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Assignment And License Of Patent

Assignment And License Of Patent Template for Canada

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Assignment And License Of Patent

"I need an Assignment And License Of Patent agreement for transferring ownership of our software encryption patent to a larger tech company, while retaining a non-exclusive license to continue using the technology in our existing products in Canada, with the transfer to be completed by March 2025."

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Document background
The Assignment And License Of Patent agreement is a sophisticated legal instrument used when a party wishes to transfer patent ownership while retaining certain usage rights through a license-back arrangement, or when the acquiring party wishes to grant specific licenses to the seller or third parties. This document is particularly crucial in Canadian business transactions involving intellectual property transfers, mergers and acquisitions, technology commercialization, and research partnerships. It must comply with Canadian Patent Act requirements and provincial commercial laws, incorporating specific provisions for patent assignment registration with the Canadian Intellectual Property Office (CIPO). The agreement typically includes detailed specifications of the patent rights being transferred, license terms, territorial restrictions, field-of-use limitations, and compensation structures, making it essential for technology transfers, corporate restructuring, and intellectual property portfolio management.
Suggested Sections

1. Parties: Identification of the Assignor/Licensor and Assignee/Licensee with full legal names and addresses

2. Background: Context of the agreement, including patent details and purpose of the assignment and license

3. Definitions: Key terms used throughout the agreement, including technical terms, Patent Rights, Territory, and Field of Use

4. Assignment: Terms of the patent rights transfer, including scope and effectiveness date

5. License Grant: Specific rights being licensed back to the Assignor or to the Assignee

6. Consideration: Financial terms, including assignment price and any ongoing royalties or licensing fees

7. Representations and Warranties: Assertions regarding patent ownership, validity, and non-infringement

8. Registration and Recordal: Obligations regarding patent office recordings and maintenance

9. Confidentiality: Protection of confidential information exchanged during the agreement

10. Term and Termination: Duration of the license portion and circumstances for termination

11. General Provisions: Standard clauses including governing law, notices, and entire agreement

Optional Sections

1. Improvements: Handling of future improvements to the patented technology, used when ongoing development is expected

2. Sublicensing Rights: Terms for granting sublicenses, included when sublicensing is permitted

3. Quality Control: Standards for implementing the patented technology, used for maintaining patent value

4. Foreign Rights: Provisions for international patent rights, included for multi-jurisdictional patents

5. Technology Transfer: Terms for transferring technical knowledge, included when technical assistance is needed

6. Patent Marking: Requirements for marking products with patent numbers, used for physical products

7. Dispute Resolution: Specific procedures for handling disputes, used for international agreements or complex relationships

Suggested Schedules

1. Schedule A - Patent Details: Comprehensive list of patents being assigned/licensed, including registration numbers and jurisdictions

2. Schedule B - Technical Documentation: Details of technical information and know-how related to the patent

3. Schedule C - Payment Terms: Detailed breakdown of financial terms, including payment schedules and calculation methods

4. Schedule D - Implementation Timeline: Timeline for transfer of rights and any associated obligations

5. Appendix 1 - Form of Patent Assignment: Standard form for patent office recording of the assignment

6. Appendix 2 - Technology Transfer Plan: Detailed plan for transferring technical knowledge and support

Authors

Alex Denne

Head of Growth (Open Source Law) @ ¶¶Òõ¶ÌÊÓƵ | 3 x UCL-Certified in Contract Law & Drafting | 4+ Years Managing 1M+ Legal Documents | Serial Founder & Legal AI Author

alex.den.21@genieai.co
Relevant legal definitions






































Clauses






























Relevant Industries

Technology and Software

Pharmaceutical and Biotechnology

Manufacturing and Industrial

Research and Development

Healthcare and Medical Devices

Telecommunications

Automotive

Chemical Engineering

Clean Technology

Consumer Electronics

Relevant Teams

Legal

Intellectual Property

Research and Development

Executive Leadership

Business Development

Technology Transfer Office

Corporate Development

Innovation

Mergers and Acquisitions

Regulatory Affairs

Relevant Roles

Intellectual Property Lawyer

Patent Attorney

Chief Technology Officer

Research and Development Director

Innovation Manager

Legal Counsel

Patent Agent

Technology Transfer Manager

Chief Executive Officer

Intellectual Property Portfolio Manager

Business Development Director

Corporate Counsel

Chief Legal Officer

Technology Licensing Officer

Industries







Teams

Employer, Employee, Start Date, Job Title, Department, Location, Probationary Period, Notice Period, Salary, Overtime, Vacation Pay, Statutory Holidays, Benefits, Bonus, Expenses, Working Hours, Rest Breaks,  Leaves of Absence, Confidentiality, Intellectual Property, Non-Solicitation, Non-Competition, Code of Conduct, Termination,  Severance Pay, Governing Law, Entire Agreemen

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