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Assignment Of Intellectual Property Rights
"I need an Assignment of Intellectual Property Rights agreement for transferring a portfolio of software patents and associated trade secrets from my technology startup to a large multinational corporation, with completion scheduled for March 2025 and including provisions for ongoing technical support during the transition period."
1. Parties: Identifies and provides full details of the Assignor and Assignee
2. Background: Sets out the context of the assignment, including the Assignor's ownership of the IP rights and the parties' intention to transfer these rights
3. Definitions: Defines key terms used throughout the agreement, including specific IP-related terminology
4. Assignment: Core clause that effects the transfer of IP rights from Assignor to Assignee
5. Consideration: Specifies the payment or other consideration for the assignment
6. Warranties: Assignor's warranties regarding ownership, right to assign, and status of the IP rights
7. Further Assurance: Obligation to execute additional documents and take further steps necessary to perfect the assignment
8. Governing Law: Specifies that New Zealand law governs the agreement
9. Execution: Formal execution block for signing by both parties
1. Third Party Rights: Required when there are existing licenses, encumbrances, or third-party rights affecting the IP
2. Confidentiality: Include when confidential information is involved in the transfer or needs protection
3. Tax: Include when there are specific tax implications that need to be addressed
4. Moral Rights: Required for copyright works where moral rights need to be specifically addressed
5. Registration: Include when the IP rights are registered and specific provisions for transfer of registration are needed
6. Indemnities: Include when specific indemnities are required beyond standard warranties
7. Post-Assignment Obligations: Required when either party has continuing obligations after the assignment
8. Survival: Include when certain provisions need to survive the assignment
1. Schedule 1 - Intellectual Property Rights: Detailed description of all IP being assigned, including registration numbers where applicable
2. Schedule 2 - Existing Licenses and Encumbrances: List of any existing licenses, security interests or other encumbrances affecting the IP
3. Schedule 3 - Assignment Forms: Forms required for recording the assignment with IP offices (e.g., patent office, trademark office)
4. Schedule 4 - Payment Terms: Detailed payment structure if the consideration is complex or involves multiple payments
5. Appendix A - IP Documentation: Copies of relevant IP certificates, registrations, and other supporting documentation
Authors
Technology
Pharmaceutical
Biotechnology
Media and Entertainment
Manufacturing
Research and Development
Software Development
Creative Industries
Education
Healthcare
Engineering
Consumer Products
Professional Services
Legal
Intellectual Property
Research and Development
Innovation
Business Development
Commercial
Technology Transfer
Corporate Development
Compliance
Executive Leadership
Legal Counsel
Intellectual Property Lawyer
Patent Attorney
Technology Transfer Manager
Research Director
Chief Technology Officer
Innovation Manager
Business Development Manager
Contract Manager
CEO
Managing Director
IP Portfolio Manager
General Counsel
Commercial Director
Head of Research and Development
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