The Assignment of Intellectual Property agreement is essential when transferring ownership of intellectual property assets in the United States. It's commonly used in business acquisitions, employee-employer relationships, and technology transfers. This document ensures compliance with federal laws including the Copyright Act, Patent Act, and Lanham Act, while addressing state-specific requirements. The agreement typically includes detailed descriptions of the IP being transferred, warranties of ownership, and terms of the transfer. It's particularly crucial for maintaining clear ownership records and protecting both parties' interests in IP transactions.
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1. Parties: Identification of assignor and assignee, including full legal names and addresses
2. Background: Context of the assignment and relationship between parties, including the nature of the IP being transferred
3. Definitions: Key terms including types of IP being assigned, territory, and other relevant terminology
4. Assignment: Core provision transferring IP rights, including scope and effective date of transfer
5. Consideration: Payment or other value exchanged for the IP transfer
6. Representations and Warranties: Assurances about IP ownership, right to assign, and non-infringement
7. Governing Law: Jurisdiction and choice of law governing the agreement
1. Further Assurances: Commitment to execute additional documents or take further steps to perfect the assignment
2. Moral Rights Waiver: Waiver of personal rights in creative works, particularly relevant for copyright assignments
3. Confidentiality: Provisions protecting sensitive information and trade secrets associated with the IP
4. Registration: Obligations regarding IP registration and recordal with relevant authorities
1. Schedule A - IP Assets: Detailed inventory of all IP being assigned, including descriptions and registration numbers
2. Schedule B - Registered Rights: Comprehensive list of registered patents, trademarks, copyrights with registration details
3. Schedule C - Third Party Rights: List of existing licenses, encumbrances, or other third-party rights affecting the IP
4. Schedule D - Required Consents: List of third-party approvals or consents required for the assignment
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