When a patent is owned by multiple assignees as co-owners of the patent, situations may arise where there is a dispute between them regarding sale, lease or licensing of the patent. In such situations, it is within the powers of Controller to intervene and resolve such disputes.
What is the procedure to be followed by co-owners to seek directions from Controller?
Section 51 of Indian Patent Act includes a provision where in case of disputes, an aggrieved co-owner can make a written application to the Controller to seek directions. This application should be made in Form 11 and should accompany a statement indicating the facts upon which the applicant relies (Rule 76 of Patent Act).
When the Controller receives the application, the Controller sends a copy of the application to all the remaining co-owners i.e., every person who may be registered as a grantee or a proprietor of the patent. The Controller may also give the remaining co-owners and the applicant an opportunity for a hearing to discuss the facts of the matter.
On reviewing the application and conducting the hearing, the Controller then issues directions towards resolution of the dispute. For instance, these directions may include directions towards sale or lease of the patent, grant of licenses of the patent, or exercise of any right of co-owners under section 50.
In a simple example, imagine that there are 2 co-owners of a patent – A and B. A may be willing to license out the patent to a firm C but B may not be willing to enter into such a licensing agreement with C. Here, either A or B may write to the Controller explaining all the facts of the dispute between A and B. The Controller may then issue directions to A and /or B towards implementing certain tasks to resolve the dispute.
What is the time allowed to implement Controller’s directions?
When the Controller issues the directions, a time period of 14 days is allowed for the concerned co-owner to execute the directions. If the directions are not complied with and if the other co-owner writes to the Controller regarding the same (in Form 11), the Controller may provide a copy of this application to the person in default and consequently, assign any other person to execute the directions on behalf of the person in default.
However, even in this scenario, the Controller should give an opportunity of hearing to the person in default before assigning another person to execute the directions.
What is the fee required?
The fee associated is Rs. 2400 for Natural persons, startups and small entities, while it is Rs. 12000 for other entities.
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