A patent assignment contract is intended to assign a patent to a company. The assignment must be supported by a separate consideration, which may be a nominal amount or a larger value. Download this free patent assignment agreement below and have it customized by a lawyer for your needs today. CONSIDERING that the assignor is the sole and legitimate owner of certain ideas, inventions, patent applications and related patents (collectively referred to as “patents”) listed in Annex A; and such assignment constitutes the sole agreement of the parties and supersedes all prior oral proceedings and writings with respect to the subject matter of this Agreement. Enter the name of the party assigning the patent or patent application. Describe the area for which the allocation is made. B e.g. “United States”, “worldwide”, etc. Since the allocation can only refer to a part of the respective area, it is very important that the description of the area is clear and precise. A lawyer can help you describe the area accurately if you have any questions. [For patents, a formal assignment must be made to the USPTO Office within 3 months of the conclusion of this Agreement, which may be made electronically under epas.uspto.gov/.] Again, it is very important that the area of assignment is clear, precise and consistent throughout the document.
A lawyer can help you develop language that clearly indicates what is assigned. While [Company Name] (the “Company”), a company that organizes and exists under the laws of the State [Founding State of the Company], United States of America, and has a registered office at [Company Address], has the desire to obtain all right, title and interest in, in and under such patent applications and inventions. The assignor further agrees to: (a) cooperate with the assignee in the protection of patent rights and the prosecution and protection of foreign counterparties; (b) to execute, examine, recognize and surrender all such other documents, including patent applications and acts of transfer; and (c) take other steps that Buyer may lawfully request in order to obtain or maintain patents and all applications and registrations for the Invention in all countries. Include information for all patents and patent applications that are granted. The assignor is the inventor and proprietor of the patent described in the list of certain inventions and its embodiments (collectively, the “Invention”) described in a patent serial number [COUNTRY] [PATENT_NO] entitled [IP] (hereinafter the “Patent”). The assignor sells, transfers, transfers and transfers the amount of its right, title and interest in the patents to the assignor for the entire term of the patents and any new edition or extension and for any term of patents, new editions or extensions that may result from foreign applications, divisions, sequelae in whole or in part or requests for replacement, which are filed in favour of patents. The right, title and interest conferred by such assignment shall be retained and assessed by the assignee and the assigns as completely and exclusively as the assignor would have had had it not been for such assignment. CONSIDERING that the assignor is the owner of all right, title and interest in and to patents and patent applications and inventions disclosed therein (hereinafter collectively referred to as “patent rights”) listed below. The assignor authorizes the United States Patent and Trademark Office and all other applicable jurisdictions outside the United States to register the transfer of the patents and/or patent applications listed in Appendix A to the assignee as the addressee of the right, title and interest of the assignor in them. Signature pages executed for this assignment can be delivered by fax or e-mail in portable document format (.pdf), and delivery of the signature page in this way has the same effect as if the original signature had been delivered by the issuing party to the receiving party. The assignor hereby authorizes and requires the Commissioner of Patents and Trademarks of the United States and any official of any country or country outside the United States whose duty is to grant patents to the Company, its assigns, legal representatives and assigns in accordance with the provisions of this document; and.
IN WITNESS WHEREOF, the said assignor and the transferee have had their respective company and legal names signed. Each language marked [GREEN] must be filled in by the user. Any language highlighted [YELLOW] will be considered optional or conditional by the bar community. Consult a lawyer before using this document. This document is not a substitute for legal advice or services. For more information, please see our Terms of Use. CONSIDERING that the assignee wishes to acquire all rights, title and interest in the inventions represented by the patent rights in the ____; and the Assignor hereby undertakes and agrees that the Assignor will communicate to the Company, its successors, legal representatives and assignees all material facts known to the Assignor with respect to the Invention and, in general, will do everything in its power to assist the Company, its successors, legal representatives and assignees, obtain and enforce adequate protection of the invention in all countries. .
A lawyer is available for free consultations via Priori to discuss this document and much more. EACH PARTY ACKNOWLEDGES THAT, IN SIGNING THIS AGREEMENT, IT HAS HAD THE OPPORTUNITY TO SEEK THE ADVICE OF INDEPENDENT LEGAL COUNSEL AND HAS READ AND UNDERSTOOD ALL THE TERMS OF THIS AGREEMENT. THIS AGREEMENT SHALL NOT BE CONSTRUED AGAINST ANY PARTY AS A RESULT OF THE DRAFTING OR PREPARATION OF THIS AGREEMENT. Lawyers in our network have agreed to share some of the documents they regularly use in their practice, as well as annotations explaining various provisions and outlining decisions you may need to make. You can contact our lawyers and download a copy of this document. .