ip-assignment

# IP Assignment Agreement

Drafts an agreement transferring all right, title, and interest in specified IP assets from assignor to assignee.

## Prerequisites

Gather before drafting:

1. **IP inventory** — type, registration numbers, filing dates, jurisdictions, pending applications
2. **Chain of title** — prior assignments, employment/contractor agreements, co-ownership
3. **Encumbrances** — active licenses, liens, security interests
4. **Party details** — legal names, entity types, jurisdictions, signatory authority
5. **Deal terms** — consideration, payment timing, license-back, retained rights
6. **Recording requirements** — target registries (USPTO, USCO, foreign), notarization

## Quick Start

Core conveyancing language:

```
Assignor hereby irrevocably assigns, transfers, and conveys to Assignee
all right, title, and interest in and to the Assigned IP, including:
```

Then enumerate: use, reproduce, modify, distribute, sublicense, enforce rights, associated goodwill, right to sue for past/present/future infringement, renewals/extensions/continuations, and ancillary materials.

## Agreement Structure

### 1. Parties & Recitals

- Full legal name, entity type, jurisdiction, address, signatory for each party
- Flag: multiple assignors, joint ownership (all co-owners must consent), partial assignments
- Describe IP with registration-level specificity; reference exhibits for full listings
- State business context; note chain-of-title history
- Do NOT embed operative warranties in recitals

### 2. Assignment Clause

**Rights checklist:**
- [ ] Use, reproduce, modify, distribute, display, perform, sublicense, enforce
- [ ] Associated goodwill (required for trademark validity)
- [ ] Right to sue for past, present, and future infringement
- [ ] All renewals, extensions, continuations, divisionals
- [ ] Ancillary materials (source code, design files, prototypes, docs, domains)

**Scope:** geographic (worldwide or limited), temporal (full remaining term + renewals), retained rights (none or license-back).

**Registration-specific requirements:**

| IP Type | Requirement |
|---|---|
| Patents | USPTO recordation language; inventorship confirmation |
| Copyrights | Writing required per 17 U.S.C. § 204(a) [VERIFY]; specify works |
| Trademarks | Must include goodwill transfer (without = void); USPTO recording |
| Trade secrets | Confidentiality maintenance; NDA inventory |

### 3. Consideration

- Exact amount, method, timing
- Structured payments: schedule, acceleration triggers, default remedies
- Non-monetary (equity, services): describe with equal precision
- Tax allocation if bundled; specify who bears recording fees
- Payment security and assignor remedies for non-payment

### 4. Representations & Warranties

**Assignor reps:**
- [ ] Sole owner; full authority; free of liens/encumbrances
- [ ] No third-party infringement; no claims asserted or threatened
- [ ] Registered IP valid, enforceable; maintenance fees current
- [ ] All existing licenses disclosed; no inconsistent grants
- [ ] Trade secret confidentiality maintained; NDAs in place
- [ ] Compliance with applicable laws (export controls, privacy)
- [ ] Patents: accurate inventorship, duty of candor compliance
- [ ] Copyrights: originality; contributor rights obtained

**Negotiate:** knowledge qualifiers, materiality thresholds, disclosure schedules, survival periods, liability caps.

### 5. Indemnification

| Direction | Covers |
|---|---|
| Assignor → Assignee | Third-party infringement, breach of reps, pre-closing violations |
| Assignee → Assignor | Post-assignment use, modifications, combinations |

Include notice procedures, defense control, settlement approval, survival period, liability caps.

### 6. Post-Closing Obligations

**Assignor must:**
- [ ] Execute documents for registry recordings; powers of attorney for foreign filings
- [ ] Deliver all IP embodiments (originals, files, records) per agreed timeline
- [ ] Provide testimony/declarations for prosecution or enforcement
- [ ] Cease all use; remove ownership indicia
- [ ] Cooperate until all recordings complete

### 7. Boilerplate & Execution

- Governing law (note: patent = federal; copyright = federal; trademark = federal + state)
- Jurisdiction/venue; equitable relief carve-out
- Entire agreement, amendment, severability, notice, counterparts
- Signature blocks matching entity types; notarization if required for recording
- Multiple originals if recording in multiple jurisdictions

## Critical Checks

- Trademark assignments **must** include goodwill or assignment is void
- Copyright assignments **must** be in writing per 17 U.S.C. § 204(a) [VERIFY]
- Confirm chain of title — employment agreements, prior assignments, co-ownership can defeat transfer
- Patent assignments: USPTO-compliant recordation language; duty of candor compliance
- If part of larger asset purchase, ensure IP assignment is independently enforceable
- Use exhibits/schedules for IP listings; don't embed in operative text
- Flag jurisdiction-specific formalities (foreign filings may need legalization/apostille)
- Never assume IP is unencumbered — require disclosure of all licenses and liens