The Patent Assignment Form is a crucial document used in New Zealand for facilitating the transfer of patent rights between parties. This document is essential when companies or individuals need to transfer ownership of their patent rights, whether as part of a business acquisition, technology transfer, or standalone patent sale. The form must comply with New Zealand's Patents Act 2013 and IPONZ requirements, ensuring proper documentation of the transfer of intellectual property rights. It contains critical information including patent details, parties involved, consideration paid, and warranties regarding the patent's ownership and validity. The Patent Assignment Form is commonly used in corporate transactions, R&D collaborations, and technology commercialization efforts, serving as the primary instrument for documenting and effecting the legal transfer of patent rights.
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1. Parties: Identification of the Assignor (current patent owner) and Assignee (receiving party), including full legal names, addresses, and company registration numbers if applicable
2. Background: Context of the assignment, including brief description of the patent(s) and purpose of the assignment
3. Definitions: Definitions of key terms used in the agreement, including 'Patent Rights', 'Effective Date', and 'Intellectual Property Rights'
4. Subject Matter of Assignment: Detailed identification of the patent(s) being assigned, including patent numbers, application numbers, and jurisdictions
5. Assignment and Transfer: Express words of assignment and transfer of all rights, title, and interest in the patent(s)
6. Consideration: Statement of the payment or other consideration for the assignment
7. Assignor's Warranties: Warranties regarding ownership, right to assign, and absence of encumbrances
8. Further Assurance: Commitment to execute additional documents and take necessary steps to perfect the assignment
9. Governing Law: Specification that New Zealand law governs the agreement
10. Execution: Signature blocks for parties and witnesses as required under New Zealand law
1. Existing Licenses: Details of any existing licenses or rights granted to third parties that will survive the assignment
2. Payment Terms: Include when payment is not made in full at signing, detailing installment schedule or conditions
3. Confidentiality: Include when sensitive information is exchanged during the assignment process
4. Tax Provisions: Include when there are specific tax implications or arrangements between the parties
5. Assignment of Related Rights: Include when associated know-how, improvements, or related intellectual property rights are also being transferred
6. Survival Clause: Include when certain warranties or obligations need to survive completion of the assignment
1. Schedule 1 - Patent Details: Comprehensive details of the patent(s) being assigned, including patent numbers, titles, filing dates, grant dates, and jurisdictions
2. Schedule 2 - Assignment Consideration: Detailed breakdown of payment terms and consideration if complex or involving multiple components
3. Schedule 3 - Existing Encumbrances: List of any existing licenses, security interests, or other encumbrances affecting the patent(s)
4. Appendix A - Required Forms: Official patent assignment forms required by the Intellectual Property Office of New Zealand (IPONZ)
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