What is the law around joint patent ownership in India?
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What is the law around joint patent ownership in India?

Essenese Obhan and Aparna Kareer of Obhan & Associates evaluate the law in India around joint ownership of patents in relation to infringement claims, the licensing and assignment of patents and the working of patents in India

Research today is no longer about individuals working in laboratories in isolation, but about large-scale collaborations between multiple teams, often across institutions, and even institutions. Such joint collaborative projects often result in creating intellectual property like patents that is jointly applied for, and owned by, two or more persons or companies. This article discusses how these rights play out, in cases where a patent is held by two or more patentees. This article also discusses certain requirements that must be kept in mind by co-owners of a patent once the patent is granted.

The right to stop others

A patent confers upon a patentee, under Section 48 of the Patents Act 1970 (the act), the basic right to exclude others from the act of making, using, offering for sale, selling or importing for these purposes either the patented product or the product obtained from the patented process. Rights of co-owners of a patent are governed by section 50 of the act. Under this section, unless there is an agreement to the contrary, each co-owner has an equal and undivided share in the patent, and is entitled to the rights conferred under Section 48 of the act, for his own benefit, without being accountable to the other. Thus, each co-owner may file a suit to prevent a third party from infringing the patent, without being answerable to the other.

This right of a co-owner was explained by the court in a lawsuit for alleged infringement where the defendant had challenged the maintainability of the suit due to the non-joinder of a co-patentee. In this case (M.C. Jayasingh v Mishra Dhatu Nigam Limited, 2014 SCC OnLine Mad 163), the suit was filed by only one of the co-owners of the patent, and although the other co-owner was aware of the infringement suit and had also provided an opinion by way of an affidavit, he was not named as a party to the suit. The Madras High Court held:

"…it is clear from Sub-Section (2) of section 50 read with Section 48 that each of the grantees or proprietors of a patent, is entitled by himself or by his agents, to enforce the rights conferred under Section 48, for his own benefit without being accountable to other person or persons. Coupled with the fact that under Section 50(3), a co-patentee cannot even assign or grant a license in respect of his share, without the consent of the other persons the provisions of Section 50(2) make the suit maintainable at the instance of one of the co-patentees."

In F.Hoffmann-La Roche Ltd. & Anr. v Cipla Ltd. (RFA(OS) 103/2012, judgment dated November 27 2015) , the division bench of the Delhi High Court clarified that so long as one of the co-owners was the plaintiff in an infringement suit, the infringement suit was maintainable. It said:

"Each of the co-patentee being entitled by itself or by its agent to enforce rights conferred under Section 48 of the Patents Act, 1970 and there being no challenge to the ownership of OSI, plaintiff No.2 in the suit and a co-patentee, the objection in terms of Section 50 of the Patents Act thus fails. The suit patent cannot be held invalid for lack of title, nor is the suit liable to be dismissed on the ground that Roche has not proved its license for the reason title of OSI plaintiff No.2 to the suit patent is established and it being a co-plaintiff, suit was maintainable."

Although each co-owner may institute an infringement suit without making the other co-owners party to the suit, the result of such a suit can impact the rights of the other co-owners. This is because in most infringement suits in India, the defendant ordinarily argues that the patent in suit is invalid in a counterclaim for revocation. The impact would be especially significant in cases where, in challenges to validity of the patent, the patent is found to be invalid or claims of the patent are to be narrowed. In such cases, the co-owners may end up owning a patent with narrower claims than granted, or may lose the patent altogether.

On the other hand, if the co-owner does succeed in winning the infringement suit alone, the other co-owners in the absence of any agreement to this effect would not be entitled to damages or compensation.

Regardless of the law under Section 50 of the act, it should be noted that this arrangement can be modified by specific clauses to this effect in joint ownership contracts. If they prefer, co-owners may agree by contract that an infringement suit cannot be instituted without the consent of the other co-owner, which would render the provisions of Section 50 inapplicable.

Right to assign or license patent

A patent is a form of property, and can, therefore, be sold or licensed like any other property. Thus, in addition to the right to prevent others from using, making or selling the patented product, the patentee also has the power to assign, grant licences under or otherwise deal with the patent and to receive compensation for the same, under Section 70 of the act. Under Section 50(3), if a patent is jointly held by two or more owners, none of the co-owners can license or assign their share in the patent to a third party without the consent of the other owner(s). However, this arrangement can be modified by a contract to the contrary.

Although the act states that a co-owner must obtain consent of the other co-owner(s) before assigning or licensing their rights in the patent, there is not enough clarity on the sharing of compensation or royalties obtained from the assignment or licensing of such a patent. Since each co-owner has an undivided share in the patent, compensation obtained from the sale of the patent, or royalties obtained from the licensing of the patent, need not be shared. However, as consent is required before assigning or licensing the patent, the co-owners may during the process of obtaining consent, negotiate sharing of compensation or royalties from assignments or licences. Negotiations such as these may occasionally result in disagreements between the co-owners, where one or more co-owner may refuse to consent to the other co-owner interested in assigning or licensing his rights in the patent. The act provides the controller of patents with certain powers to resolve such conflict.

Under Section 51 of the Act, in case a disagreement arises between the co-owners about sale or lease of the patent, then the co-owner interested in assigning or leasing his rights may approach the controller of patents to give suitable directions to the other co-owners to do so. Such an application must be accompanied by a statement of the facts. Before giving any directions, the controller will forward a copy of the application and the statement of facts of the application to all other interested parties, and conduct a hearing.

If any party concerned fails to execute the documents required for assigning or licensing the patent, or refuses to comply with any requirement for carrying out the directions of the controller within 14 days after being requested in writing to do so, the affected party may approach the controller, with an application to this effect in writing. After sharing the application and other required documents with the person in default, and after hearing both parties, the controller can give appropriate directions.

