MAKE YOUR FREE Assignment of Intellectual Property
What we'll cover
What is an Assignment of Intellectual Property?
Assignments of Intellectual Property are used to transfer (ie assign) ownership of intellectual property rights (IPRs) (eg trade marks or copyrights) from one party to another. An Assignment of Intellectual Property agreement facilitates an outright transfer of the owner's rights, titles and interests in the particular intellectual property (IP).
When should I use an Assignment of Intellectual Property?
Use this Assignment of Intellectual Property:
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to transfer ownership of intellectual property from the current owner (ie the 'assignor') to a new party (ie the 'assignee')
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to transfer intellectual property rights, including trade marks, copyrights, design rights, and patents
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for IP that is registered in the UK or unregistered IP that’s used in the UK
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for transfers between parties based in the UK only
Sample Assignment of Intellectual Property
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ASSIGNMENT OF INTELLECTUAL PROPERTY
This assignment is made on the date of the last signature below between:
- (the Assignor)
- (the Assignee).
BACKGROUND
- The Assignor owns the Intellectual Property Rights in the Assigned Rights (as defined below).
- The Assignor has agreed to assign to the Assignee the Assigned Rights on the terms in this Agreement.
Meanings
- In this Agreement the following words are defined:
Agreement the agreement set out in this document including the Schedule and any agreed amendments from time to time; Assigned Rights ; Confidential Information information (however recorded or preserved) acquired by a party under the Agreement which is confidential to the other party because it: - concerns its business, affairs, customers, clients, suppliers, plans, intentions, market opportunities, operations, processes, product information, know-how, designs, trade secrets or software; or
- has been developed by the other party under the Agreement;
Intellectual Property Rights all intellectual property rights wherever in the world, whether registrable or unregistrable, and whether registered or unregistered (including any application or right of application for such rights) and including copyright and related rights, database rights, confidential information, trade secrets, know-how, business names, trade names, trade marks, service marks, passing off rights, unfair competition rights, patents, petty patents, utility models, semi-conductor topography rights and rights in designs; Schedule the Schedule to this Agreement; Working Day any day other than a Saturday, Sunday or public holiday in England and Wales.
Interpretation
- In the Agreement, unless the opposite is clear from the context:
- all singular words include plural ones and vice versa;
- all references to paragraphs, schedules or appendices are to the ones in the Agreement;
- all references to a person include firms, companies, government entities, trusts and partnerships;
- the term "including" does not exclude anything not listed;
- all references to statutory provisions include any changes to those provisions;
- the headings are not part of the Agreement.
Assignment
- In consideration of the sum of £, receipt of which the Assignor now acknowledges, the Assignor hereby irrevocably assigns to the Assignee.
- The Assigned Rights are assigned for the whole term of such rights together with all reversions, revivals, extensions and renewals.
- The rights assigned to the Assignee under paragraph 3 above include the right to bring proceedings in respect of, and recover any damages or benefit from any other remedies in respect of, any infringement of the Assigned Rights whether occurring before, during or after the date of this Agreement.
Warranties
- The Assignor warrants to the Assignee that:
- it has the legal right and authority to enter into and perform its obligations under this Agreement;
- All of the parties' liabilities and obligations relating to this Agreement are expressly contained in it. To the maximum extent permitted by applicable law, no other terms concerning the subject matter of this Agreement are implied into this Agreement or any related contract.
Further Assurance
- The Assignor agrees to execute (and arrange for the execution of) any documents and do (and arrange for the doing of) any things reasonably within the Assignor's power, which are reasonably necessary to:
- enable the Assignee to exercise and enjoy its rights under this Agreement;
- vest in the Assignee the rights specified in paragraph 3; and
- if applicable, register the Assignee's title in those rights with the relevant intellectual property office or registry.
General
- This Agreement contains the whole agreement between the parties relating to its subject matter and supersedes all prior discussions, arrangements or agreements that might have taken place in relation to the subject matter of this Agreement. Nothing in this clause limits or excludes any liability for fraud or fraudulent misrepresentation.
- The Assignor may not assign, transfer, sub-contract or otherwise make over to any third party the benefit and/or burden of the Agreement without the prior written consent (not to be unreasonably withheld) of the Assignee.
- No variation of the Agreement will be valid or binding unless it is recorded in writing and signed by or on behalf of both parties.
- The Contracts (Rights of Third Parties) Act 1999 does not apply to the Agreement and no third party has any right to enforce or rely on any provision of the Agreement.
