IP Assignment Agreement - Delaware

INTELLECTUAL PROPERTY ASSIGNMENT AGREEMENT (DELAWARE)

This Intellectual Property Assignment Agreement is made on [__/__/____] by [ASSIGNOR LEGAL NAME], of [ADDRESS] ("Assignor"), and [ASSIGNEE LEGAL NAME], of [ADDRESS] ("Assignee").

The parties agree as follows:

1. Assigned Assets and Closing

Closing date: [__/__/____]. Purchase price: [CURRENCY AND AMOUNT].

"Assigned Assets" means only the assets and interests specifically identified in the completed Schedule A. "Excluded Assets" means those in Schedule D. Schedule B lists licenses, liens, consents, and other permitted interests. An unlisted asset or contract does not transfer merely because it relates to an Assigned Asset.

At Closing, in exchange for the purchase price and other promises in this Agreement, Assignor hereby assigns to Assignee all of Assignor's right, title, and interest in the Assigned Assets, subject to Schedule B and the asset-specific terms below. If a required consent or transfer condition has not been satisfied, the affected asset is excluded until the parties sign a later instrument identifying it. This Agreement does not itself assign a third party's rights.

2. Asset-Specific Transfers

2.1 Copyrights

For each work identified in Schedule A, this signed Agreement conveys only the copyrights and exclusive rights, territory, and term stated there. No work made for hire, underlying creator interest, or third-party license is assumed to belong to Assignor merely because it possesses a copy. Any applicable author's termination right under 17 U.S.C. § 203 remains subject to that statute.

This Agreement does not waive an author's rights under 17 U.S.C. § 106A. If a separate waiver is desired for an eligible work of visual art, it must be in a writing signed by the author that identifies the work and permitted uses.

2.2 Patents and Applications

For each patent or application identified in Schedule A, this written instrument conveys the stated interest. The parties shall sign the short-form documents listed in Schedule C and allocate recordation responsibility there. A party responsible for United States Patent and Trademark Office recordation shall submit the required materials promptly and keep proof of submission. The priority rule in 35 U.S.C. § 261 protects against the specified later purchaser or mortgagee for value without notice if recording occurs within three months after the assignment or before the later transaction; it does not make recording a condition of this transfer between the parties.

2.3 Trademarks and Goodwill

For each mark identified in Schedule A, Assignor conveys the mark with the goodwill of the business, or the identified portion of that goodwill, connected with its use and symbolized by the mark. Schedule A must describe that business or portion.

An application filed under 15 U.S.C. § 1051(b) before a qualifying amendment or verified statement of use is excluded unless Schedule A specifically documents a transfer to a successor to the applicant's ongoing and existing business, or relevant portion of it, permitted by 15 U.S.C. § 1060(a)(1). Any excluded application requires a later signed assignment after a permitted transfer route exists. The party named in Schedule C shall submit prescribed assignment information for recordation promptly and retain proof. Section 1060(a)(4)'s three-month rule concerns priority against a later purchaser for value without notice, not validity between these parties.

2.4 Trade Secrets and Other Confidential Material

Assignor transfers only its interest in information identified in the confidential portion of Schedule A. The parties shall use the access controls and delivery method in Schedule C to preserve secrecy. Neither party receives a right to disclose another person's confidential information without authority. Under 6 Del. C. § 2001(4), trade-secret status depends in part on reasonable efforts to maintain secrecy; a label in this Agreement alone does not establish that status.

2.5 Domain Names and Accounts

The domain names and provider accounts listed in Schedule A transfer only to the extent the relevant registrar or provider permits transfer and its required steps are completed. The responsible party and credentials-delivery method are stated in Schedule C.

2.6 Past Claims

Claims arising from conduct before Closing transfer only if individually described in Schedule E and legally transferable. If Schedule E is blank, Assignor retains those claims. Neither party represents that this clause cures any missing standing, ownership, or limitation-period issue.

3. Payment and Delivery

Assignee shall pay [AMOUNT] by [METHOD] on [PAYMENT DATE], subject to the escrow or holdback terms in Schedule C, if any. At Closing, Assignor shall deliver the Assigned Asset files, prosecution and registration records, transfer credentials, and other items listed in Schedule C. The parties shall execute the asset-specific short forms and consents listed there. Each party bears its own taxes unless Schedule C states a different agreed allocation consistent with applicable law.

