| Author: | Alasdair Taylor |
| Updated: | 10 January 2023 |
| Length: | 6 pages |
| Notes: | 7 pages |
| Format: | MS Word (.DOCX) |
This document may be used to assign or transfer intellectual property rights from one person or entity (the assignor) to another (the assignee).
It is a relatively straightforward document, and is easy to adapt for different types of intellectual property.
The template assignment of intellectual property rights may be used in relation to both registered intellectual property rights (such as registered trade marks and registered design rights) and unregistered intellectual property rights (such as copyright and unregistered design rights).
Identification of IPR
Because intellectual property rights are intangible, it is very important that they are properly identified in any assignment. A failure to properly identify rights may lead to the assignment covering too many rights, or too few. Registered rights are to be identified by reference to their registration particulars, such as registration numbers. Unregistered rights, by contrast, are to be identified by reference to the work or other matter in which they subsist. The two classes of right are combined in the "Assignment IP" definition used in the document.
Particular rights may be carved out from the definition of "Assignment IP", using an optional definition of "Excluded IP". "Excluded IP" might apply if, for example, you were using this document to assign all the rights in a short story, but wanted to exclude certain trade mark rights in the title.
Guarantees from the assignor
The assignment itself may be "with full title guarantee", ie with guarantees that the assignor owns all the relevant rights, the assignor can dispose of them as contemplated, the assignor will do all it can to complete the transfer, and the rights are transferred without encumbrances. Alternatively, the assignment may be limited to those rights that the assignor does in fact own.
Consideration: a quid pro quo
A special consideration clause is included. This should be used to identify whatever is being exchanged for the rights. This could be a sum of money, and may be nominal (eg GBP 1.00). It is important to identify consideration in an assignment, as the assignment may not be effective at law without consideration (unless contained in a deed).
Further assurance
An optional further assurance clause is also included. This provides that the assignor will do anything required by the assignee to perfect the assignee's ownership of the assigned rights. Where the assignment is made with "full title guarantee", there will be some cross-over, but it is generally better to spell out exactly what obligations the assignor has in this connection. The clause also allows you to specify whether the assignor has an obligation to assist the assignee with disputes relating to the assigned intellectual property.
Official records
An assignment of registered rights should itself be registered with the appropriate authorities. For example, an assignment of UK registered trade marks should be registered with the UK Intellectual Property Office.
