CHAPTER 22
Transferring IP Rights # 2 DEED
OF
ASSIGNMENT
OR
LICENSE
(assigning) or rights to use (licensing), the IP owner must fix the transfer in a written agreement. The laws of most countries require a written contract to achieve the transfer. In the absence of a written contract, the assignment or license may be considered invalid and therefore may be unenforceable in a particular country. After the parties sign the assignment or license agreement, the party who acquires new rights in the IP should seek to protect those rights in all countries covered by the agreement. In many countries, the entire agreement, or a short form called a deed that references the agreement, must be recorded in the relevant IP registry to be recognized by the courts and to be effective notice to third parties. The party acquiring the IP rights should review the local law or contact local counsel to determine the requirements. If recordal of a Deed is possible, most parties prefer to use it. The reason is simple: a recordal places a document on public record. The purpose of the recordal is merely to notify the Registry and third parties of the rights transferred and the new party who is authorized to own or use the IP. Therefore, the entire agreement need not be disclosed to accomplish this purpose. A short Deed will suffice. In fact, the acquiring party is well advised to obtain the requirements and necessary forms before executing the agreement itself for two reasons. First, both parties to the assignment or license often need to sign the documents for recording. This can easily be accomplished at the same time that the agreement is signed, but thereafter the party transferring the rights, particularly for an assignment, is often more difficult to locate to obtain a signature. Second, many countries have enacted a time limit for recording a transfer, after which penalties for late recording will have to be paid. This period can be rather short, even 30 days from the date of the agreement.
WHEN TRANSFERRING ALL IP RIGHTS
Deed of Assignment or License USE OF FORM
This form is provided only for purposes of illustration. It has been left largely in legalese because it is a deed, which is a statutory form that has not changed much from medieval times. The essential elements of the Deed do not vary much from country to country, but many countries prefer that you use a form that is preprinted and often in dual language—English and the official language of the country. Such forms are best obtained from local counsel. If you use the following form, be certain to choose throughout the terminology that refers to an assignment or a license, as appropriate to your situation.
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