The short answer
Under Section 31 of the Bangladesh Patent Act, 2023, any change of patent ownership and any licence agreement must be in writing and recorded with the Director General at the DPDT. Until it is recorded, it does not take effect against a third party. The Director General keeps the contents confidential. The Act also lists restrictive terms that are unlawful, such as tying, grant-backs and royalties after expiry, and the Director General can refuse to record an agreement that contains them. A refusal can be appealed within 2 months.
Writing and recording
Put it in writing
- A change in ownership or any change in the application details must be in writing.
Apply to record
- A person with an interest applies to the Director General, who records the change and publishes it on the website or by the usual method. Licence agreements and related applications are also filed with the Director General.
Confidential contents
- The Director General records the application but keeps the contents secret and does not publish comments on them.
Effect on third parties
- A change of ownership, or a licence agreement, is not effective against a third party before it is recorded.
Restrictive terms the Act does not allow
Section 31(4) makes it unlawful to include conditions in a sale, lease or licence of a patented product or process that:
- Require the buyer, lessee or licensee to take, or not take, goods other than the patented product from the seller or its nominee.
- Stop the licensee from using goods or processes that are not the patentee's, or limit how they are used.
Section 31(9) adds terms treated as unlawful unless the circumstances show otherwise:
- A grant-back of the licensee's improvements to the licensed invention, unless on the same terms as the licence.
- Extra payment, or an obligation, tied to the licensor's other intellectual assets or trade secrets.
- Blocking the licensee from challenging the validity of the licensed right.
- Royalties for use after the patent has expired, or for matter not protected by the patent.
- Forcing the licensee to buy materials or services from the licensor where not needed to use the invention.
- Limiting the development or use of any other technology.
Any restriction that does not arise from registering the licensed right and is not needed to protect it is treated as abusive or anti-competitive (Section 31(8)). These rules also apply to licences and to transfers of pending applications (Section 31(12)).
What you can include, and what happens if the Director General refuses
- Scope, geographic area and duration of use of the patent.
- Conditions needed to keep goods and services at an adequate quality.
- The licensee's duty not to harm the ownership or goodwill of the patented subject matter.
If the Director General finds a banned term in the agreement, they may refuse to record it. One or both parties can appeal within 2 months of the decision (Section 31(7)). If a patent is cancelled after an assignment or licence is made, the agreement ends at once and the parties settle what was paid (Section 31(11)).
A defendant sued for infringement can plead in defence that a contract with an unlawful term was in force when the act took place, unless the claimant was not a party and did not know of or consent to the term (Section 31(5)).
Patent licensing questions
Must a patent licence be recorded?
Yes. It must be filed with the Director General, and it does not bind third parties until recorded (Section 31(2), (3)).
Is the licence published?
The Director General keeps the contents secret (Section 31(3)).
Can a licence require the licensee to buy other goods from the licensor?
No. Tying terms are unlawful under Section 31(4).
Can I charge royalties after the patent expires?
No. That is treated as unlawful under Section 31(9).
What if recording is refused?
Appeal within 2 months of the decision (Section 31(7)).
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