Legal Question in Intellectual Property in India

Re: Assignor's Lien on the subject matter

If the IPR has been assigned and registered as

per provisions of Indian trademarks / patent laws

etc. then the assignor has following legal rights

against assignee :-

1] To claim lien over yet-to-be-delivered

deliverables for non-payment of contract price by

the Assignee, there must be specific clause in the

Deed of Assignment - vide Section 68 of Patents

Act, 1970 which clearly states that all the terms

and conditions governing rights and obligations of

both the parties are embodied in the Deed of

Assignment.

2] The Assignor can invoke provisions of Section

69 of Patents Act, 1970, the proviso of said

section cleary states that the Controller may

refuse to take any action, unless the rights of

the parties have been determined by a competent

court. In other words, Assignor can go for either

specific performance of contract or can revoke the

registration of Deed of Assignment by Controller who will

exercise powers only when the rights of parties have

been determined by a competent court.

3] Under equity, the assignor can have lien over

yet to be delivered deliverables until the

contract price is paid by the Assignee, for which

institution of civil suit before competent court

is must.

Relevant Case Law :

M/s. National Research Development Corporation

Versus M/s. Silcon Ceramics Ltd., AIR 1998 Del 52.