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Confirmatory Patent Assignment Template for Canada

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Key Requirements PROMPT example:

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."

Document background
The Confirmatory Patent Assignment is essential in Canadian intellectual property practice when there is a need to formally document or reinforce a previous transfer of patent rights. This situation commonly arises when the original assignment was informal, inadequately documented, or requires additional clarity for legal or administrative purposes. The document is particularly important for compliance with the Canadian Patent Act and Patent Rules, as it helps establish a clear chain of title for patent rights. It contains specific details about the patents, parties involved, and the circumstances of the original transfer, while also including necessary declarations and warranties required by Canadian law. This type of agreement is frequently used in corporate transactions, technology transfers, or when updating records with the Canadian Intellectual Property Office.
Suggested Sections

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

Optional Sections

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

Suggested Schedules

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

Alex Denne

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

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Relevant Industries

Technology & Software

Pharmaceuticals & Healthcare

Manufacturing & Industrial

Biotechnology

Research & Development

Aerospace & Defense

Chemical & Materials

Electronics & Semiconductors

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Consumer Products

Academic & Research Institutions

Relevant Teams

Legal

Intellectual Property

Research & Development

Innovation

Technology Transfer

Business Development

Corporate Development

Licensing

Patents

Commercial

Relevant Roles

Intellectual Property Counsel

Patent Attorney

Legal Counsel

Corporate Lawyer

Patent Agent

Innovation Manager

Research Director

Technology Transfer Officer

Chief Technology Officer

Chief Legal Officer

IP Portfolio Manager

Research & Development Director

Business Development Manager

Licensing Manager

Commercial Contracts Manager

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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