INTELLECTUAL PROPERTY ASSIGNMENT AGREEMENT
[// GUIDANCE: This is a universal template. Modify bracketed items, remove inapplicable options, and conform to local law before use.]
TABLE OF CONTENTS
- Document Header
- Definitions
- Assignment & Transfer of Rights
- Consideration & Payment Terms
- Representations & Warranties
- Covenants & Restrictions
- Default & Remedies
- Risk Allocation
- Dispute Resolution
- General Provisions
- Execution Block
1. DOCUMENT HEADER
This INTELLECTUAL PROPERTY ASSIGNMENT AGREEMENT (this “Agreement”) is entered into as of [Effective Date] (the “Effective Date”) by and between:
[Assignor Legal Name], a [Jurisdiction & Entity Type] with its principal place of business at [Address] (“Assignor”); and
[Assignee Legal Name], a [Jurisdiction & Entity Type] with its principal place of business at [Address] (“Assignee”).
RECITALS
A. Assignor is the sole and exclusive owner of the intellectual property more particularly described herein.
B. Assignee desires to purchase, and Assignor desires to assign, all right, title, and interest in and to such intellectual property upon the terms and conditions set forth below.
NOW, THEREFORE, in consideration of the mutual covenants and agreements contained herein and other good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged, the Parties agree as follows:
2. DEFINITIONS
[// GUIDANCE: Definitions appear alphabetically. Add or delete terms as needed.]
“Affiliate” means, with respect to a Party, any entity that directly or indirectly controls, is controlled by, or is under common control with that Party.
“Assigned IP” means collectively the Patents, Trademarks, Copyrights, Domain Names, Trade Secrets, and all other intellectual property rights owned by Assignor and listed on Schedule A.
“Assignment Documents” means the short-form assignment(s), trademark assignment(s), patent assignment(s), copyright assignment(s), domain-name transfer forms, and any other documents reasonably required to perfect Assignee’s ownership of the Assigned IP.
“Consideration” has the meaning set forth in Section 4.1.
“Copyrights” means all worldwide rights in copyrightable works, registrations, renewals, and applications, including those governed by 17 U.S.C. § 204.
“Domain Names” means the internet domain names identified on Schedule A.
“Governmental Authority” means any federal, state, provincial, local, foreign, or other governmental, regulatory, or administrative authority.
“Losses” means any and all losses, damages, liabilities, penalties, fines, costs, and expenses (including reasonable attorneys’ fees).
“Patents” means all patents and patent applications, including continuations, continuations-in-part, divisionals, reissues, substitutions, and extensions, governed in the United States by 35 U.S.C. § 261.
“Trademarks” means all trademarks, service marks, trade names, logos, and related goodwill, including registrations and applications, governed in the United States by 15 U.S.C. § 1060.
3. ASSIGNMENT & TRANSFER OF RIGHTS
3.1 Assignment. Subject to the terms of this Agreement, Assignor hereby irrevocably sells, assigns, transfers, conveys, and delivers to Assignee, and Assignee hereby accepts, all right, title, and interest worldwide in and to the Assigned IP, including (a) all causes of action and the right to sue for past, present, and future infringement or misappropriation, (b) the right to receive and retain all proceeds therefrom, and (c) all associated goodwill.
3.2 Moral Rights Waiver. To the fullest extent permitted by applicable law, Assignor hereby irrevocably waives (and shall procure the waiver of) any moral rights or similar rights in the Assigned IP.
3.3 Recordation; Cooperation. Assignor shall execute, notarize, and deliver all Assignment Documents and take all actions reasonably requested by Assignee to record and perfect Assignee’s interests with any applicable Governmental Authority or registrar.
3.4 Reserved Rights. No rights are reserved by Assignor unless expressly set forth in Schedule B (Reserved Rights), which shall be interpreted narrowly.
4. CONSIDERATION & PAYMENT TERMS
4.1 Consideration. In exchange for the Assigned IP, Assignee shall pay Assignor [Currency & Amount] (the “Consideration”), subject to the holdbacks, offsets, and escrow arrangements (if any) specified in Schedule C.
4.2 Payment Mechanics. The Consideration shall be paid via [wire transfer / escrow release] on or before [Payment Date], to the account designated in writing by Assignor.
4.3 Taxes. Each Party shall be responsible for its own taxes arising from this Agreement, except that Assignee shall withhold and remit any withholding taxes required by law and provide Assignor with appropriate tax certificates.
