Patent Assignment Agreement: Definition & Sample

A patent assignment agreement is a document that transfers the rights to an invention or idea from one person or company to another. This agreement includes all necessary information such as the name and contact information for both parties, any limitations on what can be done with the patented technology, and how much money should change hands if someone licenses the patent.

Patent assignment agreements are not always needed when selling a product or process, but they need to be written if you want to protect your intellectual property (IP) rights and make sure no one else uses them without permission.

Common Sections in Patent Assignment Agreements

Below is a list of common sections included in Patent Assignment Agreements. These sections are linked to the below sample agreement for you to explore.

Patent Assignment Agreement Sample

PATENT ASSIGNMENT AGREEMENT

LENOVO (BEIJING) LIMITED,

LEGEND HOLDINGS LIMITED

for and on behalf of LWY

Agreement Reference Number

This PATENT ASSIGNMENT AGREEMENT , dated as of October 19, 2004, is entered into by and between Lenovo (Beijing) Limited, a company established under the laws of the People’s Republic of China (“ Assignor ”), and Legend Holdings Limited, Yu Bing and Wang Zheng, for and on behalf of LWY (as defined below) (“ Assignee ”). Assignor on the one hand, and Assignee on the other hand, are each sometimes referred to herein as a “ Party ” and collectively as the “ Parties ” to this Agreement.

WHEREAS , Assignor has the right to assign the “Assigned Patents” as defined below and Assignee desires to acquire an ownership interest in the Assigned Patents subject to licence back;

WHEREAS , the parties agree to the assignment of patent rights in conjunction with the assignment of other tangible and intangible assets pursuant to other Transaction Agreements, as defined in the Acquisition Agreement dated as of July 27, 2004, as supplemented and amended (the “ Acquisition Agreement ”).

NOW THEREFORE , in consideration of the premises and mutual covenants herein contained, Assignor and Assignee agree as follows:

Section 1. Definitions

1.1 Definitions. The capitalized terms used in this Agreement have the respective meanings set forth on Schedule 1.1 or as defined herein. All other capitalized terms used and not otherwise defined in this Agreement have the respective meanings set forth in the Acquisition Agreement.

1.2.1 “ Assigned Patents ” shall mean all patents, including inventions, utility models and design patents and registrations and applications assigned by Assignor to Assignee pursuant to the Acquisition Agreement and identified in Exhibit A hereto.

1.2.2 “ Business ” means the provision by Purchaser or its Subsidiaries after the Closing Date of products and services (other than hardware maintenance and support services) offered by the Business (other than the Telecommunications Applications Services Division or the Insurance IT Services Division) prior to the Closing Date (and any such product or service after the Closing Date whose components have been enhanced or upgraded if the resulting product or service provides the same function as the product or service to which it is a successor) to any customer segment, but in all events excluding (i) products and services offered or provided to individual customers and consumers and (ii) activities relating to Server Products or terminal devices of any kind, including, without limitation, personal digital assistants (PDAs), personal computers, mobile phone handsets, etc. For the purpose of this Agreement “Server Products” means any server, blade, thin client or similar product generally used through a network where access to such server or product may be shared simultaneously by multiple users, accessed by a single user, or another server product(s).

1.2.3 “ Intellectual Property Rights ” means all rights, title and interest in and to any Intellectual Property.

1.2.4 “ LWY ” means the corporation to be incorporated pursuant to Section 5.1 of the Supplement.

1.2.5 “ Supplement ” means the Supplement and Amendment No.1 to Acquisition Agreement entered into between Assignor and Assignee as of October 1, 2004.

1.2.6 “ Third Party ” means a Person other than a Party or any director, officer or employee of a Party or an Affiliate of a Party or their successors and assigns hereunder.

Section 2. Assignment

2.1 Assignor shall transfer and assign to Assignee all of Assignor’s right, title and interest to any and all patent ownership interest Assignor may have throughout the world in and to the Assigned Patents as of the Closing Date.

2.2 Assignee shall be solely responsible for all actions and all costs whatsoever, including attorney’s fees, arising after the Closing Date and associated with the perfection of rights, title, and interest in and to the Assigned Patents, provided however , that not later than thirty (30) business days after the Closing Date Assignor shall deliver to Assignee an executed document having the form and substance of Exhibit B (including Attachment A thereto), and furthermore, upon Assignee’s written request, Assignor shall execute all documents and instruments, and shall do all lawful acts, in each case as may be reasonably necessary and at Assignee’s expense, to perfect Assignee’s rights, title, and interest in and to the Assigned Patents. For documents that require notarization, the foregoing obligation of Assignor shall be satisfied if Assignor reasonably cooperates in obtaining signatures, notarized by an appropriate notary; any notarial authentication, legalization, and the like of such notarized signatures shall be obtained by Assignee at Assignee’s expense.

