Patent Assignment - Checklist
Drafting notes
This checklist is designed to highlight issues that commonly arise during the negotiation and drafting of patent assignment agreements.
Checklist
(A) Key commercial considerations | Notes |
Parties: confirm each party's legal status and whether any third parties (such as group affiliates) will benefit from the proposed agreement. | |
Commencement/effective date: confirm proposed commencement, effective or assignment date. | |
Key definitions | |
Patents: identify the patents to which the proposed assignment relates. Confirm the status of such patents on the Register. | |
Patent applications: identify whether the assignment is to include any patent applications and confirm the status of such applications. | |
Supporting materials: identify what additional materials the assignor shall supply to assignee, such as know-how, documents, diagrams, methods, or other information. | |
Dealing with the patents | |
Ownership and use of the patents: identify who owns the relevant patent or patent application. | |
Title guarantee: confirm whether or not an assignor can assign by way of full or limited title guarantee. | |
Rights in the patents or patent applications: consider whether the assignment is to relate to all rights in patents or patent applications or if it will be limited to only certain rights. |