- Unless otherwise agreed, no delay, act or omission by a party in exercising any right or remedy will be deemed a waiver of that, or any other, right or remedy.
- A provision which, by its intent or terms, is meant to survive the termination of the Agreement will do so.
- If any court or competent authority finds that any provision (or part) of the Agreement is invalid, illegal or unenforceable, that provision or part-provision will, to the extent required, be deemed to be deleted, and the validity and enforceability of the other provisions of the Agreement will not be affected.
- Unless specifically provided by the parties, nothing in the Agreement will establish any partnership or joint venture between the parties, or mean that one party becomes the agent of the other party, nor does the Agreement authorise any party to enter into any commitments for or on behalf of the other party.
- Any notice (other than in legal proceedings) to be delivered under the Agreement must be in writing and delivered by pre-paid first class post to or left by hand delivery at the other party's registered address or place of business, or sent by fax to its main fax number, or sent by email to its email address as notified to the sending party. Notices:
- sent by post will be deemed to have been received, where posted from and to addresses in the United Kingdom, on the second Working Day and, where posted from or to addresses outside the United Kingdom, on the tenth Working Day following the date of posting;
- delivered by hand will be deemed to have been received at the time the notice is left at the proper address; and
- sent by fax will be deemed to have been received on the next Working Day after transmission;
- sent by email will be deemed to have been received on receipt of confirmation of receipt from the recipient.
Confidentiality
- Each party will only use Confidential Information to perform its obligations under the Agreement and will not cause or allow the information to be disclosed except:
- where required by law, court order or any governmental or regulatory body;
- to any of its employees, officers, sub-contractors, representatives or advisers who need to know the information in order to discharge its obligations under the Agreement and agree only to use the information for that purpose and not to cause or allow disclosure of that information;
- where the information has become generally available to the public (other than as a result of disclosure in breach of the Agreement by the party or any of its employees, officers, representatives or advisers);
- where the information was available or known to it on a non-confidential basis before being disclosed under the Agreement; or.
- where the information was developed by or for it independently of the Agreement and is received by persons who are not the disclosing party.
Governing Law and Jurisdiction
- This Agreement shall be governed by and interpreted according to the law of England and Wales and all disputes arising under the Agreement (including non-contractual disputes or claims) shall be subject to the exclusive jurisdiction of the English and Welsh courts.
The parties have signed this Agreement the date(s) below:
The Schedule
About Assignments of Intellectual Property
Learn more about making your Assignment of Intellectual Property
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How to make an Assignment of Intellectual Property
Making your Assignment of Intellectual Property online is simple. Just answer a few questions and Rocket Lawyer will build your document for you. When you have all the information about the IP and the transaction prepared in advance, creating your document is a quick and easy process.
You’ll need the following information:
The assignor and the assignee
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What is the assignor’s name, address, and legal structure? If it’s a company, what’s its company number?
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Who is the assignor’s signatory, if it’s a company or a partnership? This is the person who will sign the Assignment on the company’s or partnership’s behalf.
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What is the assignee’s name, address, and legal structure? If it’s a company, what’s its company number?
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Who is the assignee’s signatory, if it’s a company or a partnership? This is the person who will sign the Assignment on the company’s or partnership’s behalf.
Types of intellectual property rights
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Are you transferring any registered IP?
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Are you transferring any unregistered IP?
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Are you transferring any copyrights?
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If so, will the assignor surrender their moral rights in the relevant work(s)?
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Excluded IPRs
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Do you want to specify any IPRs that will not be included in (ie transferred under) this Assignment agreement? If so:
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Do you want to specifically exclude registered IPRs, unregistered IPRs, or both?
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Identifying the intellectual property rights to be transferred
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Which registered IPRs are being assigned using this agreement? Include registration numbers.
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Which works and/or materials in which unregistered IPRs exist are being transferred? These must be well-defined and can be supported by drawings or similar.
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Which registered IPRs are being specifically excluded from this Assignment? Include registration numbers.
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Which works and/or materials in which unregistered IPRs exist are being specifically excluded from this Assignment? These must be well-defined and can be supported by drawings or similar.
The Assignment
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What is the price being paid in exchange for the IP being transferred?
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Are the IPRs being transferred with full title guarantee (ie the assignor has full knowledge of all of the rights being transferred and they guarantee that they have the authority to sell them, they are not subject to any financial charges, and there are no undisclosed rights over them)?
