article is different. Sale of a patented article by one of the owners of the patent will be effective against all the other owners. Section 50(4) provides that in the case of sale of a patented article by any one of the owners, the purchaser and any other person claiming through him shall be entitled to deal with the article in the same manner as if the article had been sold to him by a sole patentee.

3A patent is considered as a movable property. A patent is territorial in its operation, and hence cannot be infringed by an act committed outside India. The rules of law applicable to the ownership and devolution of movable property shall apply in relation to patents. (Patents Act 1970, s 50(5).) However, the mandate of s 50 shall not affect the rights of the assignees of a partial interest in a patent created before the commencement of this Act.

4An application can be made to the Controller for directions under s 51(1) or s 51(2) with regard to sale, lease or licence of a patent. Any person who is a co-owner of a patent may make an application to the Controller for directions in Form 11, with an accompanying statement of facts. (Ibid, s 51(1); Patents Rules 2003, r 76.) A copy of the application and the statement shall be sent by the Controller to every other person registered as the grantee or proprietor of the patent. The Controller may give directions to co-owners with regard to (a) sale or lease of the patent or any interest therein; (b) the grant of licences under the patent; or (c) the exercise of any right under s 50.

5If any co-owner fails to execute any instrument or to do any other thing required for the carrying out of any direction given by the Controller under s 51 within 14 days after being requested in writing, by any other co-owner, the Controller may, on application made in Form 11, give directions to empower any person to execute that instrument or to do that thing in the name and on behalf of the person in default. The application shall be accompanied by a statement of facts, and a copy of the same shall be sent to the person in default. (Patents Rules 2003, r 77.)

6Before any direction is given under sub-ss (1) or (2) of s 51, the Controller shall give the concerned co-owner an opportunity to be heard under sub-s (1) and to the co-owner in default under sub-s (2). However, the Controller shall not give any direction under s 51 that may affect the mutual rights or obligations of trustees or of legal representatives of a deceased person or of their rights and obligations as such or which is inconsistent with any agreement between the co-owners.

7Co-owners shall be entitled to equal, undivided shares in a patent. (Patents Act 1970, s 50(1).) When a patent is granted to two or more persons, each of them shall be entitled to an equal undivided share in the patent. The 'equal undivided share' held by joint owners of a patent implies that the benefits from the patent would be shared equally. (See Florey & Others' Patent (1962) RPC 186.) Section 50 of the Patents Act details the right of co-owners of a patent. A co-owner can make, use, exercise and sell a patented invention for his own benefit without accounting to other sharers. (Patents Act 1970, s 50(2).) But when it comes to assignment or licence of his share in the patent, it cannot be done without the consent of the other co-owners. (Ibid, s 50(3).) A co-owner may get his share assigned by a direction from the Controller. Such a direction issued by the Controller may be the subject matter of an appeal before the High Court.

8The Patents Act recognises co-ownership as it provides for making joint applications for patents. (Patents Act 1970, s 6(2).) Though the EPC virtually ignores the possibility of co-ownership, the UK Patents Act does contain numerous provisions on co-ownership. (See European Patent Convention, art 59, which deals briefly with multiple applicants. Article 60(2) deals with instances where two or more inventors act independently. Consequently, art 138(1) includes as a ground for revocation a situation where the proprietor of the European patent is not entitled under art 60(1).) In Henry Brothers (Magherafelt) Ltd v Ministry of Defence and Northern Ireland Office, the Patent Court was of the view that the rights of a sole owner to take over the patent or make his own application or have the patent revoked, should also be extended to a co-owner. (UK Patents Act 1977, ss 8(1)(a) and 37(4).) ((1999) RPC 442.) The Court of Appeal differed with the above view and opined that 'the co-owner of a patent should have less ample rights against his fellow co-owner than the sole owner has against a person with no title at all'. (Ibid.) The law with regard to co-ownership is in need of further clarification."

Right of Co-owner to enforce a patent

9A co-owner, also known as the co-patentee, can enforce a patent by filing an infringement suit. In Cipla v F Hoffmann-La Roche (2015) (para 182) the Division Bench held that the co-patentee is entitled to enforce the rights conferred to a patentee under section 48 and,in the absence of a challenge to the ownership, the objection under Section 50 of the Patents Act would fail.