Intellectual Property Assignment Agreement (Short Form)
This is a standard short-form Intellectual Property Assignment Agreement for the transfer of certain intellectual property (IP) from a seller (assignor) to a buyer (assignee) in connection with an asset purchase transaction. Parties can use this Intellectual Property (IP) Assignment Agreement in conjunction with an Asset Purchase Agreement. Specifically, this IP assignment agreement conveys all the seller’s right, title, and interest in the scheduled IP registrations and applications. Further, this agreement is suitable for recording in the US Patent and Trademark Office, the US Copyright Office, or both.
In an asset purchase transaction, it is usually a requirement for the seller to execute and deliver one or more IP assignment agreements as ancillary documents under the provisions of the asset purchase agreement. This is usually necessary when the acquired assets include include one or more of the following:
- patent applications and issued patents.
- copyright applications and registrations.
- trademark applications and registrations.
Parties can use this IP Assignment Agreement when assigning more than one type of IP and the parties decide to use a single short-form IP assignment agreement covering all of the assigned IP.
Foreign IP Registrations and Applications
If the acquired assets include foreign IP registrations or applications, the parties should engage local IP counsel to advise on:
- The use of this agreement in the relevant foreign jurisdictions.
- Any other necessary documents or requirements, such as notarization, apostille, or legalization, to effect the transfer of IP applications or registrations in those jurisdictions.
State Trademark Registrations and Applications
If the acquired assets include state trademark registrations or applications, the parties should confirm the requirements for trademark assignments specified by the secretary of state’s office in the applicable states to evaluate:
- The use of this agreement in the relevant states. In certain states, the secretary of state’s office may require the use of its own assignment form.
- Any other necessary documents or requirements, such as notarization, to effect the transfer of registrations or applications in those states.
Use with Other Principal Transaction Agreements
This agreement is drafted to be used ancillary to an asset purchase agreement that transfers IP and non-IP assets. However, parties can also use this agreement with other types of principal transaction agreements. For example, parties can use this agreement for principal transaction agreements where the parties want to record an IP assignment with the USPTO, US Copyright Office, or corresponding foreign entities or agencies, but limit the public disclosure of other transaction terms. Additionally, parties can use this agreement with a principal IP acquisition agreement that includes detailed financial terms and may specify other obligations, such as the transfer of related assets.
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