Patent Assignment Agreement - Template, Sample Form Pro · US-law
✓ Valid in United States · drafted to comply with local law
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PATENT ASSIGNMENT AGREEMENT
State of ________
RECITALS
A. This Patent Assignment Agreement (this “Assignment”), made effective as of ________ (the “Effective Date”), is entered into by and between the following parties:
________, a ________ organized and existing under the laws of the State of ________ (“Assignor”), having an address as follows:
________
and
________, a ________ organized and existing under the laws of the State of ________ (“Assignee”), having an address as follows:
________
Assignor and Assignee are each sometimes referred to herein individually as a “Party” and collectively as the “Parties.”
B. WHEREAS, Assignor is the sole and rightful owner of certain ideas, inventions, patent applications therefor, and patents issued thereon, together with all reissues, divisions, continuations, continuations-in-part, renewals, reexaminations, and extensions thereof, and all rights to claim priority therefrom (collectively, the “Patents”), filed with and/or issued by the United States Patent and Trademark Office (the “USPTO”) with the following particulars:
Patent/Application title: ________
Patent/Application number: ________
Registration/Issue date: ________
Inventor(s): ________
C. WHEREAS, Assignee desires to purchase and acquire all of Assignor’s right, title, and interest in and to the Patents; and
D. WHEREAS, Assignor and Assignee are each duly authorized and capable of entering into this Assignment.
NOW, THEREFORE, in consideration of the mutual promises and covenants contained herein, and other good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged, Assignor and Assignee hereby agree as follows:
I. ASSIGNMENT.
1. Assignor does hereby irrevocably sell, assign, transfer, convey, and set over to Assignee its entire right, title, and interest, in and throughout the world, in and to the Patents (constituting ________% of the total interest in the Patents), together with the goodwill of the business symbolized thereby and all causes of action and rights to recover for past, present, and future infringement thereof, for the entire term of the Patents and any reissues, reexaminations, or extensions that may issue therefrom, and any foreign applications, divisions, continuations in whole or in part, or substitute applications filed claiming the benefit thereof. The right, title, and interest conveyed in this Assignment is to be held and enjoyed by Assignee and Assignee’s successors and assigns as fully and exclusively as it would have been held and enjoyed by Assignor had this Assignment not been made.
2. Assignor authorizes and requests the USPTO, and the corresponding intellectual property authority of any other applicable jurisdiction outside of the United States, to record the transfer of the Patents and/or patent applications set forth herein to Assignee as the recipient of Assignor’s right, title, and interest therein, and to issue any and all patents thereon to Assignee.
3. Assignor further agrees to: (a) cooperate with Assignee in the protection of the patent rights and the prosecution and protection of foreign counterparts; (b) execute, verify, acknowledge, and deliver all such further papers, including patent applications and instruments of transfer; and (c) perform such other lawful acts as Assignee may reasonably request to obtain, perfect, or maintain the Patents and any and all applications and registrations for the inventions in any and all countries.
II. TERM.
4. This Assignment shall become effective as of the Effective Date, and the assignment of the Patents shall be effective immediately upon execution hereof, subject to recordation with the USPTO. The rights and obligations contained herein shall continue during the validity of the Patents, except as may otherwise be provided herein.
III. PAYMENT.
6. As consideration for the assignment, Assignee agrees to pay Assignor the sum of $________ (________).
7. Payment shall be made by the following method: ________, on or before ________.
IV. COOPERATION.
8. Assignor agrees to cooperate with Assignee to the fullest extent possible in conveying the right, title, and interest in and to the Patents. Such cooperation includes the prompt completion and execution of any papers necessary, including oaths, declarations, specifications, assignments confirmatory hereof, or any other papers required to perfect the complete conveyance of the Patents, as well as assistance in proceedings before the USPTO or any foreign patent authority.
