Specimen Deed of Assignment explained: this guide covers what Specimen Deed of Assignment means, who it applies to, the step-by-step process, documents required, fees, due dates and penalties in India — so you can stay compliant with confidence and avoid costly mistakes.
What Is Assignment of a Patent?
Assignment of a patent is the transfer of ownership (rights, title, and interest) of a patent from the assignor (current patent holder) to the assignee (new patent holder). Under Section 68 of the Indian Patents Act, 1970: a patent, or any share or interest therein, is assignable (either by act of the parties or by operation of law) and the assignment must be in writing. The assignment may be of: (a) the entire patent, (b) a share or undivided interest in the patent, or (c) a limited interest for a specific territory or field of use. Post-assignment: the assignee becomes the new owner of the patent with all rights to make, use, sell, and license the patented invention.
Assignment is distinct from licensing — in an assignment, ownership transfers completely. In a license, the patent owner retains ownership but grants permission to another to use the patent. Assignment is a permanent transfer (for the remaining term of the patent); a license is typically for a limited period.
Legal Framework — Sections 68-70 Indian Patents Act
Section 68 — Assignment of Patents: A patent and any right in it can be assigned. The assignment must be in writing and must be registered with the Patent Office to be effective against third parties. An unregistered assignment is valid between the parties but cannot be relied upon against subsequent bona fide assignees or licensees who register first.
Section 69 — Registration of Assignments and Transmissions: The Controller of Patents maintains a register of assignments, transmissions, and licenses. Any person becoming entitled to a patent by assignment must apply to the Controller for registration of their title. The application must be made within 6 months of the assignment (or such extended period as the Controller may allow on payment of the prescribed fee). Documents required: the original assignment deed, a copy of the patent, and the prescribed fee.
Section 70 — Power of Registered Holder: The registered holder of a patent is the person entitled to exercise all rights under the patent, including: (a) the right to work the patent, (b) the right to grant licenses, (c) the right to institute infringement proceedings, (d) the right to further assign the patent. Until the assignment is registered: the assignee cannot exercise these rights against third parties.
Specimen Deed of Assignment of Patent
DEED OF ASSIGNMENT OF PATENT
This Deed is made on at
BETWEEN:
, having address/registered office at (hereinafter called the "Assignor")
AND
, having address/registered office at (hereinafter called the "Assignee")
RECITALS
(a) WHEREAS the Assignor is the registered proprietor of Indian Patent No. dated for an invention titled "" (hereinafter called the "Patent"), granted by the Controller of Patents, , valid until .
(b) WHEREAS the Assignor desires to assign the said Patent, together with all rights, title, and interest therein, to the Assignee for a consideration of Rs. / .
(c) WHEREAS the Assignee has agreed to purchase and accept the assignment of the Patent on the terms and conditions set out herein.
NOW THIS DEED WITNESSETH:
1. Assignment: In consideration of the sum of Rs. paid by the Assignee to the Assignor (receipt of which is hereby acknowledged), the Assignor hereby assigns, transfers, and conveys to the Assignee, ALL rights, title, and interest in and to the Patent, including: (a) the right to make, use, sell, offer for sale, and import the patented invention in India, (b) the right to grant licenses and sub-licenses, (c) the right to institute and defend proceedings for infringement, (d) the right to receive damages and royalties for past infringements, (e) all improvements, modifications, and continuations of the Patent.
2. Consideration: The total consideration for this assignment is Rs. , payable as: (a) Rs. — lump sum on execution, (b) Rs. — milestone payments / royalty of % on net sales of products embodying the patented invention .
3. Assignor's Warranties: The Assignor warrants that: (a) the Assignor is the sole and rightful owner of the Patent, (b) the Patent is valid and subsisting, (c) the Patent is not subject to any prior assignment, license, or encumbrance, (d) the Assignor is not aware of any invalidity or infringement proceedings relating to the Patent, (e) all renewal fees have been paid up to date, (f) the Assignor has the full right and authority to execute this Deed.
4. Assignor's Obligations: The Assignor shall: (a) execute all documents necessary to perfect the Assignee's title, (b) cooperate in filing the assignment with the Patent Office for registration, (c) provide all technical information, drawings, and documentation relating to the invention, (d) not use the patented invention after the assignment date (unless retained rights are specified).
