This patent assignment is between
The Assignor has full right and title to the patents and patent applications listed in Exhibit A (collectively, the "Patents").
The Assignor wishes to transfer to the Assignee, and the Assignee wishes to purchase and receive from the Assignor, all of its interest in the Patents.
The parties therefore agree as follows:
1. ASSIGNMENT OF PATENTS.
The Assignor assigns to the Assignee, and the Assignee accepts the assignment of, all of the Assignor's interest in the following in the United States and its territories and throughout the world:
- (a) the Patents listed in Exhibit A;
- (b) the patent claims, all rights to prepare derivative works, goodwill, and other rights to the Patents;
- (c) all registrations, applications (including any divisions, continuations, continuations-in-part, and reissues of those applications), corresponding domestic and foreign applications, letters patents, or similar legal protections issuing on the Patents, and all rights and benefits under any applicable treaty or convention;
- (d) all income, royalties, and damages payable to the Assignor with respect to the Patents, including damages and payments for past or future infringements of the Patents; and
- (e) all rights to sue for past, present, and future infringements of the Patents.
2. CONSIDERATION.
The Assignee shall pay the Assignor a flat fee of
3. RECORDATION.
In order to record this assignment with the United States Patent and Trademark Office and foreign patent offices, within
4. NO EARLY ASSIGNMENT.
The Assignee shall not assign or otherwise encumber its interest in the Patents or any associated registrations until it has paid to the Assignor the full consideration provided for in this assignment. Any assignment or encumbrance contrary to this provision shall be void.
5. ASSISTANCE.
- (a) General Assistance. As soon as is reasonably possible following a request from the Assignee, the Assignor shall provide the Assignee with a complete copy of all documentation (in any format) relating to the Patents for the Assignee's own use, to meet record-keeping requirements of the Assignee, or to allow the Assignee to assert its rights granted under this assignment. The Assignor shall also, on request and without further consideration:
- (1) sign any additional papers, including any separate assignments of the Patents, necessary to record the assignment in the United States;
- (2) do all other lawful acts reasonable and necessary to record the assignment in the United States; and
- (3) sign all lawful papers necessary for Assignee to retain a patent on the Patents or on any continuing or reissue applications of those Patents.
- (b) Agency. If for any reason the Assignee is unable to obtain the assistance of the Assignor, the Assignor hereby appoints the Assignee as the Assignor's agent to act on behalf of the Assignor to take any of the steps listed in subsection (a).
6. NO LICENSE.
After the effective date of this agreement, the Assignor shall make no further use of the Patents or any patent equivalent, except as authorized by the prior written consent of the Assignee. The Assignor shall not challenge the Assignee's use or ownership, or the validity, of the Patents.
7. ASSIGNOR'S REPRESENTATIONS.
The Assignor hereby represents to the Assignee that it:
- (a) is the sole owner of all interest in the Patents;
- (b) has not transferred, exclusively licensed, or encumbered the Patents or agreed to do so;
- (c) is not aware of any violation or infringement of any third party's rights (or a claim of a violation or infringement) by the Patents;
- (d) is not aware of any third-party consents, assignments, or licenses that are necessary to perform under this assignment;
- (e) was not acting within the scope of employment of any third party when conceiving, creating, or otherwise performing any activity with respect to the Patents.
The Assignor shall immediately notify the Assignee in writing if any facts or circumstances arise that would make any of the representations in this assignment inaccurate.
8. INDEMNIFICATION.
(a) any claim by a third party that the Patents or their creation, use, exploitation, assignment, importation, or sale infringes on any patent or other intellectual property; (b) any claim by a third party that this assignment conflicts with, violates, or breaches any contract, assignment, license, sublicense, security interest, encumbrance, or other obligation to which the Assignor is a party or of which it has knowledge; (c) any claim relating to any past, present, or future use, licensing, sublicensing, distribution, marketing, disclosure, or commercialization of any of the Patents by the Assignor; and (d) any litigation, arbitration, judgments, awards, attorneys' fees, liabilities, settlements, damages, losses, and expenses relating to or arising from (a), (b), or (c) above. (a) Third-Party Infringement. If any Patent infringes on a United States patent of a third party not affiliated with the Assignee, the Assignor shall indemnify the Assignee against that claim, if all of the following are true: (i) the Assignee promptly notifies the Assignor of that claim; (ii) the Assignor controls the defense and settlement of that claim; (iii) the Assignee fully cooperates with the Assignor in connection with its defense and settlement of that claim; (iv) the Assignee stops all creation, public use, exploitation, importation, distribution, or sales of or relating to the infringing Patents, if requested by the Assignor.
