IP Assignment Agreement - New York

INTELLECTUAL PROPERTY ASSIGNMENT AGREEMENT

This packet is designed for counsel to document a negotiated transfer after completing the asset, ownership, consent, and filing reviews below. It does not assume that every item described as “intellectual property” is owned, transferable, registrable, or governed by the same rules.

1. Parties and Transaction

Effective date: [__/__/____]

Transaction description: [________________________________]

Business, product line, or project associated with the transfer: [________________________________]

Closing date and time: [________________________________]

2. Counsel Completion Gates

Do not sign until each applicable item is completed or marked not applicable:

• ☐ Each transferred asset is identified individually in Schedule A.
• ☐ The present owner and chain of title for each asset have been reviewed.
• ☐ Inventor, author, employee, contractor, founder, and prior-owner documents are collected in Schedule B.
• ☐ Joint owners and other required signers or consent providers are identified.
• ☐ Existing licenses, liens, security interests, restrictions, grants, settlements, and coexistence arrangements are listed in Schedule C.
• ☐ Each patent, copyright, trademark, trade-secret, domain, software, data, and contract-based item has received its own transferability review.
• ☐ Pending applications and prosecution deadlines are identified.
• ☐ Reserved rights and excluded assets are stated affirmatively in Schedule D.
• ☐ Any claim based on conduct before Closing is separately identified in Schedule E.
• ☐ Short-form instruments, consents, releases, and recordation tasks are allocated in Schedule F.
• ☐ Confidential materials have a controlled delivery method that preserves existing protections.
• ☐ Personal information, regulated data, source code, credentials, export-controlled material, and third-party content have been reviewed before delivery.
• ☐ Consideration, taxes, assumed obligations, transition services, and risk allocation are complete.
• ☐ Qualified counsel has reviewed the governing-law, forum, remedy, signature, and notice provisions selected by the parties.

3. Definitions

Assigned Assets means only the items specifically identified as included in Schedule A.

Closing means the exchange of the signed transaction documents, consideration, consents, releases, files, credentials, and other deliverables stated in this Agreement.

Excluded Assets means every item listed in Schedule D and every item not specifically included in Schedule A.

Permitted Interests means the licenses, liens, security interests, restrictions, retained rights, or other interests expressly accepted in Schedule C.

Purchase Price means [CURRENCY AND AMOUNT: ________________________________].

Transfer Documents means the asset-specific instruments and provider forms listed in Schedule F.

4. Assignment

4.1 Included Interests

At Closing, Assignor assigns to Assignee the interest described for each Assigned Asset in Schedule A, subject to the Permitted Interests and Excluded Assets.

No asset, claim, license, contract, obligation, copy, dataset, account, credential, or other right transfers merely because it relates to an Assigned Asset. A category label in this Agreement does not expand the completed schedules.

4.2 Asset-by-Asset Terms

For each item, Schedule A must state:

1. the asset type and identifying information;
2. the present owner and source of that ownership;
3. the exact interest being transferred;
4. territory, duration, field, media, and other scope limits, if any;
5. associated materials, records, goodwill, copies, or contract rights intended to transfer;
6. excluded or reserved interests;
7. required consent, notice, release, short form, or provider process; and
8. the party responsible for each filing, recordation, or account-transfer task.

4.3 Patents and Inventions

Only the patents, applications, inventions, and related interests individually listed in Schedule A are included. Continuations, divisionals, foreign counterparts, priority rights, prosecution files, and invention disclosures are included only when separately selected.

4.4 Copyrights and Works

Only the works and interests individually listed in Schedule A are included. Schedule B must identify authorship, employment or contractor status, prior grants, and any separate rights or interests requiring review. Ownership of a physical or digital copy does not by itself expand the interest described in Schedule A.

4.5 Trademarks, Names, and Goodwill

Only the marks, applications, registrations, trade names, and related business interests individually listed in Schedule A are included. The schedule must describe the associated business, products or services, quality-control materials, specimens, and goodwill intended to accompany each item. Pending applications require a separate transferability review before Closing.

4.6 Trade Secrets and Confidential Know-How

Trade-secret and confidential know-how items must be identified in a nonpublic attachment using enough detail to distinguish them without unnecessary disclosure. Schedule G must state the custodian, current access controls, delivery method, authorized recipients, and post-Closing controls.