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If the assignor or assignee is based in Scotland, will the Assignment agreement be governed by the laws of England and Wales or the laws of Scotland?
Warranties
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Does the assignor promise that they have not already licensed or assigned any of the rights being transferred under this Assignment?
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Does the assignor promise that any relevant IPR registrations have been maintained and relevant fees paid?
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Does the assignor promise that they’re aware of any infringements or likely infringements of any of the relevant IPRs?
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Does the assignor promise that all of the IPRs are valid and there have been no legal claims against them?
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Does the assignor promise that exploiting (ie using) the IPRs will not infringe on any other parties’ rights?
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Does the assignor promise that the assignee may use the rights without interference from them, the assignor?
Assistance and indemnity
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Does the assignor promise to provide reasonable assistance to the assignee if any legal proceedings arise in connection with the transferred IPRs?
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If so, will the assignee or assignor bear the costs of this assistance?
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Is the assignor providing an indemnity to the assignee, promising to reimburse them for costs arising out of any breaches by the assignor of the warranties contained in this Assignment agreement?
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Common terms in an Assignment of Intellectual Property
Assignments of Intellectual Property set out the terms of a transfer of ownership of IP. To do this, this Assignment of Intellectual Property template includes sections headed:
This assignment is made on the last date of signature below between…
The agreement starts by clearly identifying the assignor (ie the party selling the relevant IPRs) and the assignee (ie the party purchasing the relevant IPRs), who will be the parties to this transaction.
Background
This section sets out the key purposes of the Assignment by stating that the assignor owns the relevant IP and that they agree to assign (ie transfer ownership of) it to the assignee on the terms of this agreement.
Meanings
This definition table assigns specific meanings to key terms used throughout the Assignment. When these terms (eg ‘Assigned Rights’ or ‘Intellectual Property Rights’) are used capitalised throughout the Assignment, they carry the meaning they’re given in this table.
Assignment
This section starts by setting out the transfer being made under this Assignment: the assignor is assigning certain rights in IP to the assignor, either with full title guarantee or not, in exchange for payment of a specified sum.
It clarifies that the assignment is for the whole term of the rights (ie this is not a licence to use IP for a defined period of time). Lastly, it clarifies that the assignee’s ownership of the IPRs will include the rights to, for example, bring legal proceedings in respect of any future breaches of these IPRs.
Moral rights
If you’ve indicated that the assignor will waive their moral rights in any copyrights transferred under this Assignment, this waiver will be set out here. This section will also assert that all other moral rights in the applicable works have been waived (eg co-authors’ moral rights).
Warranties
The promises that the assignor is making to the assignee under the Assignment are set out here.
This section will always include a warranty that the assignor has the legal right to enter into this agreement and to perform its obligations under it (eg because they have a right to the relevant IP). It will also contain any other warranties you’ve chosen to include. For example, that the assignor has not previously licensed or assigned any of the relevant IPRs or that as far as they are aware use of the IPRs will not infringe on any other party’s rights.
Finally, this section notes that the terms contained in the Assignment agreement are all of the terms of the Assignment, as far as permitted by law (eg neither party should later argue that they agreed on additional warranties verbally).
Further assurance
The assignor makes additional promises related to the Assignment in this section. For example, that they will do anything necessary (eg execute documents) to enable the assignee to enjoy their rights under this agreement (eg to enable them to use the IP).
If you’ve indicated that the assignor promises to assist the assignee if any legal disputes arise relevant to the IPRs, this promise is set out here, along with an identification of who will pay any associated costs.
Indemnity
If the assignor is indemnifying the assignee against any of the assignor’s breaches of the warranties provided in the Assignment, this indemnity will be set out here.
General
This section deals with various other points of law that govern how this Assignment agreement operates. For example:
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stating that this agreement is the entire agreement, ie the Assignment contains all of the agreement between the assignor and the assignee (ie there are no additional terms). This helps avoid confusion if, for instance, other terms were in contemplation during negotiations
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restricting how the assignor can deal with the agreement (eg preventing them from assigning their burdens under the agreement to others)
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requiring that any variations to the agreement must be made in writing
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excluding the Contracts (Rights of Third Parties) Act 1999 or the Contract (Third Party Rights) (Scotland) Act 2017. This essentially means that third parties (ie not the assignor or the assignee) that would otherwise be able to enforce obligations under this agreement under the Act cannot do so
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setting out how any notices or other similar communications that must be given under the Assignment should be delivered
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clarifying that the Assignment does not create a partnership, a joint venture, or an agency relationship between the assignor and assignee
Confidentiality
This section sets out obligations on both parties related to confidential information. Both parties promise, under the Assignment, to only use each other’s confidential information as necessary to perform their obligations under the Assignment. Further, they promise that they will not disclose it except in certain situations (eg if required by law or if the information has already become generally available to the public).