(b) Post Enjoinment. If the Assignee is enjoined from further use of any infringing Patent or if the Assignee stops using any Patent because of the Assignor's request (as described in (iv) above), the Assignor shall, at its own expense and option: (i) obtain the right for the Assignee to continue to use the infringing Patent; (ii) modify the infringing Patent to eliminate the infringement; (iii) provide a substitute noninfringing patent to the Assignee pursuant to this assignment; or (iv) refund to the Assignee the amount paid under this assignment for the infringing Patent.
(c) No Other Obligations. The Assignor shall have no other obligations or liability if infringement occurs, and shall have no other obligation of indemnification or to defend relating to infringement. The Assignor shall not be liable for any costs or expenses incurred without its prior written authorization and shall have no obligation of indemnification or any liability if the infringement is based on (i) any modified form of the Patents not made by the Assignor, (ii) any finding or ruling after the effective date of this assignment, or (iii) the laws of any country other than the United States of America or its states.
9. GOVERNING LAW.
- (a) Choice of Law. The laws of the state of
govern this agreement (without giving effect to its conflicts of law principles). - (b) Choice of Forum. Both parties consent to the personal jurisdiction of the state and federal courts in
County, .
10. AMENDMENTS.
No amendment to this assignment will be effective unless it is in writing and signed by a party or its authorized representative.
11. ASSIGNMENT AND DELEGATION.
- (a) No Assignment. Neither party may assign any of its rights under this assignment, except with the prior written consent of the other party. All voluntary assignments of rights are limited by this subsection.
- (b) No Delegation. Neither party may delegate any performance under this assignment, except with the prior written consent of the other party.
- (c) Enforceability of an Assignment or Delegation. If a purported assignment or purported delegation is made in violation of this section, it is void.
12. COUNTERPARTS; ELECTRONIC SIGNATURES.
- (a) Counterparts. The parties may execute this assignment in any number of counterparts, each of which is an original but all of which constitute one and the same instrument.
- (b) Electronic Signatures. This assignment, agreements ancillary to this assignment, and related documents entered into in connection with this assignment are signed when a party's signature is delivered by facsimile, email, or other electronic medium. These signatures must be treated in all respects as having the same force and effect as original signatures.
13. SEVERABILITY.
If any one or more of the provisions contained in this assignment is, for any reason, held to be invalid, illegal, or unenforceable in any respect, that invalidity, illegality, or unenforceability will not affect any other provisions of this assignment, but this assignment will be construed as if those invalid, illegal, or unenforceable provisions had never been contained in it, unless the deletion of those provisions would result in such a material change so as to cause completion of the transactions contemplated by this assignment to be unreasonable.
14. NOTICES.
- (a) Writing; Permitted Delivery Methods. Each party giving or making any notice, request, demand, or other communication required or permitted by this assignment shall give that notice in writing and use one of the following types of delivery, each of which is a writing for purposes of this assignment: personal delivery, mail (registered or certified mail, postage prepaid, return-receipt requested), nationally recognized overnight courier (fees prepaid), facsimile, or email.
- (b) Addresses. A party shall address notices under this section to a party at the following addresses:
- If to the Assignor:
- If to the Assignee:
- (c) Effectiveness. A notice is effective only if the party giving notice complies with subsections (a) and (b) and if the recipient receives the notice.
15. WAIVER.
No waiver of a breach, failure of any condition, or any right or remedy contained in or granted by the provisions of this assignment will be effective unless it is in writing and signed by the party waiving the breach, failure, right, or remedy. No waiver of any breach, failure, right, or remedy will be deemed a waiver of any other breach, failure, right, or remedy, whether or not similar, and no waiver will constitute a continuing waiver, unless the writing so specifies.
