Intellectual property assignments
We supply five different intellectual property assignment templates. The choice of intellectual property assignment is straightforward. If you want to assign the rights in one or more copyright works, use the assignment of copyright template; if you want to assign the rights in one or more registered or unregistered trade marks, use the assignment of trade marks template; and if you want to assign a mixed bag of intellectual property rights, use the assignment of IP template. The assignments of rights specific to software and websites are lightly adapted versions of the assignment of copyright.
Key provisions of IPR assignments
Assignments can be amongst the most straightforward of commercial legal documents. The most important clause will usually be the one that gives effect to the assignment itself.
Although the concept of an assignment is simple, you do need to decide exactly what it is that you will be assigning. These templates distinguish between registered rights, which are identified by reference to their registration details, and unregistered rights, which are identified by reference to the work or other thing in which the right subsists.
You will need to decide whether you are assigning "all rights" in the relevant subject matter, or only those rights that the assignor actually owns. In effect, a reference to "all rights" constitutes and assurance that the assignor does actually own all the rights. This can be made explicit by assigning the rights "with full title guarantee" or including a warranty to the same effect.
Assignments should also state clearly whether they carry with them the right to bring proceedings in respect of infringements that pre-date the assignment, and whether they cover rights that are not yet in existence. There is no problem under English law with assignments of future rights: but it should be clear whether this is the intention.
"Further assurance" clauses in intellectual property rights assignments are designed to help assure the assignee that there the assignment will not be prejudiced or defeated by any technical or procedural rules concerning the transfer of the relevant rights.
The clause included in these assignments states that the assignor "agrees to execute (and arrange for the execution of) any documents and do (and arrange for the doing of) any things reasonably within the Assignor’s power, which are necessary to enable the Assignee to exercise its rights under this Assignment".