Governing law and jurisdiction
This section sets out which country’s legal system must be used to resolve any disputes (ie the agreement’s ‘jurisdiction’). This is necessary as the legal systems of England and Wales and of Scotland are different.
The parties have signed this agreement on the date(s) below…
The Assignment provides space here for the parties to sign and date the agreement, to make it legally binding.
The Schedule
The Assignment’s Schedule contains details of all IPRs that are being transferred under the Assignment.
If both registered and unregistered rights are being transferred, these are set out in separate sections. Unregistered rights are set out as descriptions of the works that give rise to them (eg copyrighted works).
If you’re specifying certain IPRs that aren’t being included in the Assignment, these will also be set out in the Schedule. Again, if registered and unregistered rights are being excluded, these will be set out separately.
If you want your Assignment of Intellectual Property to include further or more detailed provisions, you can edit your document. However, if you do this, you may want a lawyer to review the document for you (or to make the changes for you) to make sure that your modified Assignment of Intellectual Property complies with all relevant laws and meets your specific needs. Use Rocket Lawyer’s Ask a lawyer service for assistance.
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Legal tips for assignors and assignees
Make sure you clearly identify all relevant IPRs
Registered IP is easy to identify. For example, you can provide a trade mark registration number to clearly identify a registered trade mark. Unregistered IP can be harder to clearly define and identify. Therefore, it’s important that you describe any unregistered IP you’re transferring (eg copyrights or design rights) under the Assignment very precisely. You should provide precise written descriptions that include all relevant details and, where necessary, you should provide clear supporting documents (eg drawings or examples of the works or products that contain the relevant IPR).
Ensuring IPRs can be clearly identified prevents disputes from arising down the line if, for example, the parties realise that they disagree over exactly which IP has been assigned using your Assignment of Intellectual Property.
Register your IP to protect it
Unregistered IP is often protected under UK IP law. However, registered IP usually receives greater legal protection and, because IPRs must be clearly identified in order to register them, disputes involving them are less likely to involve complicated arguments about exactly what constitutes a particular IPR.
Therefore, if you own unregistered IP that’s capable of being registered, consider registering it (eg before assigning it or after receiving it via assignment). For more information, read How to register a trade mark, Design rights, and Patents. You can use our Trade mark registration service for assistance.
Understand when to seek advice from a lawyer
In some circumstances, it’s good practice to Ask a lawyer for advice to ensure that you’re complying with the law and that you are well protected from risks. You should consider asking for advice if:
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the assignor or assignee is based outside England, Wales, and Scotland
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you need to register an Assignment of registered intellectual property rights with the appropriate authorities
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Assignment of Intellectual Property FAQs
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What is included in an Assignment of Intellectual Property?
This Assignment of Intellectual Property template covers:
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the IPRs being assigned (these can be registered, unregistered or a combination of both)
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whether or not the assignor is providing a full title guarantee
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the price paid for the IPRs
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warranties regarding the IPRs
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excluded rights (optional)
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how the assignor will assist with any relevant future legal claims (optional)
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an indemnity provided by the assignor (optional)
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Why do I need an Assignment of Intellectual Property?
In the UK, assignments (ie transfers of ownership) of various types of IP must be made in writing. The transfer document should show a clear intention by the assignor to transfer the IPRs to the assignee.
Attempts to assign IPRs without complying with the formal requirements will not transfer the legal title to the assets, meaning that ownership will not transfer correctly. Therefore, if you want to transfer your ownership of intellectual property, you’ll need an appropriate Assignment of Intellectual Property document.
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What intellectual property rights can be transferred?
Most IPRs can be transferred, including patents, trade marks, copyrights, and design rights.
Rights in passing off and confidential information are not property rights and can't be assigned in the same way. However, in some situations, an assignor may be required to disclose confidential documents as part of an IPR transfer.
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Who owns the rights to intellectual property?
