According to section 68 of the Patent Act an assignment of a patent or of a share in a patent, a mortgage, license or the creation of any other interest in a patent shall not be valid unless the same were in writing and the agreement between the parties concerned is reduced to the form of a document embodying all the terms and conditions governing their rights and obligations and duly executed.
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(1) Section 69 provides that where any person becomes entitled by assignment, transmission or operation of law to a patent or to a share in a patent or becomes entitled as a mortgagee, licensee or otherwise to any other interest in a patent, he shall apply in writing in the prescribed manner to the Controller for the registration of his title or, as the case may be, of notice of his interest in the register.
ADVERTISEMENTS:
(2) Without prejudice to the provisions of sub-section (1), an application for the registration of the title of any person becoming entitled by assignment to a patent or a share in a patent or becoming entitled by virtue of a mortgage, license or other instrument to any other interest in a patent may be made in the prescribed manner by the assignor, mortgagor, licensor or other party to that instrument, as the case may be.
(3) Where an application is made under this section for the registration of the title of any person the Controller shall, upon proof of title to his satisfaction
(a) Where that person is entitled to a patent or a share in a patent, register him in the register as proprietor or co- proprietor of the patent, and enter in the register particulars of the instrument or event by which he derives title; or
(b) Where that person is entitled to any other-interest in the patent, enter in the register notice of his interest, with particulars of the instrument, if any, creating it:
ADVERTISEMENTS:
Provided that if there is any dispute between the parties whether the assignment, mortgage, license, transmission, operation of law or any other such transaction has validly vested in such person a title to the patent or any share or interest therein, the Controller may refuse to take any action under clause (a) or, as the case may be, under clause b), until the rights of the parties have been determined by a competent court.
(4) There shall be supplied to the Controller in the prescribed manner for being filed in the patent office copies of all agreements, licenses and other documents affecting the title to any patent or any license there under authenticated in the prescribed manner and also such other documents as may be prescribed relevant to the subject-matter:
Provided that in the case of a license granted under a patent, the Controller shall, if so requested by the patentee or licensee, take step! for securing that the terms of the license are not disclosed to any person except under the order of a court.
(5) Except for the purposes of an application under sub-section (j) or of an application to rectify the register, a document in respect of no entry has been made in the register under sub-section (3) shall not admitted by the Controller or by any court as evidence of the title of person to a patent or to a share or interest therein unless the Controls or the court, for reasons to be recorded in writing, otherwise directs,
ADVERTISEMENTS:
Subject to the provisions contained in this Act relating to ownership of patents and subject also to any rights vested in any other person of which notice is entered in the register, the person or persons registered as grantee or proprietor of a patent shall have power to assign, grant licenses under, or otherwise deal with, the patent and to give effectual receipts for any consideration for any such assignment, license or dealing: provided that any equities in respect of the patent may be enforced in like manner as in respect of any other movable property.