The Assignment Of Patent Rights Agreement is a crucial document used when transferring ownership of patent rights in the United States. It's commonly used in corporate acquisitions, technology transfers, or when restructuring intellectual property portfolios. The agreement must comply with both federal patent law (35 U.S.C.) and USPTO requirements, making it distinct from other types of asset transfers. This document is particularly important as patent rights can only be transferred through written documentation, and recording the assignment with the USPTO is necessary to protect against subsequent purchasers. The agreement typically includes specific details about the patents, representations about ownership and validity, and terms of the transfer.
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1. Parties: Identification of assignor and assignee with full legal names and addresses
2. Background: Context of the assignment and identification of the patent(s) being assigned
3. Definitions: Key terms used throughout the agreement
4. Assignment: Core provision transferring all rights, title, and interest in the patent
5. Consideration: Details of payment or other consideration for the assignment
6. Representations and Warranties: Assignor's declarations regarding ownership, right to assign, and patent validity
7. Further Assurances: Commitment to execute additional documents if needed
8. Governing Law: Specification of jurisdiction governing the agreement
1. Confidentiality: Protection of sensitive information, used when confidential information is exchanged
2. Indemnification: Protection against third-party claims, used when significant liability risks exist
3. License Back: Granting assignor continued use rights, used when assignor needs to retain usage rights
4. Survival: Provisions that continue after termination, used when certain obligations should continue post-assignment
1. Patent Schedule: Detailed list of patents being assigned including patent numbers, titles, and jurisdictions
2. Payment Schedule: If payment is structured or involves royalties, details of payment terms
3. Form PTO-1595: USPTO recording cover sheet for patent assignment
4. Patent Assignment Form: Formal assignment document for USPTO recording
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