Section 109 of the Patents Act, 1970
Right of exclusive licensee to take proceedings against infringement
Gives an exclusive licensee the right to sue for infringement in its own name, with the patentee joined in the suit.
Official legal text
The verbatim statutory text of this provision is reproduced from the official source and checked by our legal reviewer before it is published here. Until that check is complete for this page, read the exact wording directly from the official source linked below — it is the only version that governs.
Treat this page as a guide. The provision as officially published, along with the Gazette notifications that apply to it, remains the governing text and overrides any simplification here.
What this section says, in plain language
A patent is often exploited by someone other than its owner. A university may license a company, an inventor may license a manufacturer, or a foreign parent may license its Indian subsidiary. If only the registered patentee could sue, an exclusive licensee losing sales to a copyist would be helpless whenever the patentee was slow, distant or uninterested. Section 109 removes that problem by giving the exclusive licensee the same right to take infringement proceedings as the patentee.
The right has a natural time limit. It covers infringement committed after the date of the licence. An exclusive licensee cannot sue over acts that happened before it acquired its rights, because it suffered no loss then. The date of the licence, and the scope of the territory and field it covers, therefore need to be clear on the face of the document.
The patentee cannot be left out of the case. If the patentee does not join as a plaintiff, it must be added as a defendant so that the court has everyone with an interest before it and the defendant is not exposed to a second suit on the same patent. A patentee added as a defendant in this way is not liable for any costs unless it enters an appearance and takes part in the proceedings. So a patentee who is content to let the licensee run the case can stay out of the fight without financial risk.
Damages are assessed with the licensee's position in mind. In awarding damages or granting other relief in such a suit, the court takes into account the loss suffered or likely to be suffered by the exclusive licensee as such, or the profits earned by the infringer, as the case requires. That prevents the odd result of a licensee proving infringement of the patentee's monopoly but recovering on the patentee's much smaller loss.
Two practical points follow. First, the term 'exclusive licence' has a specific meaning under the Act: it must confer on the licensee, or on the licensee and persons authorised by it, rights in respect of the patented invention to the exclusion of all others including the patentee. A licence described as exclusive but which lets the patentee keep working the invention may not qualify. Second, register the licence with the Controller under Section 69. An unregistered interest can create real difficulty in proving title when a suit is filed and an interim injunction is being pressed.
Why this section matters
Exclusive licensees of Indian patents, including Indian licensees of foreign patentees, universities and research institutions licensing out, and defendants sued by a licensee.
When infringement occurs during the term of the exclusive licence.
A standalone right in the exclusive licensee to sue, and a requirement that the patentee be joined as a plaintiff or added as a defendant.
A licensee whose document does not truly grant exclusivity, or who did not register the licence, may face a preliminary objection to its standing and lose valuable time at the interim stage.
How it works in practice
A university licensee sues on its own
IIT Kanpur holds an Indian patent on a soil moisture sensor developed in its agricultural engineering department. It grants Bharatvarsha Agritech Pvt Ltd an exclusive licence for India covering manufacture and sale, expressly to the exclusion of the institute itself, and the licence is registered with the Controller. Eighteen months later Bharatvarsha discovers that Sahyadri Sensors Pvt Ltd is selling a copy through agricultural dealers in Maharashtra. The institute has no commercial interest in litigating and does not want the cost. Under Section 109, Bharatvarsha files the infringement suit in its own name for the infringement occurring after the licence date, and adds IIT Kanpur as a defendant since it is not joining as a plaintiff. The institute does not enter an appearance and so bears no costs. When damages are assessed, the court looks at the loss suffered by Bharatvarsha as exclusive licensee, including the dealer orders it lost and the price erosion it had to accept, rather than at any notional loss to the institute, which earns only a royalty.
Simplified illustration only. Actual legal outcomes depend on the facts.
Key points to remember
- An exclusive licensee can institute an infringement suit in its own name.
- The right covers infringement committed after the date of the licence.
- The patentee must be joined as a plaintiff or added as a defendant.
- A patentee added as a defendant bears no costs unless it appears and takes part.
- Damages take account of the loss suffered by the exclusive licensee, or the infringer's profits.
- The licence must genuinely exclude all others, including the patentee, to qualify.
- Registering the licence under Section 69 makes proof of title far easier.
Common mistakes and misunderstandings
- Assuming any licence gives a right to sue. Non-exclusive licensees do not have this right.
- Calling a licence exclusive while allowing the patentee to continue working the invention.
- Suing over infringement that occurred before the licence date.
- Leaving the patentee out of the suit altogether instead of joining or adding it.
- Skipping registration under Section 69 and then struggling to prove standing at the interim hearing.
Connected provisions
- ActSection 108Reliefs in suits for infringement
- ActSection 110Right of licensee under section 84 to take proceedings against infringement
- ActSection 69Registration of assignments, transmissions, etc.
- ActSection 68Assignments, etc., not to be valid unless in writing and duly executed
- ActSection 104Jurisdiction
- ActSection 2Definitions and interpretation
The rules connected to a section are listed on their own because they are subordinate legislation. They cannot go beyond the Act, but they can be changed by notification without a new statute, so seeing them separately makes it easier to check whether the current procedure is still what you remember.
Forms, deadlines and fees
This site does not carry a fee table. The First Schedule to the Patents Rules is the source, the rates vary with the applicant's category and with the mode of filing, and a figure quoted second-hand goes out of date quietly. How Indian patent fees work.
Related judgments
You will not find case summaries under this heading today. Each one must pass a legal review before it appears, and that work has not been completed for this provision. If you are researching decided cases, use a law report or a court database in the meantime. How case notes are prepared.
Questions people ask about Section 109
Can a licensee sue for patent infringement in India?
An exclusive licensee can. Section 109 gives an exclusive licensee the same right as the patentee to institute a suit for infringement committed after the date of the licence. A non-exclusive licensee does not have this right and must rely on the patentee to act. The exclusive licensee must join the patentee as a plaintiff, or add the patentee as a defendant if it will not join. Register your licence under Section 69 so that your interest is on the public record.
What makes a licence exclusive under the Patents Act?
The Act treats a licence as exclusive when it confers on the licensee, or on the licensee and persons authorised by the licensee, rights in respect of the patented invention to the exclusion of all other persons, including the patentee. So a licence that permits the patentee to keep manufacturing, or that reserves a parallel right to another distributor, may not be exclusive in the statutory sense even if the parties call it that. Have the wording checked before you rely on it to sue.
Does the patentee have to pay costs if I sue as licensee?
Not if the patentee simply stays out of it. Where the patentee is added as a defendant because it has not joined as a plaintiff, it is not liable for any costs unless it enters an appearance and takes part in the proceedings. This is a sensible arrangement: it lets a patentee who has no commercial interest in the dispute remain formally before the court without financial exposure, while ensuring that all interested parties are bound by the outcome.
How are damages calculated when an exclusive licensee sues?
The court takes into account the loss suffered or likely to be suffered by the exclusive licensee as such, or alternatively the profits earned by the infringer. That means your own lost sales, price erosion and lost contracts are the measure, not the patentee's royalty income. Keep clear records of your order book, dealer cancellations, discounting forced by the infringer and your margin per unit. Those documents do more to fix the figure than any general assertion of market damage.
Are you an exclusive licensee who needs to enforce?
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