Transfer of Patent Rights

1Section 48 of the Patents Act states that the rights of a patentee with regard to a patent shall be an exclusive right which can be exercised to prevent third parties from making, using, offering for sale, selling or importing a patent. Section 69(1) provides for the transfer of this exclusive right by two means. First, a person may be entitled, by assignment, transmission or operation of law, to:

(1) a patent; or (2) a share in a patent.

2The above instances pertain to transfer of an absolute right in a patent or a share in a patent. This may happen by an assignment, transmission or by operation of law. The transfer of the right in a patent is complete in such cases. The transferor retains no residual right in the patent or in the share of the patent so transferred.

3Secondly, a person may also be entitled by way of a mortgage, licence or otherwise, to:

(1) an interest in a patent; or (2) an interest in a share in a patent.

4The above instances pertain to transfer of a limited right or an interest in a patent. This may happen by a mortgage, licence or by any other way by which an interest in a patent can be transferred from one person to another. Where an interest alone is transferred, the transfer cannot be regarded as a complete transfer of all the rights in a patent. The transferor, say for instance, the mortgagor or the licensor, retains certain rights in the patent. Such transfers encompass a limited or restricted transfer of rights in a patent.

5A critical difference between a transfer of a patent and the transfer of an interest in a patent is that in the case of the former, the transferee of a patent becomes a proprietor whose name shall be entered into the register of patents. A registered grantee or a registered proprietor shall have the power to assign, grant licences or to deal with the patent and to give receipts for any consideration received. (Patents Act 1970, s 70.) A transferee of an interest will only be entitled to a notification in the register of patents. The following sections discuss each of the above mentioned forms of transfer of a right or an interest in a patent.