Obtaining advance consent is not restricted to patent owners alone. Consent from other applicants is also required in the application stage. If one of the joint applicants of a patent application decides to assign their rights in the patent to a third party, consent from the other applicant/s must be filed along with the assignment and the request to change the applicant. In the case of Indian Patent Application No: 1797/KOL/2008, a request for a change in applicant was filed after one of the joint applicants assigned their rights to a third party. The patent application was not granted by the Indian Patent Office, until the consent of the other joint applicant was filed.

Thus, in respect of co-owners, in a case where either no agreement is signed regarding their joint ownership rights or the agreement does not spell out the rights in detail, the law answers the following questions as follows:

1. Can a joint owner file an infringement suit against a third party without the consent of the other? YES

2. Can joint owners of a patent assign their rights without the consent of the other? NO

3. Can a joint owner of a patent give a licence to a third party without the consent of the other? NO

Working of patents

A unique requirement in India is that of submitting a statement of working of the patented invention in India. Under this requirement, every patentee and every licensee is required to submit to the Patent Office annually statements of the commercial working of the patent in India. Since each co-owner of a patent can work the patent individually, without the consent of the other, the commercial working of the patent by each co-owner must be submitted at the patent office. Such co-owners may either submit the statement individually, or in a single statement. Where the co-owners have, either jointly or individually, licensed their rights in the patent to a third party, they should also ensure that the licensee submits the details of the commercial working of the patent in India each year to comply with this requirement.

As research becomes increasingly cross-territorial and collaborative, clearly drafted agreements and contracts help clarify the legal aspects of the collaboration right from the start. Wherever intellectual property such as patents is likely to be generated, it becomes imperative to specifically address the issue of patent exploitation, assignment and licensing in these joint arrangements, so that such issues do not become a sore point at a later stage during actual use of the patents in question.





共同所有者のこの権利は、権利侵害が申し立てられた訴訟において、法廷が説明したものである。ここで、被告は、共同特許所有者が訴訟に同意していないことを理由に、訴訟の維持可能性に異議を申し立てていた。この場合 (M.C.Jayasingh vs. Mishra Dhatu Nigam Limited, 2014 SCC OnLine Mad 163)、訴訟は特許の共同所有者のうちの1人のみによって起こされた。また、その他共同所有者は侵害訴訟のことを関知しており、さらに宣誓供述書経由で見解を提供したものの、訴訟の原告には指名されなかった。マドラス高等裁判所は次のように述べた:


F.Hoffmann-La Roche Ltd. & Anr. v. Cipla Ltd. (RFA(OS) 103/2012、2015年11月27日判決) で、デリー高等裁判所の担当裁判官は、共同所有者のうちの1人が侵害訴訟の原告となる限り、侵害訴訟が維持可能であると明確に判断した。判決では次のように述べた:










事前の同意の取得先は、特許所有者のみに限らない。申請段階の中でその他申請者からの同意も必要となる。特許出願の共同出願人のうちの1人が第三者に特許中の自己の権利を譲渡しようとする場合、他の申請者からの同意を、譲渡および出願人変更依頼と合わせて提出する必要がある。インドの特許出願番号: 1797/KOL/2008の場合、共同出願人のうちの1人が第三者の権利を譲渡し、出願人変更の依頼が提出された。他の共同出願人が書面で同意するまで、インドの特許局による特許出願は認められなかった。


1. 共同所有者は、他の所有者からの同意なく第三者に対する侵害訴訟を起こすことができるか?


2. 共同所有者は、他の所有者の同意なく権利を譲渡できるか?


3. 共同所有者は、他の所有者の同意なく第三者に使用許諾することができるか?






Essenese Obhan マネージングパートナー



Essenese Obhan, managing partner at Obhan & Associates, is an IP lawyer and patent agent with a degree in mechanical engineering. He has drafted, prosecuted and litigated cases in the mechanical, chemical, pharma, software, telecom and agriculture sectors. He advises many companies including some fortune 500 companies and India's leading business houses on developing and maintaining their patent portfolios and on IP strategy and licensing.

Essenese Obhanは、Obhan & Associatesのマネージングパートナーで、機械工学の学士号を持つ知財弁護士および特許弁理士です。Obhanは、機械、化学薬品、製薬、ソフトウェア、通信および農業分野の出願書類の作成、出願手続き、および訴訟を行ってきました。フォーチュン500企業およびインドの大手企業を含む多くの会社に、特許のポートフォリオの開発および維持、知財戦略および使用許諾についての助言を行っています。

Aparna Kareer パートナー



Aparna Kareer, a partner at Obhan & Associates, is an IP lawyer and patent agent. She oversees the patent filing department of the firm. Aparna drafts and prosecutes patent applications in India and other jurisdictions, in the biotechnology, chemical, pharmaceutical and nanotechnology areas. She is actively involved in patent litigation and opposition proceedings. She also conducts patent analytics and provides patentability, invalidity and freedom-to-operate (FTO) opinions to clients. She regularly advises clients on IP strategy.

Aparna Kareerは、Obhan & Associatesのパートナーで、知財弁護士および特許弁理士です。同氏は、本事務所の特許出願部の責任者を務め、インドおよびその他の国で、バイオテクノロジー、化学薬品、調合薬およびナノテクノロジーの特許申請書類作成と出願手続きを行っています。Aparnaは特許訴訟と異議申し立て訴訟手続きに積極的に取り組んでいます。さらに特許分析を行い、クライアントに特許性、無効およびFTO調査に関連した見解を提供しています。また定期的に知財戦略についてクライアントに助言します。

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