4. Representations

Assignor represents as of Closing, except as disclosed in Schedule B, that:

1. it owns the interest stated for each Assigned Asset and has authority to convey that interest;
2. it has disclosed known licenses, liens, security interests, co-owners, required consents, and adverse written claims concerning that interest;
3. it has not granted a conflicting transfer omitted from Schedule B; and
4. the factual asset identifiers and maintenance information it supplied in the schedules are materially accurate.

Assignee represents that it has authority to sign this Agreement and will pay the agreed price. Neither party warrants commercial success, future registration, validity, or freedom from all third-party claims unless a specific negotiated warranty is written in Schedule F.

5. Further Assurances and Confidentiality

Each party shall sign correction instruments reasonably needed to evidence the transfer actually made here. The requesting party shall reimburse documented out-of-pocket expenses unless Schedule C says otherwise. A correction instrument cannot add an unlisted asset without a signed amendment.

Each party shall keep nonpublic information received for this transaction confidential, use it only to complete or administer the transfer, restrict access to persons bound by appropriate duties, and follow the safeguards in Schedule C. A legally required disclosure may be made after notice to the other party when lawful and reasonable efforts to limit disclosure.

6. Breach and Risk Allocation

A party alleging material breach shall give written notice describing the breach and requested cure. The other party has [NUMBER] days after receipt to cure, unless waiting would impair a filing or preservation deadline or the breach cannot be cured. For a proven breach, the parties may seek remedies available under applicable law. No remedy is automatic by reason of this Agreement.

Any indemnity, defense procedure, liability cap, damages exclusion, or fee-shifting agreement applies only if completed and signed by both parties in Schedule F. A blank Schedule F creates none of those terms. The commencement of an insolvency or bankruptcy proceeding alone is not a contractual default.

7. Governing Law and General Terms

Delaware law governs the parties' contractual duties, while applicable federal law governs the transfer formalities and federal recordation consequences for federal intellectual property. The parties consent to courts of competent jurisdiction in Delaware for disputes concerning this Agreement, subject to any court's independent jurisdictional requirements. No arbitration agreement or jury waiver is created here.

An amendment must be in a writing signed by both parties. Neither party may delegate its unperformed duties without the other's written consent. If a provision is unenforceable, the remainder remains effective to the extent the essential exchange can still be performed. This Agreement and its completed schedules and short forms constitute the entire agreement concerning the Assigned Assets. Notices shall be sent by [PERSONAL DELIVERY / TRACKED COURIER / EMAIL WITH RECEIPT] to the addresses below or to an updated address given by written notice.

8. Signatures

Schedule A — Assigned Assets

For each asset, state type, title or mark, current owner, registration or application number (if any), jurisdiction, exact interest transferred, and any expiration or maintenance date. For copyright, state the exclusive rights, territory, and term. For trademarks, identify the associated business or portion and goodwill. If a pre-use intent-to-use application is included, document the permitted ongoing-and-existing-business successor transfer. Place confidential trade-secret detail in a separately protected attachment referenced here.

[ASSET-BY-ASSET DESCRIPTION: ________________________________________________________________]

Schedule B — Existing Interests and Required Consents

[LICENSES / CO-OWNERS / LIENS / SECURITY INTERESTS / ADVERSE CLAIMS / CONSENTS: __________________]

Schedule C — Closing, Delivery, and Recordation

[PAYMENT / ESCROW / SHORT FORMS / CONSENTS / DELIVERABLES / SAFEGUARDS / RESPONSIBLE PARTY AND RECORDATION METHOD: ________________________________________________]

Schedule D — Excluded Assets and Reserved Rights

[____________________________________________________________]

Schedule E — Claims for Conduct Before Closing

[INDIVIDUAL CLAIMS ASSIGNED, OR "NONE": ________________________________________________]

Schedule F — Additional Negotiated Risk Terms

[SPECIFIC WARRANTIES / INDEMNITY / DEFENSE / CAP / FEE TERM, IF AGREED: _______________________]