5. Registration: Both parties shall jointly apply to the Controller of Patents for registration of this assignment under Section 69 of the Indian Patents Act, 1970, within [30/60/90] days of execution. The registration fee shall be borne by the .
6. Renewal Fees: From the date of this assignment: all future renewal fees for maintaining the Patent shall be the sole responsibility of the Assignee.
7. Indemnity: The Assignor shall indemnify the Assignee against all claims, losses, and expenses arising from: (a) any breach of the warranties herein, (b) any prior infringement by the Assignor, (c) any claim by a third party that the Patent is invalid or that the Assignor was not the rightful owner.
Registration with Patent Office
Under Section 69: the assignment must be registered with the Indian Patent Office for it to be effective against third parties. Procedure: (a) file Form 16 (Application for Registration of Title/Interest in Patent) with the Patent Office, (b) attach: original assignment deed (or certified copy), copy of the patent, and prescribed fee, (c) the Controller examines the application and, if satisfied, registers the assignment in the Register of Patents, (d) the Assignee's name is entered as the registered proprietor. Fee: Rs. 3,000 (for individuals/startups/small entities) or Rs. 10,000 (for others) as per the Patents (Amendment) Rules, 2024.
Tax Implications
(a) Income Tax — Assignor: The consideration received for patent assignment is taxable as: capital gains (if the patent was a capital asset — long-term if held for more than 24 months) or business income (if the patent was developed in the course of business). Under Section 115BBF: royalty income from patents developed and registered in India by a resident is taxed at a concessional rate of 10% (applicable if the assignor retains royalty rights).
(b) GST: Assignment of patent rights is a supply of services under GST — taxable at 12% (for temporary transfer of IP rights) or 18% (for permanent transfer). If the assignor is registered under GST: invoice with GST must be issued.
(c) Stamp Duty: Assignment of patent may attract stamp duty under the Indian Stamp Act — typically as a "conveyance" or "transfer" at state-specific rates. In many states: assignment of IP rights attracts nominal stamp duty (Rs. 100-500).
Key Differences — Assignment vs License
| Feature | Assignment | License |
|---|---|---|
| Ownership | Transfers completely | Remains with patent holder |
| Duration | Permanent (remaining patent term) | For the license period |
| Rights | All rights transfer | Only permitted use rights |
| Registration | Mandatory (Section 69) | Optional but recommended |
| Infringement Suit | Assignee can sue | Only exclusive licensee can sue |
| Sub-licensing | Assignee can grant licenses | Only if license permits |
Disclaimer: This article is for informational purposes only and does not constitute legal or professional advice. While every effort has been made to ensure accuracy based on the latest laws and amendments, readers should consult a qualified professional before acting on any information provided. For expert assistance, contact us.
Key Facts About Specimen Deed of Assignment
- Applies in: All states across India, under the relevant central law.
- Mode: Mostly online via the official government portal.
- Typical timeline: Ranges from a few days to a few weeks depending on the case.
- Non-compliance: May attract penalties, interest or late fees.
- Expert help: TaxClue completes Specimen Deed of Assignment end to end for you.
Is registration of patent assignment mandatory?
Under Section 69 of the Indian Patents Act: registration of assignment with the Patent Office is mandatory for the assignment to be effective AGAINST THIRD PARTIES. An unregistered assignment is valid between the assignor and assignee — but the assignee cannot exercise patent rights against third parties or subsequent assignees who register first. Application for registration: Form 16 with the Controller of Patents within 6 months of assignment (extendable with additional fee). Without registration: the assignee cannot sue for infringement or grant licenses.
What is the consideration for patent assignment?
The consideration can take various forms: (1) Lump sum payment — one-time payment for complete transfer, (2) Royalty — ongoing payment as a percentage of sales (e.g., 2-5% of net sales), (3) Milestone payments — payments on achieving specific milestones (commercialization, revenue targets), (4) Equity — shares in the assignee company (common in startup transactions), (5) Cross-license — exchange of patent rights between parties, (6) Combination of the above. The assignment deed must clearly specify the consideration structure, payment timelines, and consequences of non-payment.
Over 90% of compliance penalties in India arise from missed due dates — timely handling of Specimen Deed of Assignment can save businesses thousands of rupees each year.
Specimen Deed of Assignment: a key compliance topic in Indian tax and corporate law that businesses and individuals must understand to remain compliant.