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
The assignment of intellectual property rights can be made as a separate transaction of intangible assets, or it may occur as part of much larger acquisitions of assets such as sales of business assets, mergers or stock purchases. However, ownership of intangible assets is not affected by the mere acquisition of shares in a company.
To be valid and effective, an assignment of intellectual property rights should comply with specified requirements. These requirements will vary depending on the jurisdiction, national laws and regulations and will relate to the form of the assignment agreement (written agreement or not), the identification of the parties, the subject of the contract and sometimes with the obligation to declare and record the assignment within a specific register.
The intellectual property assignment is a transfer of an owner's rights, title and interest in certain intellectual property rights. The transferring party ("assignor") transfers to the receiving party ("assignee") its property in intellectual property rights, such as patents, trademarks, industrial designs and copyrights.
The owner of the intellectual property rights may transfer all or part of his rights - e.g. the copyright owner could assign only some of his economic prerogatives. The transfer of intellectual property rights is made upon a payment of a lump sum or royalties.
Unlike licence agreements, which grant permission to use intellectual property under certain conditions, as a general rule assignments are transfers of property rights, with no conditions under which the rights will be used.
For Trademarks: An assignment is a transfer of ownership of a trademark application or trademark registration from one entity to another.
For Patents: An assignment involves the sale and transfer of ownership of a patent by the assignor to the assignee.
For Copyright: An assignment is a transfer of the copyright owner’s economic rights. In contrast to the economic rights under copyright, moral rights cannot be sold or assigned to another person (moral rights are the right to be identified as the author of the work or to object to derogatory treatment or to a distortion or mutilation of the work, to protect the personality and reputation of authors).