16. ENTIRE AGREEMENT.
This assignment constitutes the final agreement of the parties. It is the complete and exclusive expression of the parties' agreement about the subject matter of this assignment. All prior and contemporaneous communications, negotiations, and agreements between the parties relating to the subject matter of this assignment are expressly merged into and superseded by this assignment. The provisions of this assignment may not be explained, supplemented, or qualified by evidence of trade usage or a prior course of dealings. Neither party was induced to enter this assignment by, and neither party is relying on, any statement, representation, warranty, or agreement of the other party except those set forth expressly in this assignment. Except as set forth expressly in this assignment, there are no conditions precedent to this assignment's effectiveness.
17. HEADINGS.
The descriptive headings of the sections and subsections of this assignment are for convenience only, and do not affect this assignment's construction or interpretation.
18. EFFECTIVENESS.
This assignment will become effective when all parties have signed it. The date this assignment is signed by the last party to sign it (as indicated by the date associated with that party's signature) will be deemed the date of this assignment.
19. NECESSARY ACTS; FURTHER ASSURANCES.
Each party shall use all reasonable efforts to take, or cause to be taken, all actions necessary or desirable to consummate and make effective the transactions this assignment contemplates or to evidence or carry out the intent and purposes of this assignment.
[SIGNATURE PAGE FOLLOWS]
Each party is signing this agreement on the date stated opposite that party's signature.
Date: _________________ |
__________________________________________ |
| Name: |
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Date: _________________ |
__________________________________________ |
| Name: |
[PAGE BREAK HERE]
EXHIBIT A
PATENTS AND APPLICATIONS
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| INVENTION NAME | INVENTOR'S NAME | DATE(S) OF EXECUTION OF DECLARATION | REGISTRATION OR APPLICATION NUMBER | REGISTRATION OR FILING DATE |
[PAGE BREAK HERE]
FORM OF RECORDABLE PATENT APPLICATION ASSIGNMENT
For good and valuable consideration, the receipt of which is hereby acknowledged, between
Each party is signing this agreement on the date stated opposite that party's signature.
Date: ________________________ |
__________________________________________ |
| Name: |
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| NOTARIZATION: | |
| Date: ________________________ | |
| Name: |
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| NOTARIZATION: |
[PAGE BREAK HERE]
ATTACHMENT A
ASSIGNED PATENTS
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| INVENTION NAME | INVENTOR'S NAME | **DATE(S) OF EXECUTIONOF DECLARATION ** | REGISTRATION OR APPLICATION NUMBER | REGISTRATION OR FILING DATE |
How-to guides, articles, and any other content appearing on this page are for informational purposes only, do not constitute legal advice, and are no substitute for the advice of an attorney.
Patent assignment: How-to guide
A company’s ability to buy and sell property is essential for its long-term life and vitality. Although it doesn’t take up physical space, too much intellectual property can burden a company, directing limited funds towards maintaining registrations, defending against third-party claims, or creating and marketing a final product.
Selling unused or surplus intellectual property can have an immediate positive effect on a company’s finances, generating revenue and decreasing costs. When it does come time to grow a business, companies looking to purchase property (including patents and other inventions) to support their growth must be sure that the seller does have title to the desired items. A properly drafted patent assignment can help in these circumstances.
A patent assignment is the transfer of an owner’s property rights in a given patent or patents and any patent applications. These transfers may occur independently or as part of larger asset sales or purchases. Patent assignment agreements provide both records of ownership and transfer and protect the rights of all parties.
This agreement is a written acknowledgment of the rights and responsibilities being transferred as part of your sale. This will provide essential documentation of ownership and liability obligations, and you will be well on your way to establishing a clear record of title for all of your patents.
Important points to consider while drafting patent assignments
What is a patent?
A patent is a set of exclusive rights on an invention given by the government to the inventor for a limited period. Essentially, in exchange for the inventor’s agreement to make their invention public and allow others to examine and build on it, the government provides the inventor with a short-term monopoly on their creation. In other words, only they can make, use, or sell that invention.
Are licenses and assignments different from each other?
