An Intellectual Property Assignment and License Agreement is a distinctive agreement whereby 1 party, the assignor, transfers to yet another party, the assignee, rights to their intellectual property, be it in a copyright, trademark, or patent, in exchange for valuable consideration, and in exchange for the assignee assigning back to the assignor a license to use the intellectual property. Therefore, in such an arrangement, ownership to the intellectual property rights has been transferred, but the assigning party is still able to use the copyright, trademark, or patent, topic to the terms and conditions of the agreement. Unless stated otherwise, the rights, for the duration of the license at least, are therefore non-exclusive, as both parties have the correct to use property.


Simply because the arrangement is so exclusive, a drafter of an IP Assignment and License Agreement need to be sure to carefully state the rights and obligations of each and every party. The following are the most critical areas to address:


1. Assignment. The agreement must first address the parameters of the assignment. This generally entails a full and irrevocable transfer, assign, conveying, and delivering of all proprietary ownership and all other proper, title, and interest in and to the property. The assignee ought to also demand further assurances that the assignor will execute all documents and do all other issues deemed required to best, establish, protect, prosecute, defend, and enforce assignee’s appropriate to the property, which could incorporate points like filing specific documents with the Federal Government.


2. Compensation. This section must address what the assignee is giving up in exchange for the intellectual property rights. It could be a cash payment, a stock payment, a mixture of both, or some other form of payment altogether. If it is an agreement with a subsidiary business, there may possibly not be any consideration at all. Normally though, the obtain price is substantial for valuable intellectual property rights, as it is not unusual to see hundreds of thousands, if not millions, shares of stock in play.


three. Rights. The actual rights becoming assigned by Assignor to Assignee should be described here. Intellectual Property rights fall into the categories of copyrights, trademarks, or patents. Several times a organization will have a trademark to a name and as well as a patent to that service.


4. License to Assignor. Here the terms of the “license back” to the Assignor need to be addressed. For example, this paragraph could state: “In further consideration for the assignment, the assignee will grant to Assignor a worldwide, exclusive, royalty-free right and license for the purposes of generating, utilizing, selling, offering for sale, and importing products.” The key is to outline the scope of the license, no matter whether it is exclusive or non-exclusive, what territory it covers, and no matter whether there are any limitations on the Assignor’s appropriate to use the intellectual property. The agreement must also state the term, i.e. length, of the license.


5. General Provisions. The agreement ought to address the rules governing the Assignor/Licensee’s appropriate to sublicense the property or obligation to refrain from sublicensing the property. The agreement really should also address problems such as assignment, waiver, and governing law.


These are the most important provisions involved in an Intellectual Property Assignment and License Agreement. For further details, or to read and download actual Intellectual Property Agreements, please see the Agreements section of this internet site.

Copyright Assignment