A Guide to Our Intellectual Property Assignment
by Kate Mccormick - Solicitor
Our guide to intellectual property assignment outlines all relavant information you will need and step by step instrucions on how to fill out the template.
A Guide to Our Assignment of Intellectual Property
This Assignment of Intellectual Property is for use by a business or individual to transfer rights and ownership in intellectual property to a third party. The intellectual property concerned can be unregistered or registered.
Clauses in this Assignment of Intellectual Property
Cover page - you will need to insert the names of party 1 (the Assignor) and party 2 (the Assignee).
Between – this clause defines whom the Assignment is between. You need to insert the details of both parties to the Assignment here including their business/company name and registered number (if either party is a registered company) and registered office or trading address.
Background – you can add further information here to record any relevant background information, for example where the Assignment forms part of a larger transaction, but it is not necessary.
Assignment – this is the operative clause that records the Assignment. In clause 1.1 you need to insert the sum that is payable by the Assignee for the Assignment. You also need to state whether the Assignment is with full or limited title guarantee. If full title guarantee is stated this will incorporate the following covenants contained in Part I of the Law of Property (Miscellaneous Provisions) Act 1994:
That the Assignee has the right to dispose of the Trademark(s) and that it will, at its own cost, do all that it reasonably can to give the ownership that it is attempting to give; and
That the Trademark(s) is/are free from all charges and encumbrances (such as a mortgage) and rights of third parties (except those that it does not and could not be expected to know about).
Limited title guarantee only includes the first of these covenants and states instead of the second that the Trademark(s) are only free from adverse rights created by the Assignee itself.
Clauses 1.1.2 and 1.1.3 are optional and can be deleted if not relevant. They include in the Assignment any Intellectual Property registration and/or protection applications that may be in progress and/or the right to apply for registrations and/or protection in relation to any Intellectual Property in the Schedule.
Further Assurance – here, the Assignor agrees to provide all reasonable assistance to the Assignee to give full effect to the Assignment. This could involve helping the Assignee to register the Intellectual Property applications in its own name and/or record the transfer of ownership of the registered Intellectual Property.
Governing Law and Jurisdiction - If the Assignor or the Assignee is based abroad, you may wish to change the jurisdiction clause to reflect this and/or make it non- exclusive. Where both parties are based in the UK, the jurisdiction should be exclusively that of England and Wales.
Schedule – is it very important that you insert the details of the Intellectual Property rights to be assigned in this Schedule. You should include any registration number(s) in the details.
Signature clause – this clause makes the Assignment binding on both parties. You need to insert the name of both parties and the person signing on their behalf and then both parties need to sign the Agreement here. They should then both keep a copy of the signed Agreement for their records.
Once the document has been signed, it may be necessary to register the transfer, depending on the type of rights concerned. For example a registered trade mark assignment should be recorded with the Intellectual Property Office.
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