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Assignment And Licence Of Patent for the United Kingdom

Assignment And Licence Of Patent Template for England and Wales

This document is a comprehensive legal agreement governed by the laws of England and Wales, combining both the assignment (transfer of ownership) and licensing of patent rights. It enables the patent owner to transfer ownership while simultaneously establishing licensing terms for the patent's use. The agreement covers essential elements including ownership transfer, license scope, territorial rights, royalty arrangements, and warranty provisions, all within the framework of UK patent law and the Patents Act 1977.

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Assignment And Licence Of Patent

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What is a Assignment And Licence Of Patent?

The Assignment And Licence Of Patent agreement is utilized when a patent owner wishes to transfer ownership while maintaining specific licensing arrangements under English and Welsh law. This dual-purpose document facilitates both the complete transfer of patent rights and establishes specific terms for the ongoing use of the patent technology. It's particularly relevant in corporate restructuring, technology transfers, and commercial collaborations where complex intellectual property arrangements are needed. The agreement must comply with the Patents Act 1977 and be registrable with the UK Intellectual Property Office.

What sections should be included in a Assignment And Licence Of Patent?

1. Parties: Identification of assignor/licensor and assignee/licensee with full legal names and addresses

2. Background: Context of the agreement, identification of the patent(s), and purpose of the assignment and license

3. Definitions: Key terms used throughout the agreement including Patent Rights, Territory, Field of Use, Effective Date

4. Assignment Provisions: Terms of absolute transfer of the patent rights including worldwide rights and right to sue for past infringements

5. License Grant: Scope and nature of license rights granted back to the assignor, including any field or territory restrictions

6. Consideration: Payment terms, royalties, and other financial considerations for both assignment and license

7. Warranties and Representations: Representations about patent ownership, validity, and right to assign/license

8. Registration: Obligations regarding registration of the assignment at relevant patent offices

9. Further Assurance: Obligations to execute additional documents and assist with transfer formalities

10. Governing Law and Jurisdiction: Specification of English and Welsh law as governing law and jurisdiction for disputes

What sections are optional to include in a Assignment And Licence Of Patent?

1. Sub-licensing Rights: Include when licensee is permitted to grant sub-licenses to third parties

2. Improvements: Include when dealing with future improvements to the patent and associated rights

3. Territory Restrictions: Include when license is geographically limited or specific territories are excluded

4. Quality Control: Include for manufacturing licenses to maintain quality standards

5. Confidentiality: Include when sensitive technical information or know-how is being transferred

6. Competition Law Compliance: Include when license terms need to address competition law requirements

What schedules should be included in a Assignment And Licence Of Patent?

1. Schedule 1 - Patent Details: Full technical specifications and registration details of the patent(s) being assigned

2. Schedule 2 - Royalty Calculations: Detailed methodology for calculating royalties including definitions of net sales and reporting requirements

3. Schedule 3 - Technical Documentation: Technical specifications, know-how, and associated documentation being transferred

4. Schedule 4 - Existing Licenses: Details of any pre-existing licenses or encumbrances affecting the patent

5. Schedule 5 - Assignment Form: Form of assignment for registration at the Patent Office

Authors

Alex Denne

Head of Growth (Open Source Law) @ tiktok成人版 | 3 x UCL-Certified in Contract Law & Drafting | 4+ Years Managing 1M+ Legal Documents | Serial Founder & Legal AI Author

Jurisdiction

England and Wales

Cost

Free to use
Relevant legal definitions



























Clauses



























Industries

Patents Act 1977: Primary UK legislation governing patents, covering ownership, assignments, licensing, registration requirements at UKIPO, and requirements for valid transfers of patent rights

Contracts Act 1999: Fundamental legislation covering contract formation, consideration requirements, and contractual capacity necessary for valid patent assignments and licenses

Competition Act 1998: Legislation governing anti-competitive practices and restrictions on licensing terms in patent agreements

European Patent Convention: International treaty relevant for European patents designating the UK, still applicable post-Brexit

Patent Cooperation Treaty: International treaty governing patent protection across multiple jurisdictions, relevant if international patent rights are involved

Common Law Principles: Established case law principles regarding assignment of property rights, licensing, and contractual interpretation in England and Wales

UKIPO Registration Requirements: Procedural requirements for registering patent assignments and recordal of licenses at the UK Intellectual Property Office

Tax Legislation: Relevant tax laws covering stamp duty considerations and VAT treatment of royalties in patent transactions

Teams

Employer, Employee, Start Date, Job Title, Department, Location, Probationary Period, Notice Period, Salary, Overtime, Vacation Pay, Statutory Holidays, Benefits, Bonus, Expenses, Working Hours, Rest Breaks, 聽Leaves of Absence, Confidentiality, Intellectual Property, Non-Solicitation, Non-Competition, Code of Conduct, Termination, 聽Severance Pay, Governing Law, Entire Agreemen

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