This Agreement does not authorize disclosure or use of information owned by another person or subject to a duty the parties have not resolved.

4.7 Software, Data, Models, and Technical Materials

Schedule A must separately identify source code, object code, repositories, build tools, documentation, models, model weights, datasets, prompts, evaluation materials, interfaces, hardware dependencies, and credentials intended to transfer.

Schedule C must identify open-source components, third-party code or data, hosting terms, privacy restrictions, security obligations, and licenses that may limit use or transfer.

4.8 Domains, Accounts, and Contract-Based Rights

Domain names, social-media identifiers, marketplace accounts, cloud accounts, telephone numbers, and similar provider-based interests transfer only when listed in Schedule A and completed through the process approved by the applicable registrar or provider. Credentials must be delivered separately through the secure method in Schedule G.

4.9 Claims Based on Pre-Closing Conduct

Select one and complete Schedule E:

• ☐ Assignor retains all claims based on conduct before Closing.
• ☐ Assignor assigns only the specific pre-Closing claims identified in Schedule E, subject to counsel's transferability review.

No unidentified claim transfers under this section. Rights and claims arising after Closing follow only the ownership and scope stated elsewhere in the completed transaction documents.

5. Reserved Rights and License Back

Assignor reserves only the interests expressly stated in Schedule D.

Select one:

• ☐ No license back is granted.
• ☐ Assignee grants the license back described in Schedule D.

Any license back must state the licensed assets, permitted use, territory, term, sublicensing, transfer, confidentiality, quality control, payment, termination, and transition terms.

6. Consideration and Closing

Purchase Price and payment method: [________________________________]

Deposit, escrow, holdback, or adjustment: [________________________________]

Closing conditions: [________________________________]

At Closing, the parties shall exchange the items selected in Schedule F, which may include:

1. this signed Agreement and completed schedules;
2. asset-specific Transfer Documents;
3. required consents, notices, releases, and lien terminations;
4. files, records, prosecution histories, maintenance calendars, credentials, and tangible materials;
5. evidence of payment or escrow funding; and
6. transition instructions and named custodians.

If a listed condition is not satisfied, the affected asset is:

• ☐ excluded from Closing until a written later-closing instrument is signed;
• ☐ transferred subject to the express condition stated here: [________________]; or
• ☐ handled as stated in Schedule F.

7. Assignor Statements

Except as disclosed in Schedules B and C, Assignor states as of Closing that:

1. the ownership and interest information supplied for each Assigned Asset is accurate in all material respects;
2. the person signing for Assignor has the stated authority;
3. Assignor has disclosed known conflicting transfers, licenses, liens, security interests, claims, proceedings, consent requirements, and material deadlines in its possession or control;
4. Assignor has disclosed the provenance materials listed in Schedule B;
5. required signatures and consents identified as Closing conditions have been obtained; and
6. the files, records, and credentials delivered are the items listed in Schedule F.

No statement is made about commercial success, future validity, future registrability, noninfringement of every third-party right, or fitness for an unstated purpose unless a negotiated statement and its factual basis appear in Schedule H.

8. Assignee Responsibilities

Assignee shall:

1. pay or fund the consideration as agreed;
2. accept only the obligations expressly listed in Schedule I;
3. complete the filing, recordation, notice, and provider tasks allocated to it in Schedule F;
4. preserve the confidentiality and security controls listed in Schedule G;
5. protect credentials and transfer codes received at Closing; and
6. perform any transition obligations stated in Schedule J.

9. Further Documents and Recordation

Each party shall sign the correction instruments and asset-specific Transfer Documents reasonably necessary to evidence the transaction actually described in the completed schedules. A later document does not expand the assets or interests transferred unless it is signed as an amendment.

Documented out-of-pocket costs are allocated as follows: [________________________________].

10. Confidentiality, Security, and Delivery

Each receiving party shall use nonpublic transaction materials only for due diligence, Closing, transition, ownership, maintenance, or enforcement of the Assigned Assets, subject to Schedule G.