4.4 Late Payment. Any undisputed amount not paid when due shall accrue interest at the lesser of (i) 1.0% per month or (ii) the maximum rate permitted by applicable law, compounded monthly.
5. REPRESENTATIONS & WARRANTIES
5.1 Mutual Representations. Each Party represents and warrants that:
(a) it is duly organized, validly existing, and in good standing under the laws of its jurisdiction of formation;
(b) it has full power and authority to execute and deliver this Agreement and to perform its obligations hereunder; and
(c) this Agreement constitutes a legal, valid, and binding obligation enforceable against it in accordance with its terms.
5.2 Assignor’s Representations. Assignor further represents and warrants that:
(a) Ownership. Assignor is the sole and exclusive owner of the Assigned IP, free and clear of any lien, security interest, license, or other encumbrance.
(b) Non-Infringement. To Assignor’s Knowledge, no third party is infringing or misappropriating the Assigned IP, and the Assigned IP does not infringe, misappropriate, or violate any third-party right.
(c) No Litigation. There is no pending or threatened claim, suit, action, or proceeding contesting the validity, ownership, enforceability, or use of the Assigned IP.
(d) Maintenance Fees. All annuities, maintenance fees, and renewal fees due before the Effective Date have been paid in full.
(e) Governmental Consents. No consent, approval, or authorization of any Governmental Authority is required for Assignor to consummate the transactions contemplated herein, other than recordation of the Assignment Documents.
5.3 Survival. The representations and warranties in this Section 5 shall survive for [X] years following the Effective Date.
6. COVENANTS & RESTRICTIONS
6.1 Further Assurances. At Assignee’s expense, Assignor shall execute and deliver such additional instruments, testimonials, and other documents as Assignee may reasonably request to perfect, register, or enforce the Assigned IP.
6.2 Confidentiality. Each Party shall keep confidential all non-public information received from the other Party in connection with this Agreement for a period of [X] years.
6.3 Non-Disparagement. Assignor shall not make any statement or take any action that disparages or harms the reputation of the Assigned IP or Assignee.
6.4 Notice of Infringement. Assignor shall promptly notify Assignee in writing of any suspected infringement or misappropriation of the Assigned IP that comes to Assignor’s attention.
7. DEFAULT & REMEDIES
7.1 Events of Default. The following constitute an “Event of Default”:
(a) failure of Assignee to pay any portion of the Consideration when due and such failure continues for ten (10) days after Assignor’s written notice;
(b) any material breach by Assignor of its representations, warranties, or covenants, which breach is not cured within thirty (30) days after Assignee’s written notice; or
(c) either Party becomes insolvent, makes a general assignment for the benefit of creditors, or is the subject of a bankruptcy proceeding.
7.2 Remedies.
(a) Upon an Event of Default by Assignee, Assignor may (i) accelerate all unpaid Consideration, (ii) seek injunctive relief, and (iii) exercise all rights and remedies available at law or in equity.
(b) Upon an Event of Default by Assignor, Assignee may (i) offset or withhold unpaid Consideration, (ii) seek specific performance, and (iii) pursue damages subject to Section 8.
7.3 Attorneys’ Fees. The prevailing Party in any action to enforce this Agreement shall be entitled to recover its reasonable attorneys’ fees and costs.
8. RISK ALLOCATION
8.1 Indemnification by Assignor (Title Indemnity). Assignor shall indemnify, defend, and hold harmless Assignee, its Affiliates, and their respective officers, directors, employees, and agents from and against any and all Losses arising out of or relating to (i) any breach of Assignor’s representations, warranties, or covenants; or (ii) any claim that the Assigned IP is invalid, unenforceable, or not solely owned by Assignor as of the Effective Date.
8.2 Indemnification Procedure. The indemnified Party shall (a) promptly notify the indemnifying Party of any claim, (b) permit the indemnifying Party to control the defense and settlement, and (c) reasonably cooperate at the indemnifying Party’s expense.
8.3 Limitation of Liability. EXCEPT FOR FRAUD, WILLFUL MISCONDUCT, OR AMOUNTS PAYABLE UNDER SECTION 8.1, THE MAXIMUM LIABILITY OF EITHER PARTY UNDER THIS AGREEMENT SHALL NOT EXCEED THE AGGREGATE CONSIDERATION ACTUALLY PAID BY ASSIGNEE TO ASSIGNOR.
