Patent application right assignment contract

Patent Assignment Agreement

This Patent Assignment Agreement (this “Agreement”), dated as of January 1, 2020, between [Enter Names of Assignor], an individual residing in [State] (“Assignor”), and [Enter Name of Assignee], a [entity type] having its principal place of business at [address] (“Assignee”).

Recitals

A. Assignor and Assignee are parties to that certain [description of prior agreement], dated as of [date prior agreement was entered into] (the “Prior Agreement”).

B. Pursuant to the Prior Agreement, Assignor has developed certain inventions and ancillary subject matter, including without limitation all inventions contained in patent application and/or all issued patents related thereto (collectively, the “Patent Rights”).

C. The parties desire to evidence the transfer of all right, title, and interest in and to the Patent Rights from Assignor to Assignee under the terms, conditions, and covenants set forth herein.

Agreement

NOW, THEREFORE, in consideration of the foregoing Premise and the mutual covenants, terms and conditions set forth herein, and for other good and valuable consideration, the receipt, sufficiency and adequacy of which are hereby acknowledged, Assignor and Assignee agree as follows:

1. Assignment.

Assignor hereby assigns, transfers and conveys to Assignee, and its successors, assigns and legal representatives, for the term of the inventions, the entire right, title and interest of Assignor, including without limitation all tangible and intangible patent rights (including without limitation, any and all claims, improvements, applications, renewals, registrations and extensions thereof existing or hereafter arising in any and all jurisdictions of the world) related thereto (the “Assigned Patent Rights”) made or conceived by Assignor, including without limitation all rights as a patentee or licensor.

2. Further Assurances. Assignor agrees to execute such additional documents, including without limitation Uniform Patent Assignment or other country registry forms, and to take all necessary action as customary in order to perfect, confirm and transfer to Assignee all Assigned Patent Rights.

3. Limitations on Representations and Warranties. EXCEPT AS EXPRESSLY SET FORTH IN THIS AGREEMENT, ASSIGNOR MAKES NO WARRANTY OR REPRESENTATION, AND EXPRESSLY DISCLAIMS ALL OTHER WARRANTIES, EXPRESS OR IMPLIED, INCLUDING ANY IMPLIED WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE, OR NONINFRINGEMENT.

4. Governing Law. This Agreement will be governed by and construed in accordance with the substantive laws of [State].

5. Counterparts. This Agreement may be executed in counterparts, each of which constitutes an original document related to the same agreement and all of which taken together shall constitute one and the same agreement.

IN WITNESS WHEREOF, the parties have caused this Agreement to be executed as of the date first set forth above.

[Signed]

ASSIGNOR ___________________

[Name]

ASSIGNEE ___________________

[Name]

Patent Assignment Agreement

This Patent Assignment Agreement (the “Agreement”) is entered into as of , 20 by and between [Assignor], with its principal place of business address of [Assignor Address] and [Assignee], with its principal place of business at [Assignee Address] (each referred to as a “Party” and collectively as the “Parties”).

WHEREAS, Assignor has an interest in certain Patent Applications (hereinafter defined) under the laws of [Country]; and

WHEREAS, Assignee desires to acquire rights in and to the Patent Applications and is willing to pay fair value for such rights.

NOW, THEREFORE, for good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged, the Parties agree as follows:

1.DEFINITIONS

“Patent Applications” shall mean all claims and applications, in any jurisdictions and in any state of prosecution, for patent(s) or for registration of utility models directly and indirectly related to the invention that is the subject of the agreement, including, without limitation, any associated foreign priority applications and/or international applications.

2.ASSIGNMENT

Assignor hereby grants to Assignee, its affiliates, successors, assigns, and legal representatives, an exclusive, worldwide, sublicensable, perpetual, royalty-free, fully-paid up and irrevocable right and license, with the right to sublicense, to make, have made, use, offer for sale, sell, import and otherwise transfer the patents, inventions and improvements that are part of the Patent Applications.

3.REPRESENTATIONS AND WARRANTIES

The Assignor represents and warrants that:

(i) Assignor is the sole owner of all right, title and interest in and to the Patent Applications and that Assignor has full power and authority to enter into this Agreement and to grant the rights contemplated herein;

(ii) The Patent Applications are free of any liens or encumbrances; and

(iii) To the best of Assignor’s knowledge, the Patent Applications do not infringe upon or misappropriate any third party intellectual property rights.

4.CONFIDENTIALITY

The Parties agree that all provisions of this Agreement shall be deemed confidential and shall not be disclosed to any third party without the prior written consent of the other Party except for disclosures to a Party’s legal or financial advisors, or as otherwise required by law.

IN WITNESS WHEREOF, the Parties have caused this Agreement to be executed as of the day and year first set forth above.

[Signature of Assignor]

[Signature of Assignee]