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Assignment Of Patent Rights Agreement
"I need an Assignment of Patent Rights Agreement to transfer our pharmaceutical patent portfolio to a German company, with the transfer to be completed by March 2025 under Dutch law, including provisions for ongoing technical support during the transition period."
1. Parties: Identification of the Assignor and Assignee, including full legal names, registration details, and addresses
2. Background: Context of the assignment, including the Assignor's ownership of the patents and the parties' intention to transfer the rights
3. Definitions: Key terms used in the agreement, including 'Patents', 'Intellectual Property Rights', 'Effective Date', and other relevant terms
4. Assignment: Core provision transferring all rights, title, and interest in the patents from Assignor to Assignee
5. Consideration: Details of the payment or other consideration for the assignment
6. Representations and Warranties: Assignor's warranties regarding ownership, validity, and freedom to assign the patents
7. Further Assurances: Obligations to execute additional documents and assist with patent office recordings
8. Taxes and Costs: Allocation of responsibility for transfer taxes, registration fees, and other costs
9. Governing Law and Jurisdiction: Specification of Dutch law as governing law and designation of competent courts
10. Execution: Signature blocks and execution requirements
1. Employee Inventor Provisions: Required when the patent involves employee inventors who need to confirm the assignment
2. Related Rights: Used when associated know-how, trade secrets, or improvements are also being transferred
3. Security Interest: Include when the assignment is subject to security interests or other encumbrances
4. Survival of Prior Agreements: Needed when certain provisions from previous agreements should remain in effect
5. Foreign Registration: Required when patents are registered in multiple jurisdictions
6. Royalties: Include when the assignment includes ongoing royalty payments
7. Confidentiality: Added when confidential information is exchanged as part of the assignment
8. Tax Indemnity: Include when specific tax implications need to be addressed between the parties
1. Schedule 1 - Patent Schedule: Detailed list of patents being assigned, including registration numbers, jurisdictions, and status
2. Schedule 2 - Payment Terms: Detailed payment schedule and mechanisms if payment is not made as a single sum
3. Schedule 3 - Assignment Forms: Country-specific patent office forms required for recording the assignment
4. Schedule 4 - Existing Licenses: List of existing licenses or encumbrances affecting the patents
5. Schedule 5 - Technical Documentation: List of technical documents and materials to be transferred with the patents
6. Appendix A - Inventor Confirmations: Required confirmations or assignments from named inventors
7. Appendix B - Corporate Approvals: Copies of corporate authorizations for the assignment
Authors
Technology
Pharmaceuticals
Biotechnology
Manufacturing
Chemicals
Electronics
Telecommunications
Automotive
Energy
Medical Devices
Research & Development
Academic & Education
Legal
Intellectual Property
Research & Development
Technology Transfer
Corporate Development
Business Development
Innovation
Patents
Licensing
Technical Documentation
Intellectual Property Counsel
Patent Attorney
Legal Counsel
Chief Technology Officer
Research Director
Innovation Manager
Technology Transfer Officer
Corporate Counsel
Patent Manager
Licensing Manager
R&D Director
Chief Legal Officer
Business Development Manager
IP Portfolio Manager
General Counsel
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