Registration of Transfers

1An assignment of a patent or of a share in a patent or any mortgage, licence or any other interest in a patent shall not be valid unless the same were in writing and the agreement between the parties is reduced to the form of a duly executed document embodying all the terms and conditions governing their rights and obligations. (Patents Act 1970, s 68.) An entry in the register shall be prima facie evidence of any of the matters required or authorised under the Patents Act. (Ibid, s 72(2).) The purpose of entry in the register is to inform the public about the owner of the monopoly. (See LG Electronics Inc v NCR Financial Solutions Group Ltd [2003] FSR 24, para 18.) Notice of that patent shall be a ground for recovering damages or an account of profits against a defendant in an infringement suit. (Patents Act 1970, s 111(1).) The effect of an entry in the register of patents is critical in that the Patents Act makes it an offence punishable with imprisonment and fine to make a false entry in the register of patents. (Patents Act 1970, s 119.) When one exclusive agreement is replaced by another, the latter one should be recorded in the register. (See Spring Form Inc v Toy Brokers Ltd [2002] FSR 17, para 23.)

2The fact that a patent has not been registered under the Patents Act shall not affect the right of a proprietor or exclusive licensee to sue for infringement, as registration under the Patents Act is a requirement which can be complied with even at a later point of time. In an infringement suit, an unregistered proprietor will not be entitled to recover damages or an account of profits against a person who was not aware of the proprietorship as the same was not present in the register of patents. (Patents Act 1970, s 111(1). See Insituform Technical Services v Inliner UK Plc (1992) RPC 83, p 105.) The right of the assignee to sue will depend on the right of the assignor. Thus, if the assignor was not entitled to claim for damages as a result of non-registration, the assignee will not be able to claim for damages either. An assignee cannot acquire more than what the assignor can give. (See LG Electronics Inc v NCR Financial Solutions Group Ltd [2003] FSR 24, para 11.)

3No notice of trust, whether express, implied or constructive, shall be entered in the register. (Patents Act 1970, s 67(2).) The Controller shall not be affected by any such notice. The section covers only certain transactions like assignments, transmissions and licences; it does not cover equitable interests. In English law, an agreement to assign operates to create and vest in the buyer an immediate equitable interest in the patent. (See Coflexip Stena Offshore Ltd’s Patent (1997) RPC 179, p 188.) Such an agreement may be entered in the register as a transaction affecting rights in it. (See Stewart v Casey [1892] 1 Ch 104.) A person obtaining a legal assignment without notice of an equitable one can claim priority in respect of his assignment. (See Wapshare Tube Co Ltd v Hyde Imperial Rubber Co (1901) 18 RPC 374.) He may convey a good title even if the subsequent purchaser had knowledge of the equitable interest. (See Actiengesellschaft für Cartonnagen Industrie v Temler and Seeman (1901) 18 RPC 6.) A prior assignee (who delays the registration of the assignment) may restrain another person who had express notice of the prior assignment from infringing the patent as soon as he perfects his legal title by duly registering the same. (See New Ixion Tyre and Cycle Co v Spilsbury [1898] 2 Ch 484 (CA).) The Patents Act does not take notice of any trust in a patent to be entered in the register. Any person who takes an assignment of a patent with notice of the assignor holding the patent on trust for third parties, such an assignment will not give any priority as against the third party.

4All assignments, transmissions and licences relating to a patent shall be recorded in the register of patents. However, the register shall not record any notice of any trust. The time-limit under the earlier law requiring ’the application for registration of such document filed in the prescribed manner with the Controller within six months from the date of execution of the document’, has been omitted by the Patents (Amendment) Act 2005. Section 68 does not stipulate any time-limit for registration.

5Falsification of entries in the register is an offence punishable under the Patents Act. (Patents Act 1970, s 119.) A certified copy of the register of patents, detailing an assignment, transmission or a licence, shall be admissible in evidence in legal proceedings. The person who becomes entitled to patent or to an interest in the patent, through any of the means mentioned in s 68, shall make an application in writing to the Controller for the registration of title in his name or of notice of such interest in the register.

6In National Research Development of India v Delhi Cloth & General Mills Co (1979), a case decided section 68 before its amendment under the Patents (Amendment) Act 2005, the Delhi High Court held that “Section 68 of the Act provides that the Assignment Deed shall, when registered, have effect from the date of its execution. It is, therefore, apparent that as soon as the entry of registration of his deed was made by the Patent Office on 21st June, 1979 the plaintiff became the assignee of the patent in question with effect from the date of execution of the deed i.e. 22nd May, 1979.” (para 5) It held that “the assignee acquires all rights, under the Patent in terms of the Assignment Deed on the date when the deed is executed. As soon as the deed is registered under Section 68 of the Act it is effective from the date of its execution.” Of two decisions of the Calcutta High Court under the earlier law it held that “As already stated there was no provision in the Act of 1911 corresponding to Section 68 of the Act of 1970, these judgments are not applicable to the case arising under the Act of 1970.” (para 6)