CHAPTER 20
Transferring IP Rights: Assignment Contract makes an assignment. This type of transfer is sometimes referred to as an “all rights transfer.” Once the assignment becomes effective, the party no longer owns any rights whatsoever in the IP. This form is a short form for the assignment of IP rights only. If an assignment of IP rights is being made as part of the sale of a business, the parties will usually make a single, long, and complex agreement that incorporates the IP assignment within it. In any event, the assignment of IP rights must usually be made in writing to be recognized and enforceable under the laws of most countries. In addition, most countries require that the assignment be recorded against the registration of the IP rights. For a form that may be used in recording IP rights, see Chapter 22.
A PARTY WHO TRANSFERS ALL RIGHTS IN IP
Assignment Contract THIS ASSIGNMENT IS MADE ON [ date ] BETWEEN [ name and address ] (“THE ASSIGNOR”) AND [ name and address ] (“THE ASSIGNEE”). THE PARTIES ACKNOWLEDGE THE FOLLOWING: A. THE ASSIGNOR HOLDS ALL RIGHTS, TITLE, AND INTEREST IN THE FOLLOWING, WHICH SHALL BE REFERRED TO AS “THE INTELLECTUAL PROPERTY”: [ list identifying information, SUCH AS THE NAME OR TITLE AND REGISTRATION NUMBERS OF THE IP]. B. THE ASSIGNOR HAS AGREED TO SELL TO THE ASSIGNEE FOR GOOD AND VALUABLE CONSIDERATION THE INTELLECTUAL PROPERTY ON THE TERMS AND CONDITIONS STATED IN THIS ASSIGNMENT. NOW THIS ASSIGNMENT SHALL BE AS FOLLOWS: 1 . T R A N S F E R IN CONSIDERATION OF THE SUM OF $[ amount ], NOW PAID BY THE ASSIGNEE TO THE ASSIGNOR (THE RECEIPT OF WHICH THE ASSIGNOR ACKNOWLEDGES), THE ASSIGNOR ASSIGNS TO THE ASSIGNEE ALL RIGHTS, TITLE, AND INTEREST IN THE INTELLECTUAL PROPERTY THROUGHOUT THE WORLD TO HOLD THE SAME UNTO THE ASSIGNEE ABSOLUTELY FOR THE FULL PERIOD OF PROTECTION FOR THE INTELLECTUAL RIGHTS AS GRANTED BY LAW AND FOR ALL RELEVANT RENEWALS AND EXTENSIONS. THE RIGHTS, TITLE, AND INTEREST TRANSFERRED SHALL INCLUDE WITHOUT LIMIT ALL OF THE FOLLOWING:
a. All benefits, privileges, and advantages of or arising out of or to be derived from the Intellectual Property. b. All property, rights, title, interests, claims, and demands of the Assignor in and to the Intellectual Property. c. All rights to sue third parties for infringement of the Intellectual Property and for all common law remedies with respect to the Intellectual Property.
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