Chapter 22:TRANSFERRING IP RIGHTS: DEED OF ASSIGNMENT OR LICENSE

CHAPTER 22

Transferring IP Rights # 2

DEED OF ASSIGNMENT OR LICENSE

WHEN TRANSFERRING ALL IP RIGHTS (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.

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.

DEED OF [ASSIGNMENT/LICENSE] THIS [ASSIGNMENT/LICENSE] IS MADE ON [date]

BETWEEN:

[Name of first party], [an individual/a company organized and existing under the laws of (state/country)] WITH [domicile/registered office] AT [full street address]

(“ASSIGNOR”/“LICENSOR”); AND

[Name of second party], [an individual/a company organized and existing under the laws of (state/country)] WITH [domicile/registered office] AT [full street address]

(“ASSIGNEE”/“LICENSEE”) WHEREAS:

PURSUANT TO AN AGREEMENT [of even date with this Deed/dated (date)] BETWEEN THE [Assignor/Licensor] AND THE [Assignee/Licensee] (THE

“PRINCIPAL AGREEMENT”) THE [Assignor/Licensor] AGREED TO [sell/transfer] AND THE [Assignee/Licensee] AGREED TO PURCHASE INTER ALIA [all rights in/ rights to license and use] THE INTELLECTUAL PROPERTY, DETAILS OF WHICH ARE SET OUT IN THE SCHEDULE TO THIS DEED, [if all rights are being assigned, add: TOGETHER WITH THE GOODWILL ASSOCIATED WITH THOSE RIGHTS AND ALL UNREGISTERED INTELLECTUAL PROPERTY AS DEFINED WITHIN THE PRINCIPAL AGREEMENT] (TOGETHER REFERRED TO AS “INTELLECTUAL PROPERTY”). THE [Assignor/Licensor] HAS AGREED TO ENTER INTO THIS [Assignment/ License] TO ASSIGN TO THE [Assignee/License] [all its rights, title and interest/

specific rights of use] IN AND TO THE INTELLECTUAL PROPERTY. NOW IT IS AGREED AS FOLLOWS:

PURSUANT TO AND IN CONSIDERATION OF THE PAYMENT REMITTED BY THE [Assignee/Licensee] TO [the Assignor/the Licensor/or name of payee for and

on behalf of the Assignor/Licensor] OF THE SUM PAYABLE IN RESPECT OF THE INTELLECTUAL PROPERTY AND IN ACCORDANCE WITH THE PRINCIPAL AGREEMENT (RECEIPT OF WHICH SUM THE [Assignor/Licensor] HEREBY ACKNOWLEDGES), THE [Assignor/Licensor] NOW [assigns/transfers] TO THE [Assignee/Licensee] [all of its rights, title, and interest/a right of license and

use] IN AND TO THE INTELLECTUAL PROPERTY, [if all rights are being assigned add: INCLUDING, WITHOUT LIMITATION, ALL RIGHTS, PRIVILEGES, AND ADVANTAGES ATTACHING THERETO TO HOLD UNTO THE ASSIGNEE ABSOLUTELY AND (EXCEPT AS DISCLOSED IN THE PRINCIPAL AGREEMENT) FREE FROM ALL LIENS (AS DEFINED IN THE PRINCIPAL AGREEMENT) AND WITH THE INTENT THAT THE ASSIGNEE SHALL BE ABSOLUTELY ENTITLED TO ANY REGISTRATIONS GRANTED ON ANY PENDING APPLICATIONS OF THE INTELLECTUAL PROPERTY, TOGETHER WITH THE RIGHT TO SUE FOR AND RETAIN FULL AND EFFECTIVE RELIEF IN RESPECT OF EVERY ACT OF INFRINGEMENT OF THE INTELLECTUAL PROPERTY OCCURRING PRIOR IN TIME TO OR AFTER THE DATE OF THIS ASSIGNMENT], [If all rights are being assigned, include: THE ASSIGNOR HEREBY

RELINQUISHES IN FAVOR OF THE ASSIGNEE ANY AND ALL RIGHTS IT MAY HAVE TO THE INTELLECTUAL PROPERTY AND ALL RELATED MATERIALS OR IMAGES

THEREOF, AND THE ASSIGNOR EXPRESSLY ACKNOWLEDGES THE ASSIGNEE’S RIGHTS THERETO.] AT THE REQUEST OF THE [Assignee/Licensee], THE [Assignor/Licensor] SHALL EXECUTE ALL SUCH FURTHER DOCUMENTS, FORMS, AND AUTHORIZATIONS AND SHALL DEPOSE OR SWEAR ANY DECLARATION OR OATH TO TAKE ANY OTHER ACTION, INCLUDING WITHOUT LIMITATION COMPLETING ANY INTRAGROUP [assignment/license] AND NAME AND ADDRESS CHANGES PENDING AT THE DATE OF THIS [Assignment/License], AS MAY BE REQUIRED BY OR WHICH MAY, IN THE REASONABLE OPINION OF THE [Assignee/Licensee], OTHERWISE BE NECESSARY FOR [if all rights are being assigned, VESTING ANY RIGHT, TITLE, AND INTEREST IN AND TO THE INTELLECTUAL PROPERTY IN THE ASSIGNEE or if rights of use are being licensed TRANSFERRING THE SPECIFIC

LICENSE AND USE RIGHTS IN THE INTELLECTUAL PROPERTY TO THE LICENSEE]. THE COST OF SUCH ACTIONS SHALL BE ALLOCATED AS IS SET OUT IN THE PRINCIPAL AGREEMENT.

THIS DEED OF [Assignment/License] MAY BE EXECUTED IN ONE OR MORE COUNTERPARTS, EACH OF WHICH SHALL BE DEEMED AN ORIGINAL, AND WHICH TOGETHER SHALL CONSTITUTE THE SAME AGREEMENT.

THIS DEED OF [Assignment/License] AND ITS TERMS SHALL BE GOVERNED BY AND CONSTRUED IN ACCORDANCE WITH [state/country] LAW AND THE PARTIES SUBMIT TO THE NON-EXCLUSIVE JURISDICTION OF THE [state/country] COURTS IN RELATION TO ALL MATTERS ARISING OUT OF THIS ASSIGNMENT.

IN WITNESS WHEREOF THIS [Assignment/License] HAS BEEN EXECUTED BELOW BY OR ON BEHALF OF THE PARTIES.

THE SCHEDULE

[list identifying information of the IP, such as title or name and application or registration number]

ASSIGNOR/LICENSOR: [Company Name] BY: [signature] [typed name] [title]

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