IP Intelligence › Real Scenarios › The licence with no enforcement clause
Real-life scenario · fictionalised
The licence with no enforcement clause
A university licenses a granted patent exclusively to a manufacturer for India. The agreement covers royalties, field of use, term and reporting. Two years in, a third party starts selling an infringing product. The licensee asks the university to sue. The university, which receives a modest royalty and has no litigation budget, declines.
What can the licensee do?
The gap in the agreement
The licence says nothing about who may enforce, who pays, who controls settlement, or what happens if the patentee declines to act. Without that, the licensee's position depends on general law and on the patentee's cooperation - and the patentee has no commercial incentive to spend.
Meanwhile the infringer erodes exactly the exclusivity the licensee paid for, and the royalty the university receives falls, which is a slow and unsatisfactory feedback loop.
The clauses that were missing
A step-in right allowing the licensee to sue in its own name or in the patentee's name, at its own cost. An obligation on the patentee to join as a necessary party. Allocation of recoveries. Control of settlement, so the licensee cannot be settled out of its own exclusivity. And a royalty abatement while an infringer is in the market.
None of these are exotic. They are simply drafted last, when the commercial terms are agreed and everyone wants to sign.
What should have happened
- Drafted the enforcement clause before the royalty clause.
- Agreed who pays, who controls and who recovers, in writing.
- Included a royalty abatement or termination right if exclusivity cannot be maintained.
- Recorded the licence, so the licensee's position is on the register.
An exclusive licence with no enforcement mechanism is a promise that nobody has to keep.
This scenario is a composite teaching example written by Ragulika IP. It does not describe any real client, application or matter, and any resemblance to a specific case is coincidental.
Sources & further reading
- The Patents Act, 1970 (consolidated to 1 August 2024) — Official IP India text
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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.