8.4 Exclusion of Certain Damages. NEITHER PARTY SHALL BE LIABLE FOR ANY INDIRECT, INCIDENTAL, CONSEQUENTIAL, SPECIAL, PUNITIVE, OR EXEMPLARY DAMAGES, INCLUDING LOST PROFITS OR BUSINESS INTERRUPTION, EVEN IF ADVISED OF THE POSSIBILITY THEREOF.
8.5 Insurance. [OPTIONAL] Each Party shall maintain commercially reasonable insurance in amounts sufficient to cover its obligations hereunder.
8.6 Force Majeure. Neither Party shall be liable for any delay or failure to perform caused by events beyond its reasonable control, provided that the affected Party gives prompt notice and uses commercially reasonable efforts to resume performance.
9. DISPUTE RESOLUTION
9.1 Governing Law. This Agreement and any dispute arising hereunder shall be governed by and construed in accordance with the laws of [Chosen Jurisdiction], without regard to its conflict-of-law principles.
9.2 Forum Selection; Exclusive Jurisdiction. The state and federal courts located in [Venue City & State/Country] shall have exclusive jurisdiction over any suit, action, or proceeding arising out of or relating to this Agreement, and each Party irrevocably submits to the personal jurisdiction of such courts.
9.3 Arbitration. [OPTIONAL—SELECT IF DESIRED] Any dispute not resolved by negotiation within thirty (30) days shall be finally settled by binding arbitration administered by [Arbitral Institution] under its [Rules] in effect on the date of the demand for arbitration. The seat of arbitration shall be [City, Country], and the arbitration shall be conducted in English. Judgment on the award may be entered in any court of competent jurisdiction.
[// GUIDANCE: Delete Section 9.3 if arbitration is not chosen.]
9.4 Jury Trial Waiver. EACH PARTY HEREBY WAIVES, TO THE FULLEST EXTENT PERMITTED BY LAW, ANY RIGHT TO TRIAL BY JURY IN ANY ACTION RELATING TO THIS AGREEMENT.
9.5 Injunctive Relief. Notwithstanding Section 9.3, either Party may seek interim or permanent injunctive relief or specific performance in any court of competent jurisdiction to protect its intellectual property or confidential information.
10. GENERAL PROVISIONS
10.1 Amendment; Waiver. No amendment or waiver of any provision of this Agreement shall be effective unless it is in writing and signed by both Parties. No failure or delay in exercising any right hereunder shall operate as a waiver thereof.
10.2 Assignment. Neither Party may assign or delegate this Agreement without the prior written consent of the other Party, except that Assignee may assign this Agreement to an Affiliate or successor in interest to all or substantially all of Assignee’s business or assets.
10.3 Successors & Assigns. This Agreement shall be binding upon and inure to the benefit of the Parties and their respective permitted successors and assigns.
10.4 Severability. If any provision of this Agreement is held invalid or unenforceable, the remaining provisions shall remain in full force and effect, and the invalid provision shall be reformed to the minimum extent necessary to achieve its intended purpose.
10.5 Entire Agreement. This Agreement, together with its Schedules and Assignment Documents, constitutes the entire agreement between the Parties with respect to its subject matter and supersedes all prior or contemporaneous oral or written agreements.
10.6 Counterparts; Electronic Signatures. This Agreement may be executed in any number of counterparts, each of which shall be deemed an original, and all of which together shall constitute one instrument. Signatures delivered by facsimile, PDF, or electronic signature service (e.g., DocuSign) shall be deemed effective.
10.7 Notices. All notices shall be in writing and delivered (i) by hand, (ii) by nationally recognized overnight courier, or (iii) by certified mail (return receipt requested) to the addresses set forth above, with copies to such other addresses as either Party may designate in writing.
11. EXECUTION BLOCK
IN WITNESS WHEREOF, the Parties hereto have executed this Agreement as of the Effective Date.
ASSIGNOR | ASSIGNEE |
---|---|
[Assignor Legal Name] | [Assignee Legal Name] |
By: _________ | By: _________ |
Name: _______ | Name: _______ |
Title: _______ | Title: _______ |
Date: ________ | Date: ________ |
NOTARY / WITNESS ACKNOWLEDGMENT
[// GUIDANCE: Include notarization or witness blocks if required by local law for recordation, especially for patent or trademark offices in certain jurisdictions.]
SCHEDULE A
Assigned IP (Patents, Trademarks, Copyrights, Domain Names, Trade Secrets)
SCHEDULE B
Reserved Rights (if any)
SCHEDULE C
Consideration Mechanics, Escrow, Holdbacks
[END OF AGREEMENT]