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Confirmatory Assignment Of Intellectual Property Rights Template for United States

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Key Requirements PROMPT example:

Confirmatory Assignment Of Intellectual Property Rights

"I need a Confirmatory Assignment Of Intellectual Property Rights to formalize the transfer of software patents and related IP that occurred during our company merger in January 2025, covering three patent applications and associated trade secrets from our AI division."

Document background
The Confirmatory Assignment Of Intellectual Property Rights is commonly used when there's a need to strengthen or clarify existing IP ownership arrangements. This might occur after corporate acquisitions, during employment transitions, or when documenting historical transfers. Under U.S. law, this document helps establish clear chain of title and can be crucial for IP enforcement, company valuations, and regulatory compliance. It typically includes detailed descriptions of the IP being confirmed, original transfer dates, and express assignment language.
Suggested Sections

1. Parties: Identification of assignor and assignee

2. Background: Context of the IP creation and relationship between parties

3. Definitions: Key terms including IP rights, effective date, and covered works

4. Assignment: Express assignment language and scope of rights transferred

5. Representations and Warranties: Assignor's confirmation of ownership and right to transfer

6. Further Assurances: Commitment to execute additional documents if needed

Optional Sections

1. Consideration: Details of payment or other consideration when assignment isn't part of employment relationship

2. Prior Rights: Acknowledgment of previous assignments or agreements when confirming previous transfers

3. Governing Law: Choice of law provision when parties are in different jurisdictions

Suggested Schedules

1. Schedule A - List of IP: Detailed inventory of assigned IP rights

2. Schedule B - Prior Agreements: List of relevant prior agreements being confirmed

3. Schedule C - Excluded IP: List of any IP rights specifically excluded from assignment

Authors

Alex Denne

Head of Growth (Open Source Law) @ tiktok³ÉÈ˰æ | 3 x UCL-Certified in Contract Law & Drafting | 4+ Years Managing 1M+ Legal Documents | Serial Founder & Legal AI Author

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Industries

Federal Patent Act: 35 U.S.C. - Governs patent rights, assignments, and transfers of patent rights in the United States

Federal Copyright Act: 17 U.S.C. - Regulates copyright ownership, transfers, and 'work for hire' doctrine

Federal Trademark Act: 15 U.S.C. (Lanham Act) - Controls trademark assignments and licensing requirements

Defend Trade Secrets Act: 18 U.S.C. - Federal law providing uniform trade secret protection and transfer requirements

State Trade Secret Laws: State-specific regulations governing trade secret protection and transfer requirements

State Unfair Competition Laws: State-level protections against unfair competition related to IP transfers

State Employment Laws: State-specific requirements regarding employee IP rights and assignments

Work for Hire Doctrine: Legal framework determining ownership of works created during employment

Shop Rights Doctrine: Common law principle governing employer's right to use employee inventions

State Contract Laws: General contract formation and enforcement requirements affecting IP assignments

Statute of Frauds: Legal requirement that certain contracts, including IP assignments, must be in writing

USPTO Requirements: Specific formal requirements for recording patent assignments with the US Patent and Trademark Office

Copyright Office Requirements: Formal requirements for recording copyright transfers with the US Copyright Office

Fiduciary Duties: Common law obligations regarding fair dealing and disclosure in IP transfers

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,  Leaves of Absence, Confidentiality, Intellectual Property, Non-Solicitation, Non-Competition, Code of Conduct, Termination,  Severance Pay, Governing Law, Entire Agreemen

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