Patentent Assignment
V.G.Rao Advocate
(Querist) 11 January 2009
This query is : Resolved
Hi all,
I need a patent assignment document relating on any subject(on any invented property or things, or medicines etc) , since i require the same as a proforma.
sanjeev murthy desai
(Expert) 15 January 2009
THIS ASSIGNMENT dated [………………………………………………….] 200[5] is made BETWEEN:
(1) [……………………………….], whose administrative offices are at [……………………………………………………………………..] (the University); and
(2) […………………………………….] [LIMITED], a company registered in [England] under number [……..], whose registered office is at […………………………………..] (the Assignee).
BACKGROUND
The University is the proprietor of [UK] patent number [………………], entitled […………………………………………..] (the Patent), and has agreed to assign the Patent to the Assignee on the terms set out in this Assignment.
1. ASSIGNMENT
1.1 In consideration of the sum of £[insert amount], receipt of which the University acknowledges, the University now assigns to the Assignee the full and exclusive benefit of the Patent, including the right to recover and take all such proceedings as may be necessary for the recovery of damages or other remedies in respect of all infringements of the Patent, whether committed before or after the date of this Assignment.
1.2 [The Assignee will provide the University with such information that as the University may reasonably request from time to time to demonstrate that the Assignee is exploiting or is taking reasonable steps towards exploiting the Patent. If the Assignee does not demonstrate that it is exploiting the Patent or is taking reasonable steps towards exploiting it, the Assignee will, if requested to do so by the University, reassign the Patent to the University. The Assignee will notify the University if the Assignee decides not to proceed with the exploitation of the Patent and will, if requested to do so by the University, reassign the Patent to the University.]
2. FURTHER ASSURANCE
The University will, at the request and cost of the Assignee, execute or procure the execution of such documents and do or procure the doing of such acts and things as the Assignee may reasonably require to enable the Assignee, or its nominee, to enjoy the full benefit of the rights now assigned to it.
3. WARRANTIES AND LIABILITY
3.1 [The assignment in clause 1.1 is made with full title guarantee.] OR [The University warrants to the Assignee that, in relation to the assignment in clause 1.1:
3.1.1 the University has the right to dispose of the Patent and that the University it will, at its own cost, do all that it reasonably can to give the title that it purports to give; and
3.1.2 that the Patent is free from all charges and encumbrances and rights of any third party (except those that the University is unaware or could not reasonably be aware of).]
OR
3.1 [The University warrants as follows:
3.1.1 as between it and its employees and students, it is the absolute and unencumbered owner of the Patent and has caused its employees and students to execute such assignments of the Patent as may be necessary;
3.1.2 it is not aware that any third party owns or claims any rights in the Patent;
3.1.3 it is not aware (but without having carried out any investigation) that any third party owns or claims any rights which would be infringed by use of the Patent.]
3.2 Each of the parties acknowledges that, in entering into this Agreement, it has not relied on any warranty, representation or undertaking except those expressly set out in this Agreement and each party waives any claim for breach of any representation (unless made fraudulently) which is not specifically contained in this Agreement as a warranty.
3.3 [Subject to the warranty in clause 3.1, the][The] University, the University does not give any warranty, representation or undertaking:
3.3.1 as to the efficacy or usefulness of the Patent; or
3.3.2 that the Patent is or will be valid or subsisting or (in the case of an application) will proceed to grant; or
3.3.3 that the use of the Patent, the manufacture, sale or use of any product that is within any claim of the Patent will not infringe any intellectual property or other rights of any other person; or
3.3.4 that any
Hiralal Das
(Expert) 06 April 2009
Thanks all of you the ld. members and the author.
