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Patent assignment agreement
I need a patent assignment agreement to transfer ownership of a patent from an individual inventor to a corporation, ensuring that all rights, titles, and interests are conveyed. The agreement should include clauses for confidentiality, consideration, and warranties of ownership, and be compliant with Indonesian intellectual property laws.
What is a Patent assignment agreement?
A Patent assignment agreement transfers ownership rights of a patent from one party to another, creating a legally binding change in who controls and profits from the invention. In Indonesia, these agreements must follow the requirements set out in Law No. 13 of 2016 on Patents and be registered with the Directorate General of Intellectual Property Rights.
The agreement spells out key details like payment terms, the scope of rights being transferred, and any ongoing obligations between parties. Common scenarios include companies buying patents from inventors, transferring IP during mergers, or moving patent rights between parent and subsidiary firms. Getting the agreement properly documented and registered helps protect both sides and makes the transfer officially recognized under Indonesian law.
When should you use a Patent assignment agreement?
Patent assignment agreements become essential during major business transitions in Indonesia. Companies need them when acquiring patent rights from inventors, selling patents to other businesses, or transferring IP assets during mergers and acquisitions. Startups often use these agreements when bringing innovations in-house from their founders or external developers.
These agreements prove particularly valuable when spinning off divisions, restructuring company ownership, or settling disputes over patent rights. Indonesian law requires proper documentation and registration with the Directorate General of IP Rights to make the transfer valid. Moving quickly to formalize these agreements helps prevent ownership disputes and protects the value of your intellectual property investments.
What are the different types of Patent assignment agreement?
- Full Assignment: Transfers all patent rights completely to the new owner, common in acquisitions or when companies buy patents outright from inventors
- Partial Assignment: Grants specific rights while the original owner retains others, often used in joint ventures or regional licensing deals
- Future Rights Assignment: Covers patents still pending or future improvements, popular with research institutions and tech companies
- Employee Innovation Assignment: Used when transferring patent rights from employees to their employer, following Indonesian labor and IP laws
- Security Interest Assignment: Temporarily transfers patent rights as collateral for financing, common in business loans
Who should typically use a Patent assignment agreement?
- Patent Inventors: Individual creators or research teams who developed the patented technology and want to transfer their rights
- Corporate Legal Teams: Draft and review patent assignment agreements to ensure compliance with Indonesian IP laws
- IP Attorneys: Specialized lawyers who structure the agreements and handle registration with the Directorate General of IP Rights
- Company Executives: Authorized signatories who execute the agreements during acquisitions or strategic partnerships
- Research Institutions: Universities and R&D centers that regularly transfer patent rights to commercial partners
- Patent Brokers: Intermediaries who facilitate patent transfers between buyers and sellers in Indonesia's tech sector
How do you write a Patent assignment agreement?
- Patent Details: Gather complete patent registration numbers, filing dates, and invention descriptions from Indonesian IP records
- Party Information: Collect legal names, registration numbers, and authorized representatives of both assignor and assignee
- Rights Scope: Define exactly which rights are being transferred and any limitations or retained rights
- Consideration Terms: Document the agreed payment amount, schedule, and any ongoing royalty arrangements
- Supporting Documents: Prepare proof of patent ownership, company registration certificates, and signing authority
- Registration Plan: Schedule registration with the Directorate General of IP Rights within 30 days of signing
What should be included in a Patent assignment agreement?
- Identification Section: Full legal names and details of assignor, assignee, and the patent being transferred
- Assignment Declaration: Clear statement of rights transfer, following Indonesian Patent Law requirements
- Consideration Clause: Specific payment terms or value exchange for the patent transfer
- Rights Description: Detailed scope of patent rights being assigned, including any limitations
- Warranties: Assignor's confirmation of patent ownership and right to transfer
- Registration Terms: Process for recording the transfer with IP authorities
- Governing Law: Explicit reference to Indonesian law and jurisdiction
- Execution Block: Proper signature format for all parties and witnesses
What's the difference between a Patent assignment agreement and an Intellectual Property assignment agreement?
A Patent assignment agreement differs significantly from an Intellectual Property assignment agreement. While both handle IP transfers in Indonesia, they serve distinct purposes and have different scopes.
- Scope of Rights: Patent assignments focus exclusively on transferring patent rights, while IP assignments can cover multiple types of intellectual property including copyrights, trademarks, and trade secrets
- Registration Requirements: Patent transfers must be specifically registered with the Indonesian Patent Office, while general IP assignments may have different filing requirements depending on the type of IP
- Technical Detail: Patent assignments require detailed technical descriptions and patent numbers, whereas IP assignments can use broader descriptive language
- Legal Framework: Patent assignments follow Indonesia's Patent Law No. 13/2016, while IP assignments may involve multiple IP laws and regulations
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