Licenses are different from assignments. The individual who receives license rights from the patent holder isn’t gaining ownership. Rather, they’re getting assurance from the patent holder that they won’t be sued for making, using, or selling the invention. The terms of the license will vary from agreement to agreement and may address issues of royalties, production, or reversion.
LegalZoom provides agreement forms for both your licensing and assignment requirements. To create your patent assignment agreement, you can check the template provided at the start of this page.
What are the different kinds of patent assignments?
A patent assignment can take many forms.
- It can be the transfer of an individual’s entire interest to another individual or company.
- It can also transfer a specific part of that interest (e.g., half interest, quarter interest, etc.) or a transfer valid only in a designated country area. The exact form of the transfer is specific to the parties' agreement.
What is the role of the United States Patent and Trademark Office in patent transfer?
A patent transfer is usually accomplished through a contract, like the following written agreement form. However, after the parties have negotiated and signed their agreement, the transfer must be recorded with the U.S. Patent and Trademark Office (USPTO). The agreement will only be effective if this registration is made. Moreover, if the transfer isn’t recorded within three months from the date of the assignment, there can be no later purchasers. In other words, such patents are no longer sellable to a third party by the assignee if it isn’t recorded quickly and correctly.
Note that there is a fee for recording each assignment of a patent or patent application.
What details should I add to my patent application?
Although you can adapt the document to suit your arrangement, you should always identify the patent(s) being assigned by their USPTO number and date and include the name of the inventor and the invention’s title (as stated in the patent itself). This is a requirement of federal law, and failure to follow it could invalidate your assignment.
What are the benefits of patent assignment?
The advantage of selling your invention or patent outright (and not simply licensing or attempting to develop and market it yourself) is that you’re guaranteed payment at the price you and the purchaser have negotiated.
On the other hand, that one-time payment is all that you will ever receive for your property. You will no longer have the right to control anyone else’s use of your creation.
By using it yourself or offering a temporary license, you retain the potential for future income. However, such income isn’t certain, and your opportunities are paralleled by risk.
Before selling all of your rights in a patent or patent application, ensure this is the best (and most lucrative) approach for you and your company.
Is it necessary to do due diligence before buying a patent?
Provide valuable consideration to due diligence, and don’t agree without completing it. If you purchase a patent, conduct searches with the patent office on the patents issued and online directories to ensure the seller has complete and unique rights in the offered property. Look for these:
- Has an application already been filed by another person or company?
- What are the chances that this is a patentable item?
Although your findings won’t be guaranteed, you may be protected as an “innocent purchaser” if disputes arise.
You might also find critical information about the value of the patent. Consider hiring a patent attorney to help in your investigation. Comparing patents and applications often requires a specialized and technical understanding to know how useful and unique each one is.
What should I consider while selling a patent?
If you sell an invention or patent, ensure you own it. Although this may seem obvious, intellectual property ownership sometimes must be clarified. This may be the case if, for example, the invention was created as part of your employment or if it was sold or otherwise transferred to somebody else. A thorough search of the USPTO website for the publication number should be conducted before you attempt to sell your property.
Is reviewing and signing the patent necessary?
Review the assignment carefully to ensure all relevant deal points are included. Don't assume certain terms are agreed upon if not stated in the document.
Once the document is ready, sign two copies of the assignment, one for you and one for the other party.
Get the assignment notarized by the notary public to reduce the challenges to the validity of a party’s signature or the transfer itself.
If you’re dealing with a complex agreement for a patent assignment, contact an attorney to help draft an assignment that meets your needs.
Key components to include in patent assignments
The following provisions will help you understand the terms of your assignment. Please review the entire document before starting your step-by-step process.
Introduction of parties
This section identifies the document as a patent assignment. Add the assignment effective date, parties involved, and what type of organization(s) they are. The “assignor” is the party giving their ownership interest, and the “assignee” is the party receiving it.
Recitals
The “whereas” clauses, or recitals, define the world of the assignment and offer key background information about the parties. In this agreement, the recitals include a simple statement of the intent to transfer rights in the patent. Remember that the assignor can transfer all or part of its interest in the patents.
Assignment of patents
This section constitutes the assignment and acceptance of patents and inventions. Be as complete and clear as possible in your description of the property being transferred.
