Chapter 20:TRANSFERRING IP RIGHTS: ASSIGNMENT CONTRACT

CHAPTER 20

Transferring IP Rights: Assignment Contract

A PARTY WHO TRANSFERS ALL RIGHTS IN IP 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.

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.TRANSFER 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.

d.All rights to recover damages in respect of all acts of infringement, passing off, unfair competition, and other similar acts that have occurred at any time after or prior to the date of this Assignment.

2.WARRANTY THE ASSIGNOR WARRANTS THE FOLLOWING:

a.The Assignor is the owner of the Intellectual Property and of all rights in such

Property, and the Assignor has good right to assign the Intellectual Property unto the

Assignee. b. The Intellectual Property is an original creation and does not infringe in any way whatsoever on the rights of any third party. c.The Assignor is entitled to enter into this Assignment and to transfer the Intellectual

Property to the Assignee free of any encumbrances. d.All Intellectual Property rights transferred are good, valid, and existing. e.The Intellectual Property rights, title, and interest can be exercised, held, and enjoyed by the Assignee without any interruption or claim from the Assignor or any person or persons lawfully or equitably claiming under or in trust for the Assignor.

3. FURTHER ACTIONS BY ASSIGNOR AT THE REQUEST AND EXPENSE OF THE ASSIGNEE, THE ASSIGNOR WILL EXECUTE, PERFECT OR OTHERWISE ACT TO ENSURE THAT ALL RIGHTS, TITLE, AND INTEREST ARE ASSIGNED TO THE ASSIGNEE, THAT ALL ADDITIONAL DOCUMENTS AND INSTRUMENTS ARE EXECUTED TO CARRY OUT THIS ASSIGNMENT, AND IN THE EVENT OF INFRINGEMENT OR PASSING OFF, THAT ALL REQUIREMENTS ARE SATISFIED TO ENABLE THE ASSIGNEE TO COMMENCE, CARRY ON, AND PROSECUTE NECESSARY AND PROPER ACTIONS AND PROCEEDINGS AS SHALL OR MAY BE REASONABLY REQUIRED.

4. INDEMNIFICATION THE ASSIGNOR COVENANTS WITH THE ASSIGNEE THAT THE ASSIGNOR WILL KEEP THE ASSIGNEE INDEMNIFIED FROM AND AGAINST ALL ACTIONS, CLAIMS, PROCEEDINGS, COSTS, AND DAMAGES INCURRED OR AWARDED AND PAID ON ACCOUNT OF ANY BREACH OR NONPERFORMANCE OF THE ASSIGNOR WITH REGARD TO THE WARRANTIES MADE BY THE ASSIGNOR IN THIS ASSIGNMENT, OR WITH REGARD TO ANY CLAIM BY A THIRD PARTY THAT WOULD CONSTITUTE SUCH A BREACH IF PROVEN.

5. ASSIGNMENT THE ASSIGNEE SHALL HAVE THE RIGHT TO ASSIGN THE BENEFIT OF THIS ASSIGNMENT TO ANY THIRD PARTY.

6. ENTIRE TRANSACTION THE PARTIES CERTIFY THAT THIS TRANSACTION IS NOT PART OF A LARGER TRANSACTION OR A SERIES OF TRANSACTIONS FOR WHICH THE AMOUNT OR VALUE, OR THE AGGREGATE AMOUNT OR VALUE, OF THE CONSIDERATION EXCEEDS $[amount]. ACCORDINGLY, THE PARTIES HAVE EXECUTED THIS AGREEMENT BELOW. ASSIGNOR: [Company Name] BY [signature] [typed name] [title]

ASSIGNEE: [Company Name] BY [signature] [typed name] [title]