It is routinely observed that ownership of patent applications shifts mid-prosecution, often during investment rounds or restructuring, raising a recurring doubt, can rights be transferred even before the patent is granted. Applicants, investors and R&D teams ask this at the term sheet stage, and the answer in Indian law is clear, pre-grant transfers are possible, if executed and recorded correctly.
Can a patent be assigned or transferred pre-grant
Yes. The Patents Act permits transfer of the “right to apply” and of interests in a pending application before grant. Section 20 specifically empowers the Controller to substitute the applicant’s name on an application at any time before grant, if entitlement arises “by virtue of any assignment or agreement in writing, or by operation of law”.
Two companion provisions shape how such transfers work in practice:
Section 68 requires every assignment, licence, mortgage or other interest to be in writing, duly executed, and to embody all terms and conditions. Oral or informal understandings are not recognised.
Section 69 provides for registration of assignments and other interests in the Register of Patents. While the agreement remains a contract between the parties, a document that is not registered will not be admitted as evidence of title by the Patent Office or a court, unless the Controller or court, for recorded reasons, directs otherwise.
What exactly can be transferred before the grant
The right to apply and undivided shares
The assignor may transfer the entire interest in the application, or an undivided share, so that the assignee becomes sole or joint applicant. The Controller can then direct that the application proceed in the assignee’s name, or jointly, depending on the instrument. Section 20 even contemplates disputes among joint applicants and empowers the Controller to regulate how the application should proceed.
Provisional rights after publication
Once the application is published, the applicant enjoys “like privileges and rights” as if the patent were granted, except that an infringement suit cannot be instituted until grant. After grant, compensation for acts post-publication may be sought. A pre-grant assignee who steps into the applicant’s shoes benefits from the same framework.
Proof of right when the inventor is not the applicant
If an assignee files the application or takes it over, proof of right from the inventor must be furnished with the application or within the prescribed period, typically by an executed Form 1 endorsement or an assignment deed.
Procedure at the Indian Patent Office, step by step
1) Execute a compliant assignment: Put all terms in a written, duly executed deed that clearly identifies the Indian application number, or otherwise acknowledges that the assignment relates to the specific invention. This is important because Section 20 requires identification by application number or an acknowledgement if the number is not yet available.
2) File Form 6 for substitution/addition of applicant: The claimant applies to the Controller on Form 6 with the prescribed fee, annexing the original or certified copy of the deed and any supporting consents. Rules 34 to 36 govern the manner of claims under Section 20.
3) Update connected filings:
File or update Form 3, if foreign applications exist, to disclose corresponding applications post-assignment.
Ensure the Authorisation of Agent (Form 26) reflects the new applicant, if representation changes.
If the assignment occurred before filing, ensure proof of right under Section 7(2) is on record within the allowed period.
4) Register the title once the patent is granted or any time after entitlement arises: File Form 16 to record the assignment under Section 69. Registration strengthens standing and avoids evidentiary hurdles later.
Practical note on stamping: Assignment deeds should be adequately stamped as per the applicable State Stamp Act to be admissible. In transactions, under-stamping becomes a frequent stumbling block.
Is registration mandatory to enforce patent rights later
Courts have cautioned that while non-registration does not, by itself, void the agreement between parties, it can bar the use of the document as evidence of title in infringement proceedings unless the court or Controller specifically permits it under Section 69(5).
In Sergi Transformer Explosion Prevention Technologies Pvt. Ltd. v. Kumar Pratap Anil & Ors. (Delhi High Court, 16 April 2014), the Court read Sections 68 and 69 together and held that an unregistered licence or assignment agreement is ordinarily not admissible as evidence of title, unless the Controller or Court directs otherwise in writing. The case underscores why prompt recordal is prudent.
In Laila Nutraceuticals v. Vittal Mallya Scientific Research Foundation (Delhi High Court, 4 January 2019), the Court noted that the responsibility to register a deed of assignment rests on the party claiming title, reinforcing that recordal is the claimant’s burden.
Takeaway: For smooth enforcement, do not wait. Record the transfer under Section 69 at the earliest opportunity, even though the statute no longer prescribes a rigid six-month deadline post-2005 amendments.
Who can sue and when
Only a patentee or an exclusive licensee can sue for infringement, and only after grant. If rights were assigned pre-grant and the assignee becomes the patentee on grant, the assignee can sue for acts post-grant and can seek compensation for post-publication acts as permitted by Section 11A(7). However, the assignment should be registered to avoid evidentiary objections at the threshold.
Common mistakes that derail pre-grant rights transfers
Vague deeds: Failing to identify the Indian application number or to include an acknowledgement that the deed relates to the invention in issue, which Section 20 expects for pre-grant substitutions.
Missing proof of right: Not filing proof from inventors within timelines when the assignee becomes the applicant.
No recordal under Section 69: Litigating without registration invites objections to locus and to admissibility of the deed.
Stamp duty lapses: Under-stamped deeds can be impounded or refused in evidence until duty and penalty are paid.
Quick map, statute to strategy
Topic | Statute or case | Applicant takeaway |
Pre-grant transfer and substitution | Section 20 | Execute a written assignment and file Form 6 to substitute or add the applicant before grant. |
Validity of assignment | Section 68 | Always reduce terms to a duly executed written deed. |
Registration and evidence | Section 69, Sergi (Del HC, 2014) | Register the deed on Form 16. Unregistered documents are not admitted as evidence of title unless the Controller or Court so directs. |
Provisional rights after publication | Section 11A(7) | Rights flow from publication to grant, but suit can be filed only after grant. Compensation for post-publication acts may be claimed. |
Integrated FAQs
Can an assignment be executed even before filing the Indian patent application?
Yes. If the assignee files as applicant, submit proof of right from the inventor under Section 7(2) within the prescribed period, typically by Form 1 endorsement or the deed itself.Can only some claims be assigned?
Patent rights attach to the application and its claimed invention, not to a subset of claims in isolation. If parties need a clean split, consider filing one or more divisionals under Section 16 and assigning those applications separately. This is a common structuring tool when portfolios are carved out mid-prosecution.Is registration compulsory before suing?
After grant, suits are competent in the name of the patentee or exclusive licensee. However, without registration under Section 69, the deed may not be admitted as evidence of title unless the court directs otherwise, which is avoidable risk. File Form 16 and record the transfer.Do we need to pay stamp duty on the deed?
Yes. Ensure adequate stamping under the relevant State’s Stamp Act. Under-stamped documents can face evidentiary hurdles until defects are cured.Final word
Pre-grant patent assignment in India is both permissible and routinely implemented. The legal architecture is straightforward, execute a proper written deed, substitute the applicant under Section 20 using Form 6, meet proof-of-right requirements if the inventor is not the applicant, and promptly register the transfer under Section 69 on Form 16. Doing the paperwork early pays dividends later, particularly when rights need to be enforced.