Consideration
In most agreements, each party is expected to do something. This obligation may be to perform a service, transfer ownership of property, or pay money. In this case, the assignee gives money (sometimes called “consideration”) to receive the assignor’s property. Enter the amount to be paid, and indicate how long the assignee has to make that payment after the agreement is signed.
Authorization to a director
This section is the assignor’s authorization to issue patents in the assignee’s name. In other words, this tells the head of the patent and trademark office that the transfer is valid and that ownership is changing hands by the assignment.
If the assignment is being recorded after the USPTO has issued a patent number, add the patent application number here.
Assignor’s representations and warranties
In this section, the assignor is agreeing to the following terms:
- They’re the sole owner of the inventions and the patents. If there are other owners who aren’t transferring their interests, this means that the only part being transferred is the assignor’s part.
- They haven’t sold or transferred the inventions and the patents to any third party.
- They have the authority to enter the agreement.
- They don’t believe that the inventions and the patents have been taken from any third party without authorization (e.g., a knowing copy of another company’s invention).
- They don’t know if any permissions must be obtained for the assignment to be completed. In other words, once the agreement is signed, the assignment will be effective without anyone else’s input.
- The patents weren’t created while a third party employed the creator. In many cases, if a company employs an individual and comes up with a product, the company will own that product. This section offers assurance to the assignee that there are no companies that will make that claim about the patents being sold.
If you and the other party want to include additional representations and warranties, you can do so here.
Assignee’s representations and warranties
In this section, the assignee is agreeing to the following terms:
- They have the authority to enter into the agreement
- They have enough funds to pay for the assignment
If you and the other party want to include additional representations and warranties, you can do so here.
No early assignment
This section prevents the assignee from re-transferring the inventions or patents or using any of them as collateral for loans until it has completely paid the money due under the agreement.
Documentation
This clause is the assignor’s promise to help with any paperwork needed to complete an assignment, such as filing information about the assignment with the USPTO, transferring document titles, transferring paperwork for filing to foreign countries, etc.
No further use of inventions or patents
This section indicates that after the agreement’s filing date, the assignor will stop using all the inventions and patents being transferred and won’t challenge the assignee’s use of those inventions or patents.
Indemnification
This clause describes each party’s future obligations if the patent or any application is found to infringe on a third party’s rights. Either the assignor agrees to take all responsibility for infringement, promising to pay all expenses and costs relating to the claim, or the assignor makes its responsibilities conditional, significantly limiting its obligations if a claim is brought.
Successors and assigns
This section states that the parties’ rights and obligations will be passed on to successor organizations (if any) or organizations to which rights and obligations have been permissibly assigned.
No implied waiver
This clause explains that even if one party allows the other to ignore or break an obligation under the agreement, it doesn’t mean that the party waives any future rights to require the other to fulfill those (or any other) obligations.
Notice
Provide the assignor and assignee’s address where all the official or legal correspondence should be delivered.
Governing law
This provision lets the parties choose the state laws used to interpret the document.
Counterparts; electronic signatures
This section explains that if the parties sign the agreement in different locations, physically or electronically, all the separate pieces will be considered part of the same agreement.
Severability
This clause protects the terms of the agreement as a whole, even if one part is later invalidated. For example, if a state law is passed prohibiting choice-of-law clauses, it won’t undo the entire agreement. Instead, only the section dealing with the choice of law would be invalidated, leaving the remainder of the assignment enforceable.
Entire agreement
This section indicates the parties’ agreement that the document they’re signing is “the agreement” about transferring the issued patent.
Headings
This clarifies that the headings at the beginning of each section are meant to organize the document and shouldn’t be considered operational parts of the note.
Frequently asked questions
What is a patent assignment?
If you want to buy patents, the first step is to ensure the seller (original owner) owns the patent rights. The second step is the transfer of the patent owner's rights to the buyer. Patent assignments are agreements that cover both steps, helping the buyer and the seller with ownership records and quickly enabling transfer.
What are the requirements for patent assignment?
Here's the information you'll require to complete a patent assignment:
- Who the assignor is: Have their name and contact information ready
- Who the assignee is: Have their information available
- Invention info: Know the inventor's name, invention's registration number, and filing date
Free Patent Assignment Template
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