Usually, the person who created a particular piece of IP is its owner. However, there are certain situations in which this doesn't apply. For example:
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when IPRs are created in the course of employment, as part of an employee's job, these IPRs are presumed to be owned by the employer (ie they will be owned by the employer unless a formal document, eg an Employment contract, states otherwise)
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when the person named on a register (eg the UK trade mark register) as the owner of the IPR isn’t its creator
Remember that it’s the owner of an IPR that can assign that IPR, regardless of whether or not they are also its original creator.
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What are moral rights?
Some IPRs generate moral value in addition to any economic value that is made from the IPRs’ exploitation (ie use).
Moral rights protect these non-economic interests in a copyright. They are only available for literary, dramatic, musical and artistic works, and film. Moral rights include the rights to:
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be recognised as the author of the work (ie attribution)
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not have the work altered or adapted in a way that would prejudice the original author’s reputation (ie derogatory treatment of the work)
Moral rights can't be sold or transferred. However, the owner can agree to waive these rights.
For more information, read Moral rights for copyright.
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What are the warranties in this Assignment of Intellectual Property agreement?
Warranties are statements of fact or promises that one party to an agreement gives to the other, as part of the agreement. By providing warranties in the Assignment of Intellectual Property, the assignor is assuring the assignee that certain conditions are true. For example, that the assignor is the sole owner of all of the rights, titles, and interests in the IPRs covered by the Assignment. If this statement of fact turns out to be untrue, the assignee is able to seek damages (ie compensation) from the assignor as this will be a breach of the Assignment agreement.
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What are the indemnities in the Assignment of Intellectual Property agreement?
An indemnity is a promise by one party of a contract to another, in which they promise to compensate that party for (ie indemnify them against) any future losses or any legal risks that arise due to certain specified conduct by the indemnifying party.
For example, this Assignment document contains an indemnity to the effect that, if it turns out that the IPRs transferred infringe on a third party’s rights and the third party decides to bring a legal action, the assignor will reimburse the assignee for any legal expenses they incur in defending or settling the claim. The assignee could pursue legal claims for breaches of the Assignment’s warranties regardless of whether the assignor provided an indemnity, but having the indemnity in place would make it easier for them to obtain compensation.
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Does this Assignment of Intellectual Property work internationally?
This Assignment of Intellectual Property is governed by the laws of England and Wales or the laws of Scotland. It does not guarantee or assign any intellectual property rights overseas (eg in the EU).
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How long does the Assignment of Intellectual Property agreement last?
The Assignment can last indefinitely, as its purpose is to transfer ownership of the IPRs to the assignee (ie not simply to provide a temporary licence for their use).
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How do I know whether I own the IPRs after the Assignment agreement is signed?
To make sure that the assignee becomes the new legal owner of the IPRs, it may be necessary to register the rights with the UK Intellectual Property Office (UKIPO). It’s important to make sure that the assignee's name is on any registered documents and to complete any necessary registrations. For more information, read Reaching an agreement - intellectual property infringement.
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What if I only want to assign partial rights to the assignee?
It is possible to only assign partial rights in intellectual property. For example, you may assign the right to use a copyright for one purpose but not the right to use it for another purpose.
You can specify what rights you want to assign in this Assignment agreement. For example, if you wrote and own the copyright to a novel, you may assign the rights to make a film based on the novel but retain the rights to publish the novel as a book.
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What should be included in the Schedule?
The Schedule to this agreement should clearly set out details of what is being transferred as part of the Assignment (eg the specific IPRs and/or works in which rights exist). It is important to be concise and to state precisely what IPRs are being transferred. You should use registration numbers where possible and attach any samples, drawings, or other materials that reference the works.
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What is the difference between an Assignment of IP and an IP licence?
An Assignment of Intellectual Property transfers the full ownership of IP from one party to another. On the other hand, an IP licence grants one party (ie the licensee) the right to use another party’s (ie the licensor’s) IP. While the licensee can use the licensor’s IP, the licensor maintains full ownership of their IP.
For more information, read Intellectual property licensing. You can licence trade marks using a Trade mark licence. If you require other types of IP licences, Ask a lawyer.
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Do I need to pay stamp duty on assignments of IP?
Stamp duty has not been chargeable or payable on transfers of IP since 28 March 2000. The Finance Act 2000 abolished this stamp duty charge.
However, in some circumstances, stamp duty may still be chargeable and payable if the transfers deal in part with IP and in part with other property that stamp duty applies to (eg shares).
For more information, see HMRC’s manual and do not hesitate to Ask a lawyer.
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