V. WARRANTIES AND REPRESENTATIONS.
VI. RECORDATION.
10. Assignor shall be responsible for causing recordation of this Assignment with the USPTO, by submitting all documents necessary to transfer ownership of the Patents pursuant to 35 U.S.C. § 261 and 37 C.F.R. § 3.11 et seq. Assignor authorizes Assignee to complete recordation, and authorizes the USPTO and any other government officials to record and register this Assignment.
11. The Party responsible for paying all fees required by the USPTO for recordation shall be ________.
VII. NOTICES.
12. Any notice or communication required or permitted under this Assignment shall be sufficiently given if delivered in person or sent by certified mail, return receipt requested, postage prepaid, or by nationally recognized overnight courier, to the address set forth in the opening paragraph of this Assignment, or to such other address as one Party may have furnished to the other in writing. Notice shall be deemed given upon actual receipt.
VIII. AMENDMENT.
13. This Assignment may be modified or amended only by a writing signed by both Parties.
IX. ASSIGNMENT.
14. Assignee may assign or transfer its rights and obligations under this Assignment, in whole or in part, without the consent of Assignor. Assignor may not assign or delegate its obligations hereunder without the prior written consent of Assignee.
X. NO CONFLICT.
15. Assignor warrants and represents that Assignor is not, and will not become, a party to any assignment, agreement, or other contract in conflict with this Assignment.
XI. ENTIRE AGREEMENT.
16. This Assignment constitutes the entire agreement between Assignor and Assignee with respect to the subject matter hereof and supersedes any prior or contemporaneous understandings, whether written or oral.
XII. SEVERABILITY.
17. If one or more provisions of this Assignment are held to be unenforceable under applicable law, the Parties agree to renegotiate such provision in good faith. If the Parties cannot reach a mutually agreeable and enforceable replacement, then such provision will be excluded from this Assignment, the balance of the Assignment will be interpreted as if such provision were so excluded, and the balance of the Assignment will be enforceable in accordance with its terms.
XIII. WAIVER.
18. No waiver of any term or provision of this Assignment shall be deemed a continuing waiver or a waiver of any other term or provision, and no waiver shall be effective unless made in writing and signed by the Party against whom it is asserted.
XIV. ADVICE OF COUNSEL.
19. Each Party acknowledges that, in executing this Assignment, such Party has had the opportunity to seek the advice of independent legal counsel and has read and understood all of the terms and provisions hereof. This Assignment shall not be construed against any Party by reason of the drafting or preparation hereof.
XV. HEADINGS.
20. Headings in this Assignment are for convenience only and shall not be construed to limit or otherwise affect the terms hereof.
XVI. COUNTERPARTS.
21. This Assignment may be executed in counterparts, each of which shall be deemed an original and all of which together shall constitute one and the same instrument. Signatures transmitted electronically or by facsimile shall be deemed original signatures.
XVII. JURISDICTION & GOVERNING LAW.
22. This Assignment shall be governed in all respects by the laws of the United States of America and the laws of the State of ________, without regard to its conflict-of-laws principles. Assignor and Assignee consent to the exclusive jurisdiction of the state and federal courts located in ________ for the resolution of any dispute arising hereunder.
IN WITNESS WHEREOF, the Assignor and Assignee have executed and delivered this Assignment as of the Effective Date.
ASSIGNOR:
________
By:___________________________
Name: ________
Title: ________
Date:_______________________________
ASSIGNEE:
________
By:___________________________
Name: ________
Title: ________
Date:_______________________________
ACKNOWLEDGMENT
State of ________
County of ________
On this ________, before me, the undersigned Notary Public, personally appeared ________, on behalf of the Assignor, ________, personally known to me or proved to me on the basis of satisfactory evidence to be the person whose name is subscribed to the within instrument, and acknowledged to me that he/she/they executed the same in his/her/their authorized capacity, and that by his/her/their signature on the instrument the person, or the entity upon behalf of which the person acted, executed the instrument.
WITNESS my hand and official seal.
Notary Public Signature: ___________________________
Printed Name: ________
My Commission Expires: ________
Seal:
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