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horak.
Attorneys at Law Hannover
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30159 Hannover (Headquarter)
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Wittestra脽e 30 K
13509 Berlin
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Fon +49 30.403 66 69-00
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Attorneys at Law Bielefeld
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Herforder Str. 69
33602 Bielefeld
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40237 D眉sseldorf
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Friedrich-List-Platz 1
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K枚nigstra脽e 80
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Fon +49 711.99 58 55-90
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Patent Assignment Agreement

Below is a detailed Patent Assignment Agreement template that formalizes the transfer of ownership of a patent or a group of patents from one party (the Assignor) to another (the Assignee). The agreement includes essential clauses, optional provisions, and examples to ensure legal clarity and enforceability.


Patent Assignment Agreement

Effective Date: [DATE]

Assignor: [NAME], a company/individual organized under the laws of [JURISDICTION], with its principal place of business at [ADDRESS].

Assignee: [NAME], a company/individual organized under the laws of [JURISDICTION], with its principal place of business at [ADDRESS].

The Assignor and Assignee are collectively referred to as the “Parties” and individually as a “Party.”


1. Definitions

1.1. Assigned Patents:
The patents and patent applications listed in Exhibit A, including all rights, titles, and interests, as well as any continuations, continuations-in-part, divisionals, reissues, reexaminations, and extensions.

1.2. Effective Date:
The date on which this Agreement becomes effective, as specified above.

1.3. Consideration:
The payment or other compensation provided by the Assignee to the Assignor, as outlined in Section 3.


2. Assignment

2.1. Transfer of Ownership:
The Assignor hereby irrevocably sells, assigns, and transfers to the Assignee all rights, titles, and interests in and to the Assigned Patents, including:

  • The right to exclude others from making, using, selling, or distributing products covered by the Assigned Patents.
  • The right to sue for and recover damages for past, present, and future infringements.
  • Any income, royalties, or other benefits derived from the Assigned Patents after the Effective Date.

2.2. Delivery of Documents:
The Assignor agrees to deliver to the Assignee:

  • All patent certificates, applications, and prosecution files.
  • Copies of any existing licenses, agreements, or encumbrances related to the Assigned Patents.

2.3. Recordation:
The Assignee shall file this Assignment with the relevant patent offices, including [e.g., USPTO, EPO, DPMA], to effectuate the transfer of ownership.


3. Consideration

3.1. Purchase Price:
The Assignee agrees to pay the Assignor a total amount of [AMOUNT] (“Purchase Price”) in exchange for the Assigned Patents.

3.2. Payment Terms:
The Purchase Price shall be paid as follows:

  • [E.g., 50% upon execution of this Agreement].
  • [E.g., 50% upon successful recordation of the Assignment with the relevant patent offices].

3.3. Taxes and Fees:
The Assignee shall bear all taxes, fees, and charges related to the assignment and recordation of the Patents.

Optional Clause – Royalty Payments:
In addition to the Purchase Price, the Assignor shall receive royalties of [PERCENTAGE] on net revenues generated from the exploitation of the Assigned Patents for a period of [YEARS].


4. Representations and Warranties

4.1. Assignor Warranties:
The Assignor represents and warrants that:

  • The Assignor is the sole owner of the Assigned Patents and has the authority to transfer them.
  • The Assigned Patents are free from liens, encumbrances, or third-party claims, except as disclosed in Exhibit B.
  • To the Assignor’s knowledge, the Assigned Patents are valid and enforceable.
  • All maintenance fees and other charges related to the Assigned Patents have been paid and are current.

4.2. Assignee Warranties:
The Assignee represents and warrants that:

  • The Assignee has the financial capacity to fulfill its obligations under this Agreement.
  • The Assignee will comply with all applicable laws in its use and enforcement of the Assigned Patents.

Example of Relevant Case Law:
FilmTec Corp. v. Allied-Signal Inc., 939 F.2d 1568 (Fed. Cir. 1991)
This case emphasizes the need for clarity in ownership rights and valid assignments for enforceability.


5. Confidentiality

5.1. Both Parties agree to maintain the confidentiality of the terms and conditions of this Agreement, except as required by law or necessary for recordation.


6. Indemnification

6.1. Assignor Indemnification:
The Assignor agrees to indemnify and hold harmless the Assignee against claims or damages arising from:

  • Allegations of ownership disputes or defects in title.
  • Past infringements of third-party rights.

6.2. Assignee Indemnification:
The Assignee agrees to indemnify and hold harmless the Assignor against claims arising from:

  • The Assignee’s use or enforcement of the Assigned Patents after the Effective Date.


7. Termination

7.1. This Agreement shall terminate upon the completion of all obligations outlined herein, including payment and recordation of the assignment.


8. Governing Law and Dispute Resolution

8.1. Governing Law:
This Agreement shall be governed by the laws of [JURISDICTION].

8.2. Dispute Resolution:
Any disputes arising under this Agreement shall be resolved through [e.g., arbitration under ICC rules, litigation in the courts of [JURISDICTION]].


9. Miscellaneous

9.1. Entire Agreement:
This Agreement constitutes the entire understanding between the Parties and supersedes all prior agreements.

9.2. Force Majeure:
Neither Party shall be liable for delays or failure to perform caused by events beyond their reasonable control.

9.3. Amendments:
Amendments to this Agreement must be made in writing and signed by both Parties.


Exhibit A – Assigned Patents

  • Patent No. [123456]: [Title/Description].
  • Patent Application No. [7891011]: [Title/Description].
  • Filing Date: [DATE].
  • Expiration Date: [DATE].


Exhibit B – Encumbrances or Third-Party Agreements

[List any licenses, liens, or other agreements that affect the Assigned Patents.]


Best Practices for Patent Assignment Agreements

  1. Verify Ownership:
    Conduct due diligence to ensure that the Assignor has clear title to the Patents and that there are no undisclosed encumbrances.

  2. Address Liabilities:
    Include indemnification provisions to protect against pre-existing claims or disputes.

  3. Record Assignments Promptly:
    Record the transfer with relevant patent offices to establish the Assignee’s legal ownership.

  4. Consider Tax Implications:
    Clarify responsibility for taxes and fees related to the assignment to avoid future disputes.

 

 

 

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