Approved delivery system: [________________________________]

Authorized recipients: [________________________________]

Encryption or access controls: [________________________________]

Backup, return, deletion, and incident procedures: [________________________________]

Required disclosures must be handled under the notice and protective steps selected by counsel in Schedule G.

11. Taxes and Assumed Obligations

Purchase Price allocation, if any: [________________________________]

Transfer, sales, use, withholding, franchise, or other tax allocation: [________________________________]

Tax forms or certificates: [________________________________]

Assignee assumes only the liabilities and obligations listed in Schedule I. Assignor retains liabilities and obligations not expressly assumed, subject to the parties' negotiated risk allocation.

12. Breach, Transition Failure, and Risk Allocation

Written notice of an alleged breach must identify the affected obligation, supporting facts, requested response, and any time-sensitive preservation concern.

Negotiated response or cure period: [____] days, except as separately stated for an expiring filing, confidentiality, security, preservation, or provider deadline.

The parties may pursue relief available under the law selected by counsel for a proven breach. This Agreement does not create automatic attorney's fees, presumed irreparable harm, punitive damages, bond waivers, specific performance, or any other remedy by label alone.

Any indemnity, defense duty, damages exclusion, liability cap, escrow remedy, survival period, insurance duty, or exclusive remedy must be written in Schedule K. No such term applies if Schedule K is blank.

13. Governing Law and Dispute Choices

The parties select [GOVERNING LAW] for their contract rights and duties, subject to counsel's review of any law that separately governs an asset, filing, ownership issue, or remedy.

Negotiation or escalation contacts: [________________________________]

Selected court and county, if any: [________________________________]

This Agreement contains no arbitration agreement or jury-trial waiver. If the parties want either provision, counsel must place the complete negotiated text in Schedule L, including scope, forum, rules, costs, provisional relief, confidentiality, appeal or review, and signature requirements.

Each party bears its own attorney's fees and costs unless a completed Schedule K, controlling law, court rule, or final order provides otherwise.

14. General Terms

1. Amendments. An amendment must identify this Agreement, describe the change, and be signed by the affected parties.
2. No implied waiver. A delay or one-time waiver does not waive a later or different matter.
3. Assignment of duties. Neither party may delegate an obligation under this Agreement except as stated in Schedule I or a signed amendment.
4. Notices. Contract notices must use the contacts and methods in Schedule M.
5. Entire agreement. This Agreement, its completed schedules, and the Transfer Documents contain the parties' agreement concerning this transaction.
6. Execution method. The parties shall use the signature method selected by counsel below. No notarization, witness, counterpart, or electronic-signature statement is implied by this form.
7. Severability. If a provision cannot be enforced, the remaining provisions continue only to the extent the transaction can operate without rewriting a material bargain.
8. Order of precedence. In a conflict, the order is: [________________________________].

15. Signatures

Execution method approved by counsel: [________________________________]

Additional required signers, witnesses, acknowledgments, or consents: [________________________________]

Schedule A — Assigned Assets and Transfer Scope

Patents and Inventions

Copyrights and Works

Trademarks, Names, and Goodwill

Software, Data, Models, and Technical Materials

Domains, Accounts, and Other Rights

Confidential Trade-Secret Attachment

Reference the separately controlled attachment without reproducing sensitive content here: [________________________________].

Schedule B — Provenance and Chain of Title

Schedule C — Existing Interests, Restrictions, and Consents

Schedule D — Excluded Assets, Reserved Rights, and License Back

[________________________________]

Schedule E — Identified Pre-Closing Claims

Schedule F — Closing, Consent, Filing, and Recordation Tasks

Schedule G — Confidentiality, Security, and Delivery Controls

[________________________________]

Schedule H — Additional Negotiated Statements

[________________________________]

Schedule I — Assumed Obligations

[________________________________]

Schedule J — Transition Services

[________________________________]

Schedule K — Negotiated Risk Allocation

Any indemnity, defense duty, damages exclusion, liability cap, escrow remedy, survival period, insurance duty, fee provision, or exclusive remedy must be stated here and signed or initialed by both parties.

[________________________________]

Assignor initials: [____] Assignee initials: [____]

Schedule L — Optional Arbitration or Jury-Waiver Terms

[________________________________]

Assignor initials: [____] Assignee initials: [____]

Schedule M — Notices