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Confirmatory Patent Assignment
"I need a Confirmatory Patent Assignment to formalize the transfer of three software patents from my Canadian tech startup to a large multinational corporation, confirming an informal assignment that took place during our acquisition in January 2025."
1. Parties: Identification of the Assignor (original patent owner) and Assignee (recipient of patent rights), including full legal names and addresses
2. Background: Context of the original assignment and reason for confirmatory assignment, including date of original transfer and any relevant historical information
3. Definitions: Key terms used in the agreement, including 'Patents', 'Intellectual Property Rights', 'Original Assignment', etc.
4. Confirmation of Assignment: Express confirmation of the previous assignment and transfer of all rights, title, and interest in the Patents
5. Representation of Authority: Assignor's confirmation of their right and authority to make the assignment
6. Warranties: Basic warranties regarding ownership, right to assign, and no encumbrances
7. Further Assurances: Commitment to execute additional documents and take necessary actions to perfect the assignment
8. Governing Law: Specification of Canadian law as governing law
9. Execution: Signature blocks and execution requirements
1. Consideration: Required if additional consideration is being provided for the confirmatory assignment
2. Prior Licenses and Encumbrances: Needed if there are existing licenses or encumbrances that need to be acknowledged
3. Tax Provisions: Required if there are specific tax implications or allocations to be addressed
4. Registration: Include if specific requirements for patent office registration need to be addressed
5. Confidentiality: Required if confidential information is being disclosed as part of the confirmation process
6. Multiple Jurisdictions: Needed if the patents are registered in multiple countries
7. Successor Rights: Include if specific provisions about successors and assigns need to be addressed
1. Schedule A - Patent Details: Detailed list of patents being assigned, including registration numbers, jurisdictions, and titles
2. Schedule B - Original Assignment Documentation: Copy or details of the original assignment being confirmed
3. Schedule C - Chain of Title: If relevant, documentation showing chain of title from original inventor to current assignor
4. Appendix 1 - Form 21 (Patent Office Forms): Required forms for recording the assignment with the Canadian Intellectual Property Office
5. Schedule D - Related Rights: List of related rights, such as divisional applications, continuations, or foreign counterparts
Authors
Technology & Software
Pharmaceuticals & Healthcare
Manufacturing & Industrial
Biotechnology
Research & Development
Aerospace & Defense
Chemical & Materials
Electronics & Semiconductors
Energy & Utilities
Automotive
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Academic & Research Institutions
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Intellectual Property
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Intellectual Property Counsel
Patent Attorney
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Patent Agent
Innovation Manager
Research Director
Technology Transfer Officer
Chief Technology Officer
Chief Legal Officer
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Research & Development Director
Business Development Manager
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