This document is an agreement for assignment of patents.

Consideration

As this assignment of patents is in the form of an agreement, it provides for consideration to be paid (clause 2). If no consideration is paid, it may need to be amended into the form of a deed.

Whether it is a deed or agreement, the consideration paid may have consequences for stamp duty or other fees that may need to be paid. Practitioners should consider this at the outset of the transaction.

Intellectual property registers

Intellectual property registers in various countries may require submission of forms for registration of this assignment on their patent registers. This may occur some time after the assignment takes place, which is why clause 3 in relation to further action is required. This is the same reason that clause 6 relating to delivery of documents is required.

Indemnity and warranties

This document provides for an indemnity as well as a comprehensive list of warranties provided by the assignor in clause 7. However practitioners should consider if other warranties are appropriate. Practitioners and parties need to give thought to what can and should be warranted and exactly how the warranty should be phrased. You should also consider the possibility of an assignment with no warranties or indemnity at all.

Related precedents

The following precedents also relate to patents:

• Patent co-ownership agreement; and

Patent licence.

This document has been authored for LexisNexis by Marianne Dunham, Principal, Dunham Legal. 

This document is prepared with the assistance of Specialist Editor Jim Lennon, Special Counsel, Norton Rose Fulbright.