CHAPTER 23
Transferring IP Rights # 3 A DDENDUM
TO
U NRECORDED A SSIGNMENT
OR
L ICENSE
require the recording of agreements to assign, license or otherwise transfer some or all rights in IP to another entity or individual. Failure to record can mean that the agreement will be deemed void by the legal forums in the particular country, and therefore unenforceable between the parties to the agreement. In addition, or sometimes alternatively, the agreement can be considered invalid as against third parties (someone who is not a party to the agreement). In either event, if commercial transactions have continued in relation to the IP rights transferred, the IP owner can end up losing the IP rights, or at least be unable to enforce exclusivity in them, because the IP owner will be deemed to have acquiesced in the unauthorized (i.e., infringing) use of the IP. If business operations have continued AND you have an agreement that has not been recorded against your IP registrations, you need to determine whether you can immediately record it. You may be able to record the agreement with payment of a penalty fee, or you may have to execute a new agreement (assuming the other party will consent) and have it recorded. If you can still record the agreement, you may want to execute the Addendum to IP Transfer Agreement shown here in order to “close the gap” between the effective date of the transfer and the recordal date. This Addendum makes no modification of the initial IP Transfer Agreement, but simply requires full disclosure and transfer of IP rights that may be implied by law in the absence of recordal of the IP Transfer Agreement. If the IP Transfer Agreement is an assignment, in which all property rights are transferred without reservation, the disclosures and transfers in this Addendum will be made FROM the former IP owner (assignor) TO the new IP owner (assignee). If the IP Transfer Agreement is a license or other agreement merely giving some property rights (e.g., the right to use the IP) but reserving ownership rights, the disclosures and transfers are made FROM the party who is licensed (authorized user) TO the IP owner (licensor). This form may be adapted for the particular situation of the two parties. You should also consider an immediate survey of the markets to determine whether any third-party infringement is occurring and whether you need to take action. The following form will not resolve a problem with a third-party infringer. It is unlikely that a third-party infringer will quickly bow to your claimed IP rights if you have failed to record the agreement as required by law. You may need to consider other means of enforcement.
THE LAWS OF MANY COUNTRIES
172
