What should an IP assignment agreement include?

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Although the specific requirements for intellectual property rights assignments depend on the particular situation and vary from country to country, in most jurisdictions a valid IP assignment must at a minimum include the following:   

  • Identification of the Parties - identifies the contract as an intellectual property assignment agreement and identifies the Assignor and Assignee. The party transferring ("assigning") ownership interest is termed the Assignor while the party receiving it is known as the Assignee.
  • Recitals - defines the context of the assignment and provides relevant background information about the parties, including a statement of intent to transfer rights in intellectual property.
  • Definitions - clarifies relevant general and technical terms used throughout the contract in order to guarantee that these terms will have the same meaning to the parties of the agreement.
  • Assignment of intellectual property - contains a complete and concise description of the property being transferred; details exactly the intellectual property, including any relevant applications or registrations for intellectual property protection and “goodwill” (business reputation) sold with the property; “goodwill” is the intangible value of an asset, reflecting the commercial value of said asset (e.g. trade mark reputation and distinctiveness among customers). In the case of complex assignment agreements, this clause may also refer to a description of the proposed transferred assets that will be annexed to the agreement.
  • Obligations of the Parties - it is important to clearly define the obligations of the parties in order to avoid any subsequent conflict with regards to the extent of these obligations; the exact definition and extent of the parties’ obligations depend on the type of intellectual property transferred; however the main obligation of the Assignor is to transfer the ownership of the intellectual property assets and the main obligation of the Assignee is to pay the a lump sum (royalties) agreed; other obligations are those related to the Assignor’s rights to the intellectual property transferred - the guarantee that he owns the IP. 
  • Liability and warranties provisions - relates to the assignor’s right and authority to enter into such an agreement;  for example the guarantee that he is the exclusive owner of all rights, title and interest in the IP and that the IP is valid and subsisting; that the IP transferred does not infringe the rights of third parties.
  • Indemnification - a description of each party’s future obligations, if the intellectual property is found to infringe on a third party’s rights.
  • Payment provisions - price and other commercial terms.
  • Term of the agreement - identifies the effective date of the assignment.
  • Applicable law and jurisdiction - which national law will apply in the event that a conflict arises; identification of a competent court or an arbitration/mediation body to which a dispute could be referred is also important.
  • Other Common Clauses -
  • Annex - Description of the Intellectual Property