Transfer to another party intellectual property rights (eg trademark, patent, copyright) using this assignment of intellectual property (IP). If you want to make sure the rights are correctly identified and assigned and both parties are clear on rights and remedies, you will need to use this intellectual property assignment.
When should I use an assignment of intellectual property?
Use this assignment of intellectual property:
- to transfer ownership of intellectual property (eg trademark, copyright or patent) rights to another party
What's included in an assignment of intellectual property?
This assignment of intellectual property covers:
- the assigned rights (can be registered, unregistered or a combination of both)
- full or limited title guarantee
- the price paid
- excluded rights (optional)
- a choice of warranties
- indemnity (optional)
What's an assignment of intellectual property?
An assignment of intellectual property is an outright transfer of an owner's rights, title and interests in certain intellectual property rights (IPRs). The transferring party ("assignor") transfers to the receiving party ("assignee") its ownership in IPRs.
Do I need an assignment of intellectual property?
An assignment of intellectual property, generally, must be formally made in writing showing a clear intention to transfer the IPRs to the assignee. An attempt to assign IPRs without complying with the formal requirements will not transfer the legal title to the assets. This means that ownership will not transfer correctly.
What intellectual property rights can be transferred?
Most IPRs can be transferred, including patents, trademarks, copyright, registered and unregistered design rights. Rights in passing-off and confidential information are not property rights and can't be assigned as such, however, there may be situations which require the assignor to disclose confidential documents as part of the transfer.
Who has the rights to intellectual property?
Usually the person who created the intellectual property is the owner. However, there are certain situations where this doesn't apply:
- IPRs created in the course of employment, such that it is part of the employee's job, is presumed to be owned by the employer; or
- As is the case with any registered IPRs, the named entity on the register is the owner of the IPR and therefore is the only person/entity who has the right to effect the transfer.
What are moral rights?
Some IPRs generate moral value in addition to any economic value that is made by exploiting the IPRs. Moral rights protect these non-economic interests and are only available for literary, dramatic, musical and artistic works and film. These rights can't be sold or transferred, however, the assignor can agree to waive these rights. Moral rights include the right to be recognised as the author or the work or a right to not have the work altered or adapted in a way that would prejudice the reputation of the original author.
What are warranties in the assignment of intellectual property rights agreement?
Warranties are a statement of fact, or promises, that the assignor gives to assure the assignee that certain conditions are true. For example, a warranty stating that the the assignor is the sole owner of all the rights, title and interest in the IPRs, is a promise made by the assignor. If this statement of fact turns out to be untrue, the assignee is able to claim for damages.
What is an indemnity in the assignment of intellectual property rights agreement?
An indemnity is a collateral contract by which the assignor agrees to secure the assignee against any future losses or any legal risks in the future. For example, if it turns out that the IPRs transferred does infringe upon a third party and that third party decides to bring an action, the assignor promises to reimburse the assignee for the legal expenses in defending or settling the claim.
Does this assignment of intellectual property work internationally?
No, this assignment of IP is only governed by the law of England and Wales or the law of Scotland. It does not guarantee any rights overseas.
How long does the agreement last?
The assignment can last indefinitely, thereby permanently transferring ownership of the IPRs to the assignee.
How do I know I own the intellectual property rights after the agreement is signed?
In order to make sure the assignee becomes the new owner of the IPRs it may be necessary to register the rights with the Intellectual Property Office. It is important to make sure the assignee's name is on any registered documents and complete any necessary registrations.
What if I only want to assign partial rights to the assignee?
You can specify what rights you want to assign in the assignment agreement. For example, if you have a novel, you may want to assign only the rights to make a film, but retain the rights to publish the novel as a book.
What should be included in the Schedule?
The Schedule to this agreement should set out details for what is being provided and transferred as part of the assignment. It is important to be concise and to state precisely what IPRs are being transferred. You should use registration numbers where possible and attach any samples referencing the work and materials.
Ask a Lawyer for:
- advice if any of the parties is based outside England, Wales or Scotland
- advice on registering an assignment of registered intellectual property rights with the appropriate authorities
This assignment of intellectual property is governed by the law of England and Wales or the law of Scotland.