A frequent worry among patent applicants or co-owners is: “What if one co-owner wants to license or assign but others object?” In India, the law provides a mechanism for seeking the Controller’s direction to resolve such conflict. That mechanism is Form 11, filed under Section 51 of the Patents Act, 1970, and governed by Rule 76 of the Patents Rules, 2003.
This article unpacks the legal framework, procedural requirements, practical tips, and strategic considerations around Form 11, so inventors, assignees, and co-owners can deal with disputes efficiently and defensibly.
Legal Foundation: Section 51 and Controller’s Directions
What does Section 51 provide?
Section 51 of the Patents Act deals with situations where:
A co-owner of a patent intends to assign or license his share, or
There is a dispute among proprietors or applicants about how the application or patent should proceed.
Under Section 51(1) and (2), such a party can apply to the Controller asking for directions as to how the patent application or patent should be handled. The Controller has power to issue orders after hearing all concerned. Form 11 is the statutory form for such application.
Key points in Section 51:
The Controller must give an opportunity to all registered proprietors/applicants to be heard.
The direction may allow proceeding in the name of one party, regulate licensing or assignment, or otherwise resolve steps in prosecution.
For co-owners, where one wants to license or assign without unanimous consent, he may seek direction under this section.
Where joint applicants differ, the Controller may issue directions “as he thinks fit for enabling the application to proceed in the name of one or more of the parties.”
Thus, Form 11 acts as a tool for internal conflict resolution under the statutory scheme.
When to Use Form 11: Scenarios & Triggers
Some typical scenarios:
Two or more co-owners disagree over licensing or exploitation of the patent. One co-owner wishes to grant a licence, but the other objects. The acting co-owner may file Form 11 requesting direction.
A co-owner wants to assign his share, but the agreement or approach is debated.
During patent application stage, joint applicants differ on how prosecution or amendment should move forward. One may ask the Controller to direct which party should continue or how to handle objections.
Disputes about who should be named or how title should be recorded may also be addressed via Form 11.
In effect, whenever the proprietors or applicants disagree and the statute gives no direct tie-breaker, Form 11 offers a route to ask the Controller to intervene.
How to File Form 11: Requirements & Procedure
Form and Fee
The official Form 11 titled “Application for Direction of the Controller” must be used.
The IP India website lists it among the standard patent forms.
The prescribed fee (for non-small entities) is typically ₹ 6,000 (as per commentary on co-owner disputes), but always check the latest schedule.
Contents of Form 11
While the form itself provides the layout, the application must clearly state:
Patent/application number and date
Names of all registered proprietors or applicants
Nature of disagreement (licensing, assignment, prosecution, etc.)
Specific directions sought from the Controller
Supporting documents: assignment agreements, consent letters, co-ownership agreements, previous correspondence, etc.
Any relevant power of attorney or authorization
Service & Hearing
Once filed, the Controller notifies all concerned parties (registered applicants/proprietors) and gives them opportunity to be heard.
The Controller may call for submissions, set a hearing date, and permit evidence or arguments.
After hearing, the Controller issues a reasoned order directing how the application or patent should proceed, or regulating licensing/assignment.
Orders & Finality
The direction issued is binding unless challenged by a court or appellate remedy (if available).
The Controller may grant relief such as:
Permitting the application to proceed in the name of one party
Stipulating terms under which a licence or assignment may be made
Ordering procedural steps or amendments
Resolving internal conflicts in prosecution
Judicial Interpretations & Practical Lessons
While direct Supreme Court rulings on Form 11 are limited, legal commentary and decisions shed light on key principles:
The Controller’s discretion must be exercised judicially, respecting fair hearing and balancing interests of all co-owners.
The applicant must make out a prima facie case for the direction sought — vague conflicts without basis may be rejected.
Practical tips:
Document everything: co-ownership agreement, communication, dissenting views.
Be specific in directions requested; avoid broad or ambiguous prayers.
If the co-owners have an agreement, submit it, and seek direction consistent with that contract.
Be wary of delay: if proceedings remain stalled, the Controller may decline intervention or favour the status quo.
Consider alternative resolution (mediation, negotiation) before Form 11 to reduce cost and time.
Integrated FAQs
Q: Can any co-owner force a licence via Form 11?
A: Not unconditionally. The Controller must examine the contract, consent, equities, and objections. The applicant must show legitimate cause, and opponents must be heard before direction is issued.Q: Is there any appeal against the Controller’s direction under Form 11?
A: There is no appeal directly prescribed in the Patents Act against Controller’s directions; one may challenge via writ remedy or in context of broader patent proceedings, depending on the circumstances.Q: Does Form 11 apply after grant of patent?
A: Yes. Section 51 is not limited to the application stage; it may also govern disputes involving the patent rights among co-owners (e.g. licensing) post grant. Form 11 remains the tool.Strategic Considerations & Pitfalls
Pre-emptive co-owner agreements: drafting clear agreements among co-owners (on licensing rights, revenue share, decision processes) can avoid the need for Form 11 later.
Timing is key: sooner is better — prolonged delays or neglect may weaken your position.
Prepare to defend: the opposing co-owner will get to present views. Do not assume default relief.
Record discipline: avoid amendments or side-deals without documenting them; stray acts may be used as evidence.
Cost vs benefit: Form 11 may involve procedural cost, delay, and effort — if the scale of licensing is small, mediation may suffice.
Conclusion
Form 11 under the Patents Act, 1970 is a vital statutory tool enabling the Controller to resolve disagreements among patentees or applicants over assignments, licensing or the conduct of prosecution. Thoughtful preparation, clear directions, and strong supporting documentation are critical to success. For many co-owners, a well-drafted co-ownership agreement is the first line of defense — but if disputes arise, Form 11 offers a legally sanctioned path to seek resolution under Section 51.
