# Patent due diligence before you license a technology: a checklist for Indian companies

URL: https://zernyxhub.com/blog/patent-due-diligence
Author: Sahil Sheikh, Regd. Patent & Trademark Agent, cRTTP
Published: 2026-10-18
Category: Licensing

> A patent due diligence checklist for Indian companies licensing a technology: status, ownership, claims, renewals and the IP India records to check.

**Short answer:** Patent due diligence before licensing means confirming that the patent is alive, that the licensor actually owns it and can grant the licence, that the claims cover what you want to use, and that no earlier licence, dispute or unpaid renewal undermines it. In India you start with the IP India records for status, the applicant and renewals, then read the claims, check co-ownership and registered interests, and ask the licensor for the chain of title from the inventors.

You have found a university or lab technology that fits your product. The professor is keen, the TTO has sent a draft licence and your team wants to start. This is the moment to slow down for two weeks and check the patent itself. Many licensing problems are visible in public records, or in a few documents the licensor already holds, before the deal is signed.

This checklist is for business development teams, R&D heads and MSME owners licensing in a patented technology. It is the detailed version of step 5 in our guide on [how to license a technology from an Indian university or lab](https://zernyxhub.com/academy#license-tech). It is not a substitute for advice from a patent agent or lawyer on your specific deal, but it tells you what to ask for and what to look at.

## What patent due diligence must answer

Every check below serves one of four questions:

1. **Is the right alive?** Granted, pending or dead, and for how long.
2. **Does the licensor own it and can it grant this licence?** Including co-owners and earlier deals.
3. **Does it cover what you will actually use?** The claims, not the title or abstract.
4. **Is anything waiting to hurt it?** Oppositions, unpaid fees, missing filings, other patents you also need.

## Check 1: Status on IP India

Start with the public record. Search the application or patent number on the IP India website (InPASS, the Indian Patent Advanced Search System, and the application status pages).

Note down:

- **Is it granted or still an application?** An application gives you something to license, but the claims can still narrow during examination. Price and draft the licence with that in mind.
- **Filing date and priority date.** A patent in India lasts 20 years from the filing date, subject to renewal fees. Work out how many years of protection remain.
- **Stage of examination**, if pending. Has a request for examination been filed? Is there a First Examination Report, and has it been answered? Our guide on [responding to an FER](https://zernyxhub.com/academy#respond-fer) explains what those stages mean.
- **The named applicant or patentee.** This must match the party signing your licence. If it does not, ask why before going further.

## Check 2: Renewals and lapse

A granted Indian patent needs a renewal fee every year from the third year onward. If a renewal fee is not paid within the time allowed, including any extension, the patent ceases to have effect. The owner can apply to restore it under Section 60 of the Patents Act, but only within eighteen months from the date it ceased, and restoration is not automatic.

So check the renewal record. A lapsed patent, or one that is close to lapsing, changes both the value of the deal and who should pay future renewals. Put renewal responsibility in the licence in writing.

## Check 3: Ownership and chain of title

This is where university deals most often go wrong.

- **Inventors to institution.** The patent is usually filed in the institution's name. Ask for the document by which each inventor assigned or is bound to assign rights, normally through the institution's IP policy, an employment contract or a specific assignment. Students, visiting researchers and industry collaborators may not be covered by the same policy.
- **Co-owners.** If two or more parties are registered as owners, Section 50(3) of the Patents Act says one of them cannot grant a licence without the consent of the others, subject to any agreement between them. Joint filings between an institute and a company, or between two institutes, are common. Get every co-owner's written consent or signature.
- **Funding conditions.** Research funded by a government department, a foundation or an industry sponsor may carry conditions on licensing, such as reporting duties or rights reserved for the funder. Ask for the relevant clauses of the funding agreement.

**The patent due diligence checklist, in order**
1. Status on IP India: Granted or pending, dates, applicant, examination stage
2. Renewals and lapse: Fees paid each year from the third year; restoration window
3. Ownership and chain of title: Inventor assignments, co-owners, funding conditions
4. Claims and coverage: Do the claims cover your product or process?
5. Encumbrances and disputes: Earlier licences, registered interests, oppositions
6. Working and other patents: Form 27 history, freedom to operate

## Check 4: Read the claims, not the abstract

The claims define what the patent protects. The title, abstract and the professor's slides do not.

