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.