This Patent Assignment (hereinafter referred to as the “Assignment”) is made and entered into on [Insert Effect Date] (the “Effective Date”) by and between the following parties:
[Insert Assignor Name]
[Insert Assignor Address]
[Insert Assignee Name]
[Insert Assignee Address]
WHEREAS the Assignor is the sole and rightful owner of certain ideas, inventions, patent applications therefor and patents thereon (collectively referred to as the “Patents”) set forth in Exhibit A attached hereto; and
WHEREAS, the Assignee desires to purchase or acquire the Assignor’s right, title, and interest in and to the Patents; and
WHEREAS, the Assignor and Assignee are both duly authorized and capable of entering into this Assignment.
NOW, THEREFORE, for valuable consideration, the receipt of which is acknowledged, the parties hereto agree as follows:
The Assignor does hereby sell, assign, transfer and set over to Assignee [Insert Amount]% of its right, title, and interest in the Patents to Assignee for the entire term of the Patents and any reissues or extensions and for the entire terms of any patents, reissues or extensions that may issue from foreign applications, divisions, continuations in whole or part or substitute applications filed claiming the benefit of the Patents. The right, title, and interest conveyed in this Assignment is to be held and enjoyed by Assignee and Assignee’s successors as fully and exclusively as it would have been held and enjoyed by Assignor had this assignment not been made.
The Assignor authorizes United States Patent and Trademark Office and any other applicable jurisdictions outside the United States to record the transfer of the patent and/or patent applications set forth in Exhibit A to Assignee as the recipient of Assignor’s right, title, and interest therein.
Assignor further agrees to: (a) cooperate with Assignee in the protection of the patent rights and prosecution and protection of foreign counterparts; (b) execute, verify, acknowledge and deliver all such further papers, including patent applications and instruments of transfer; and (c) perform such other acts as Assignee lawfully may request to obtain or maintain the Patents and any and all applications and registrations for the invention in any and all countries.
Assignor warrants that Assignor is the legal owner of all right, title, and interest in the Patents, that the Patents have not been previously pledged, assigned, or encumbered, and that this Assignment does not infringe on the rights of any person.
This Assignment is governed by and is to be construed in accordance with the laws of the State of [Insert State].
This Assignment constitutes the sole agreement of the parties and supersedes all oral negotiations and prior writings with respect to the subject matter hereof.
If one or more provisions of this Assignment are held to be unenforceable under applicable law, the parties agree to renegotiate such provision in good faith. If the parties cannot reach a mutually agreeable and enforceable replacement for such provision, then (i) such provision will be excluded from this Assignment, (ii) the balance of the Assignment will be interpreted as if such provision were so excluded and (iii) the balance of the Assignment will be enforceable in accordance with its terms.
EACH PARTY ACKNOWLEDGES THAT, IN EXECUTING THIS AGREEMENT, SUCH PARTY HAS HAD THE OPPORTUNITY TO SEEK THE ADVICE OF INDEPENDENT LEGAL COUNSEL, AND HAS READ AND UNDERSTOOD ALL OF THE TERMS AND PROVISIONS OF THIS AGREEMENT. THIS AGREEMENT WILL NOT BE CONSTRUED AGAINST ANY PARTY BY REASON OF THE DRAFTING OR PREPARATION HEREOF.
IN WITNESS whereof, the Assignor and Assignee have executed this Agreement as of the Effective Date.
ASSIGNOR:
By: ___________________________________ Date: __________________
[Insert Name of Assignor]
ASSIGNEE:
By: ___________________________________ Date: __________________
[Insert Name of Assignee]
List of Patents
U.S. Patent/Application number: _________________
Dated: _________________
Title: _________________