IP Intelligence › For You › Moving technology out of the organisation
For enterprises
Moving technology out of the organisation
We want to license technology we are not going to commercialise. Where do we start?
With an honest assessment of what the patents actually cover, then a package that includes the know-how a licensee will need to make it work.
What a licensee is really buying
Rarely the patent alone. Usually the patent plus the know-how: the process parameters, the failure modes, the supplier list, the calibration procedure - everything the specification did not have to disclose.
That matters for pricing and for structure. A licence with a technical assistance package is worth considerably more than a bare patent licence, and it is also more defensible, because the licensee cannot simply design around the claims and walk away.
Getting the agreement right
Field of use and territory defined by application. Enforcement rights spelled out: who may sue, who pays, who controls settlement. Improvements: who owns what the licensee develops, and whether there is a licence back. Validity: what happens to royalties if the patent is revoked or narrowed. And recordal.
Remember that licensees carry statement of working obligations under section 146 too - since 2024, once every three financial years. Put it in the agreement and remind them at each block end.
What to actually do
- Package know-how with the patent - that is what makes it valuable.
- Define field and territory by application, not by industry label.
- Settle enforcement rights before the royalty rate.
- Flag the licensee working statement obligation in the agreement.
Sources & further reading
- The Patents Act, 1970 (consolidated to 1 August 2024) — Official IP India text
- The Patents Rules, 2003, as amended (e-version updated to 15 March 2024) — Official IP India text
- The Patents (Amendment) Rules, 2024 - G.S.R. 211(E), 15 March 2024 — Gazette text via WIPO Lex
Related
Licensing your patent without giving it away
Define the scope narrowly, decide who can enforce, and say what happens if the patent is narrowed or revoked. The rate is the easy part.
The licence that could not be enforced
Most licence disputes are not about royalty rates. They are about who may do what, where, and what happens when something changes - and those are the clauses that ge…
Statement of working
A statement filed on Form 27 telling the Patent Office whether a granted patent has been worked in India, and if not, why not.
Not sure whether this applies to your invention?
The honest answer usually needs someone to look at your actual disclosure, your timeline and the prior art. That is a conversation, not an article.
Educational guidance, not legal advice. This material is published by Ragulika IP for general education and information. It is not legal advice, it does not create a professional-client relationship, and it is not a substitute for advice on your own facts. Patentability, infringement, prosecution strategy and every other IP outcome turn on the specific facts and on the law and Patent Office practice as they stand at the time you act. Please take professional advice before making a decision, and read the underlying provision or judgment before relying on any point stated here.
Last reviewed by Ragulika IP on 2026-08-23. Indian patent law and Patent Office practice change; check the position before you rely on it.