Intellectual property

IP Licensing & Monetisation

An IP portfolio earns nothing until someone pays to use it. We structure the deals that make it pay, and the paperwork that makes them stick.

Turning IP into revenue: licensing, assignments, technology transfer, franchising, royalty structures, valuation and IP-backed transactions.

IP is monetised in more ways than a licence: outright assignments, franchising and brand licensing, technology transfer and research collaborations, co-existence agreements, settlement licences that end a dispute, standard essential patent licensing on FRAND terms, IP holding structures and IP-backed finance. Each needs clear ownership, the right registrations and documents that Indian law will recognise. For a full walk-through, see Making Money from IP in India.

Formalities that decide whether a deal holds

Patents. Assignments and licences must be in writing and registered with the Patent Office. An unregistered document is not admitted as evidence of title unless the court directs otherwise (sections 68 and 69).
Trade marks. Assignments should be registered with the Registrar (section 45). A licensee’s use counts as the owner’s use only if it is a “permitted use”, so quality control belongs in the licence.
Copyright. Assignments and licences must be in writing, and the statutory defaults (five years, India only) apply if the document is silent.
Stamp duty. IP assignments and some licences attract stamp duty under State laws. An unstamped document cannot be relied on in evidence until the duty and penalty are paid.

Getting paid

Royalty clauses decide whether a licence earns what it should: the base the royalty is calculated on, minimum payments, audit rights, reporting, currency and the timing of payment. Vague royalty terms are the most common reason licences are renegotiated or end in dispute.

Patents must be worked

Licensing income and local working are reported in Form 27. A patent that is not worked in India, or not available to the public at a reasonable price, can face a compulsory licence application three years after grant (section 84). A licensing programme is often the best answer to both.

How we help

IP audits and valuation support
Licence, assignment and technology transfer agreements
Brand licensing and franchising
University and research collaborations
Royalty and payment terms
Recordals with the Patent Office and Registry
SEP and FRAND licensing
IP diligence for investors and lenders

Key laws

Patents Act, 1970 (sections 68, 69, 84)
Trade Marks Act, 1999 (sections 45, 48, 49)
Copyright Act, 1957 (sections 18, 19, 30)
Foreign Exchange Management Act, 1999
Competition Act, 2002 (section 3(5))

Frequently asked questions

Does an IP licence have to be registered in India?

For patents, yes: licences and assignments must be in writing and registered with the Patent Office, or they are not admitted as evidence of title. For trade marks, registration of a licence is not compulsory, but the licensee’s use must be a “permitted use” under section 48 to count as the owner’s use, and recording it is advisable. Copyright licences must be in writing but need not be registered.

What makes an IP asset ready to monetise?

Clear ownership (written assignments from every inventor, author and contractor), registrations covering the products and territories that matter, evidence of use or working, and freedom to operate. Most licensing deals that fail, fail on ownership. An IP audit before going to market is usually the cheapest step in the whole process.