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Assignment Of Patent Rights Agreement
"I need an Assignment of Patent Rights Agreement to transfer a single biotech patent from my research company to a pharmaceutical corporation, with completion scheduled for March 2025 and including provisions for ongoing technical support for 6 months after the transfer."
1. Parties: Identification of the Assignor and Assignee, including full legal names, registration details, and addresses
2. Background: Context of the agreement, including brief description of the patent(s) and purpose of the assignment
3. Definitions: Definitions of key terms used throughout the agreement, including 'Patent Rights', 'Effective Date', 'Technical Information'
4. Assignment of Rights: Core provision transferring all rights, title, and interest in the patent(s) from Assignor to Assignee
5. Consideration: Details of the payment or other consideration for the assignment
6. Assignor's Representations and Warranties: Warranties regarding ownership, right to assign, validity, non-infringement, and absence of encumbrances
7. Further Assurances: Obligation to execute additional documents and assist with transfer registration
8. Registration and Recordal: Provisions regarding the recording of the assignment with patent offices
9. Taxes and Costs: Allocation of responsibility for transfer taxes, registration fees, and other costs
10. Governing Law and Jurisdiction: Specification of Austrian law as governing law and jurisdiction for disputes
11. Entire Agreement: Standard integration clause confirming the agreement represents the entire understanding between parties
12. Execution: Signature blocks and execution requirements
1. Existing Licenses and Encumbrances: Details of any existing licenses or encumbrances that will survive the assignment
2. Technical Assistance: Provisions for technical support or knowledge transfer from Assignor to Assignee
3. Confidentiality: Obligations regarding confidential information if ongoing collaboration is required
4. Pending Applications: Special provisions for patents that are still in application phase
5. Prosecution and Maintenance: Responsibilities for ongoing patent prosecution and maintenance fees
6. Existing Litigation: Provisions dealing with any ongoing patent litigation or disputes
7. Revenue Sharing: If applicable, provisions for sharing future revenues from the patent
8. Employee Obligations: Provisions regarding inventor employees and their ongoing obligations
9. Severability: Clause ensuring survival of agreement if certain provisions are found invalid
1. Schedule A - Patent Rights: Detailed list of all patents and patent applications being assigned, including registration numbers, jurisdictions, and status
2. Schedule B - Technical Information: Detailed description of technical information, know-how, and trade secrets being transferred
3. Schedule C - Existing Licenses: List and details of any existing licenses or agreements affecting the patent rights
4. Schedule D - Payment Terms: Detailed payment schedule and terms if payment is not made in single installment
5. Appendix 1 - Form of Patent Office Recordal: Template documents required for recording the assignment at relevant patent offices
6. Appendix 2 - Inventor Certificates: Copies of inventor certificates and assignments from inventors to Assignor
Authors
Technology
Pharmaceuticals
Biotechnology
Manufacturing
Chemical Industry
Electronics
Software Development
Medical Devices
Automotive
Aerospace
Research and Development
Industrial Engineering
Legal
Intellectual Property
Research and Development
Technology Transfer
Corporate Development
Innovation
Patent Operations
Technical Documentation
Business Development
Regulatory Affairs
Patent Attorney
Intellectual Property Counsel
Legal Director
Chief Technology Officer
Research and Development Director
Innovation Manager
Intellectual Property Manager
Chief Legal Officer
Technology Transfer Officer
Patent Portfolio Manager
Corporate Counsel
Licensing Manager
Technical Director
Chief Executive Officer
Chief Scientific Officer
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