Form 16 — Application to Register Title or an Interest in a Patent
Form 16 asks the Controller to enter an assignment, licence or other interest in a granted patent on the register.
What Form 16 is for
A granted patent is property, and property changes hands. It is sold, assigned within a group, licensed exclusively, mortgaged to a lender, or transmitted on the death or dissolution of its owner. Section 69 provides for those transactions to be registered, and Form 16 is the application that puts them on the register of patents. Rule 90 sets out how the application is made.
Registration is not what makes the transaction valid between the parties. Section 68 deals with that, and requires an assignment or other transaction to be in writing and to be duly executed in a document embodying all the terms and conditions. What registration does is make the change part of the public record, so that the register shows who owns the patent and what interests exist over it.
The practical consequences are significant. The person recorded as proprietor is the one the office deals with, and the register is what a purchaser, a lender or a licensee checks in due diligence. There are also evidentiary consequences: an unregistered document may not be admitted as evidence of title in proceedings, except where the court or the Controller directs otherwise. Because the forms are amended from time to time, download the current Form 16 from the Indian Patent Office before filing.
Who files it, and when
The person who acquired the title or interest usually applies, which means the assignee, the exclusive licensee, the mortgagee or the successor in business. The existing proprietor may also apply, and in many transactions the parties agree that one side will handle the registration. Where a patent has several proprietors, the position of all of them normally has to be dealt with. An authorised agent files on the applicant's behalf.
It is filed after the transaction has been executed and after the patent has been granted, since this route deals with granted patents. Changes affecting a pending application go through the change of applicant route instead. There is no advantage in delay. The register is only useful if it is current, and problems tend to surface at the worst time, during a financing round, a sale or the start of an infringement action. The prudent practice is to register as part of closing the transaction rather than as an afterthought.
How it is filed
- Execute the assignment, licence, mortgage or other instrument in writing, with all the terms and conditions in the document.
- Ensure the instrument identifies the patent by number and identifies the parties precisely.
- Attend to stamping and any other formality that affects whether the document can be produced as evidence.
- Complete the current Form 16, describing the nature of the interest being registered.
- File it with the original document or a certified copy, and pay the fee prescribed in the First Schedule.
- Answer any requirement the Controller raises about the document or the particulars.
- Check the register afterwards and update the address for service and the agent's authorisation if they have changed.
What the form asks for
- The patent number and the name of the proprietor currently on the register.
- The full particulars of the person acquiring the title or interest.
- The nature of the transaction, such as assignment, transmission, mortgage, licence or the creation of any other interest.
- The document that created the interest, or a certified copy of it, containing all the terms and conditions.
- The date of the transaction and the extent of the interest, for example whether an assignment is of the whole or of a share.
- An address for service in India for the new proprietor or interest holder.
Described in general terms. Form contents are prescribed in the Second Schedule and change — download the current version from the Patent Office rather than working from any summary, including this one.
Common mistakes with Form 16
- Relying on a short assignment letter that does not embody the terms and conditions, when the Act requires the document to do so.
- Registering an assignment of a pending application on this form. Before grant, the change of applicant route applies.
- Leaving registration until a dispute begins, when an unregistered document may not be admitted as evidence of title.
- Identifying the patent only by title and inventor, so that the office cannot match the document to a specific number.
- Forgetting co-proprietors. A share cannot usually be dealt with as though it were the whole patent.
What happens if it goes wrong
If the transaction is never registered, the register continues to show the old proprietor. Official communications, including renewal correspondence, go to that party, which is a common cause of missed renewals and ceased patents. In litigation, a claimant whose title is not on the register may face an argument about standing, and an unregistered document may not be admitted as evidence of title unless the court or the Controller directs otherwise. In commercial diligence, an unregistered chain of title reduces value or delays a deal until it is fixed.
A licence recorded during a Chennai funding round
This is a simplified illustration. Marutham Energy Pvt Ltd of Chennai owns a granted patent covering a solar inverter cooling arrangement. It grants an exclusive licence for the southern states to a manufacturer, Kavery Power Systems, under a written agreement that sets out the field, the territory, the royalty and the term. Neither party registers it, because the deal closes in a rush. Two years later Kavery raises growth funding, and the investor's diligence finds that the register shows Marutham as proprietor with no interests recorded, so there is nothing on the public record supporting Kavery's exclusive position. The round is held up while the parties file Form 16 with a certified copy of the licence, pay the fee prescribed in the First Schedule and answer a requirement about the extent of the interest. The entry is made, and the register finally reflects what the parties agreed two years earlier.
Simplified illustration only. Actual outcomes depend on the facts.
Questions about Form 16
Is registration necessary for an assignment to be valid?
Validity between the parties depends on Section 68, which requires the assignment or other transaction to be in writing and duly executed in a document embodying all the terms and conditions. Registration under Section 69 is about the public record. But registration matters a great deal in practice, because the register determines who the office deals with, and because an unregistered document may not be admitted as evidence of title in proceedings unless the court or the Controller directs otherwise. Treat registration as part of closing, not as optional housekeeping.
What kinds of interest can be registered?
The register records the proprietorship of a patent and interests created over it. That includes assignments of the whole patent or of a share in it, transmissions by operation of law such as on death or on the amalgamation of companies, mortgages and other security interests, licences, and the creation of any other interest in the patent. Each is described by its nature when the application is made, and the document creating it is produced. The register is then a single place where the ownership and encumbrance position can be checked.
What is the difference between Form 16 and the change of applicant route?
The dividing line is grant. Before a patent is granted, ownership changes are dealt with as a change in the applicant for the pending application, so that the patent is granted in the right name. After grant, ownership changes and other interests are registered against the patent itself. Filing on the wrong route simply means the request has to be redirected, which wastes time. If a transaction spans the grant date, check the position of each patent and application in the family separately.
Do I need to file the original assignment document?
The application is supported by the document that created the title or interest, or a certified copy of it, and the Controller may raise requirements about it. The document should identify the patent by number, name the parties precisely and contain the terms and conditions of the transaction. Attention to execution formalities and stamping matters, because those affect whether the document can be produced as evidence later. The current version of the form and Rule 90 set out what has to accompany the application.
Recording a patent assignment or licence in India?
MYCrave Consultancy & Services helps parties register title and interests so the patent register matches the deal.