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Assignment Of Patent Rights Agreement

Assignment Of Patent Rights Agreement Generator for the USA

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Assignment Of Patent Rights Agreement

"I need an Assignment Of Patent Rights Agreement to transfer ownership of our AI-related patent portfolio (3 patents) from our startup to a large tech company as part of an acquisition, with special provisions for continued research use by our original development team."

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Document background
The Assignment Of Patent Rights Agreement is a crucial document used when transferring ownership of patent rights in the United States. It's commonly used in corporate acquisitions, technology transfers, or when restructuring intellectual property portfolios. The agreement must comply with both federal patent law (35 U.S.C.) and USPTO requirements, making it distinct from other types of asset transfers. This document is particularly important as patent rights can only be transferred through written documentation, and recording the assignment with the USPTO is necessary to protect against subsequent purchasers. The agreement typically includes specific details about the patents, representations about ownership and validity, and terms of the transfer.
Suggested Sections

1. Parties: Identification of assignor and assignee with full legal names and addresses

2. Background: Context of the assignment and identification of the patent(s) being assigned

3. Definitions: Key terms used throughout the agreement

4. Assignment: Core provision transferring all rights, title, and interest in the patent

5. Consideration: Details of payment or other consideration for the assignment

6. Representations and Warranties: Assignor's declarations regarding ownership, right to assign, and patent validity

7. Further Assurances: Commitment to execute additional documents if needed

8. Governing Law: Specification of jurisdiction governing the agreement

Optional Sections

1. Parties: Identification of assignor and assignee with full legal names and addresses

2. Background: Context of the assignment and identification of the patent(s) being assigned

3. Definitions: Key terms used throughout the agreement

4. Assignment: Core provision transferring all rights, title, and interest in the patent

5. Consideration: Details of payment or other consideration for the assignment

6. Representations and Warranties: Assignor's declarations regarding ownership, right to assign, and patent validity

7. Further Assurances: Commitment to execute additional documents if needed

8. Governing Law: Specification of jurisdiction governing the agreement

Suggested Schedules

1. Patent Schedule: Detailed list of patents being assigned including patent numbers, titles, and jurisdictions

2. Payment Schedule: If payment is structured or involves royalties, details of payment terms

3. Form PTO-1595: USPTO recording cover sheet for patent assignment

4. Patent Assignment Form: Formal assignment document for USPTO recording

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
Clauses



























Industries

35 U.S.C. (Patent Act) Section 261: Federal statute governing ownership and assignment of patents, establishing patents as personal property that can be assigned and transferred

35 U.S.C. (Patent Act) Section 262: Federal statute addressing joint ownership rights in patents and the ability of joint owners to make, use, sell and license the patent

America Invents Act (AIA): Comprehensive patent reform law affecting patent ownership and establishing the first-inventor-to-file system

State Contract Laws: State-specific laws governing contract formation, consideration requirements, and statute of frauds applicable to patent assignments

USPTO Recording Requirements: Federal regulations governing the recording of patent assignments, including Form PTO-1595 compliance and recordation procedures

Sherman Antitrust Act: Federal antitrust law that may affect patent assignments if they could result in anti-competitive effects

Clayton Act: Federal antitrust law supplementing the Sherman Act, particularly relevant for exclusive patent assignments that might substantially lessen competition

Employee Invention Laws: State and federal laws governing rights to inventions made by employees, including shop rights doctrine and employment agreement provisions

Securities Laws: Federal regulations requiring disclosure of material patent assignments for public companies and compliance with SEC requirements

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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