- Map your intended product or process against each independent claim. Does every element of at least one claim appear in what you will make or use? If not, the patent may not stop a competitor doing the same thing.
- Check what the claims leave out. A claim limited to one material, temperature range or method may be easy for a competitor to design around.
- If the application is pending, read the latest amended claims and the examiner's objections. Claims often narrow before grant.
- Look for related applications in the same family, in India and abroad. You may need all of them, not just one.

## Check 5: Earlier licences, registered interests and disputes

- **Registered interests.** Under Section 69 of the Patents Act, a person who acquires a patent or an interest in it, including a licensee, must apply to register that title or interest with the Controller (Form 16). Ask the Patent Office records or the licensor whether any licence, assignment or mortgage is already recorded.
- **Unrecorded licences.** Ask the licensor in writing to list every licence, option, material transfer or research agreement touching the technology. An earlier exclusive field or territory can make your licence worth much less. Our article on [exclusive or non-exclusive licences](https://zernyxhub.com/blog/exclusive-licence) explains why this matters.
- **Oppositions and revocation.** Any interested person can file a post-grant opposition within one year of the publication of the grant, and a revocation petition can be filed later. Check whether any has been filed.
- **Infringement disputes.** Ask whether the licensor has sent or received any infringement notice involving the patent.

## Check 6: Working statements and freedom to operate

- **Form 27.** Patentees and licensees must file a statement of working of the patent in India. Since the 2024 amendments it is filed once for every three financial years. Check whether past statements were filed, and agree in the licence who files future ones. Our [Form 27 guide](https://zernyxhub.com/blog/form-27-working-statement) covers the deadlines.
- **Freedom to operate.** A licence lets you use the licensor's patent. It does not protect you from someone else's patent. If your product would also use other patented features, commission a freedom to operate search before you invest in scale-up.

## Put the findings into the licence

Due diligence is only useful if it changes the contract. Typical outcomes:

- A **warranty** from the licensor on ownership, co-owner consent and no conflicting licences.
- A clear **renewal and prosecution clause**: who pays, who decides, and what happens if the owner wants to abandon.
- **Price adjustments** if claims are pending or narrow. See [how to put a price on a technology](https://zernyxhub.com/academy#value-tech).
- Section 68 of the Patents Act says a licence is not valid unless it is in writing, in a document setting out all its terms, and duly executed. Sign a proper written agreement, then register your interest with the Patent Office under Section 69.

**Signed without checks vs signed after due diligence**
Without checks:
- Co-owner never consented
- Earlier exclusive licence surfaces later
- Renewal unpaid, patent lapses
- Claims do not cover the product
After due diligence:
- All owners sign or consent in writing
- Earlier deals listed and warranted
- Renewal duty written into the licence
- Claims mapped to your product

## How long it takes and what it costs

For one Indian patent with a cooperative licensor, a careful review usually takes one to three weeks. Most of the time goes into waiting for documents from the institution. Professional fees vary widely with the number of patents, the countries involved and whether you need a formal freedom to operate opinion, so ask for a fixed quote with a defined scope.

Searching early saves time here too. Zernyx Hub gives you business insight on each indexed technology, so you arrive at due diligence with a candidate that already fits, rather than discovering a mismatch after weeks of document requests.

## FAQ

### Can I license a patent application that is not yet granted?

Yes. Many university licences cover pending applications. Your licence should deal with the risk that claims narrow or the application is refused, for example through milestone-based payments or a price review on grant.

### Where do I check whether an Indian patent is still in force?

On the IP India website, using the application or patent number. Check the status, the renewal record and the registered owner. Ask the licensor to confirm in writing as well.

### Does a licence have to be registered in India?

Section 69 of the Patents Act requires a person acquiring an interest, including a licensee, to apply to register it. An unregistered document generally cannot be relied on as proof of title or interest before the Controller or a court, except in limited cases, so register it.

### What if the inventors are students?

Check whether the institution's IP policy or a signed agreement covers student inventors. If it does not, ask the institution to obtain written assignments before you sign.

---

Published by Zernyx Hub. More: https://zernyxhub.com/llms.txt