2.2.1 Assignee’s representatives shall be responsible for preparing and translating any documents that Assignee records to perfect its right, title and interest in Assigned Patents in any jurisdiction. Not later than ninety (90) days after the Closing Date, Assignee shall provide Assignor with any documents requiring Assignor’s signature suitable for recording, having terms and conditions acceptable to Assignor and similar to Exhibit B except for any additional or different terms and conditions as may commonly exist or would be necessitated by law in patent assignments between Assignor and other entities organized under the laws of the local jurisdiction, if any. Assignee shall further provide Assignor with an English translation of each such document concurrently therewith.

2.3 Assignee shall be solely responsible for all actions and all costs whatsoever, including attorney’s fees, arising after the Closing Date and associated with the continuous prosecution and the maintenance and enforcement of the Assigned Patents, and Assignor shall have no obligation to pay any maintenance fees which become due for the Assigned Patents after Closing.

2.4 No license, immunity, ownership interest, or other right is granted under this Agreement, now or hereafter, either directly or by implication, estoppel, or otherwise, except with respect to the Assigned Patents as expressly set forth herein.

2.5 At the request and cost of the Assignee the Assignor, its Subsidiaries or Seller Licensee shall assist the prosecution of any pending Assigned Patents application (“ Application ”) to grant and will execute all such documents and do all such acts as may be necessary or proper to obtain the acceptance of the Application and for procuring the grant of a Patent pursuant to Application. In the event that the China Patent Office or any other competent government or administrative authority sends to either party an objection, a query, or a request demanding further information, clarification or explanation, the Assignor shall render to the Assignee all information and assistance within his power with a view to satisfying the State Intellectual Property Office or any other competent authority that a patent shall issue substantially in the form applied for.

2.6 In the event that the validity of the Assigned Patents and/or any patent granted pursuant to the Application is challenged on any point upon which the Assignor has or can procure information or advice which may assist in meeting and defeating or reducing the effect of such challenge, the Assignor agrees and/or undertakes to supply or procure the supply of such information and/or advice without unreasonable delay but subject to the right to charge the Assignee out-of-pocket expenses properly and reasonably incurred in pursuance of this provision.

Section 3. License

3.1 Subject to the terms and conditions set forth in this Agreement, Assignee hereby grants to Assignor, Seller, and Seller Subsidiaries a limited, royalty-free, fully paid-up, worldwide, non-exclusive license (without the right to sublicense or assign subject to Section 10.6), to the Assigned Patents, to practice, make and use the inventions, ideas and information embodied therein, and to make, use, offer to sell, sell, lease or import products, services, processes, methods and materials embodying or deriving from the inventions, ideas and information from the Assigned Patents solely in the conduct of their respective business (excluding any and all Business) (“ Licensed Business ”) and any activities derived directly therefrom subsequent to the Closing Date. As to any item of Assigned Patents, the term of such license shall continue for the period of validity for such Assigned Patents.

3.2 Assignor shall ensure that Seller and/or any and all Seller Subsidiaries that intend to take benefit of Section 3.1 (together called “ Seller Licensee ”) executes an accession instrument in the form as exhibited in Exhibit C in order to accede to this Agreement and establish contractual privity with Assignee before they can continue to use (after Closing) or commence any use of the Assigned Patents as provided in Section 3.1.

3.2.1 By execution of the accession instrument in accordance with Section 3.1 to this Agreement, such Seller Licensee shall acknowledge that the technology that is subject to this Agreement constitutes or comprises confidential information and shall agree that any use or disclosure by such Seller Licensee of such confidential information beyond that expressly authorized in this Agreement is prohibited.

3.2.2 Assignor shall use best efforts as appropriate to ensure that it and each Seller Licensee comply with the restrictions on use and disclosure of confidential information in this Agreement and the relevant accession instrument. If Assignor reasonably suspects, or if Assignee notifies Assignor that Assignee reasonably suspects, that it or a Seller Licensee is not in compliance with restrictions on use and disclosure of confidential information in this Agreement, Assignor agrees to use best efforts as appropriate to cooperate with Assignee in investigating such non-compliance. If, after such investigation, Assignee reasonably believes that it or a Seller Licensee is not in compliance with the restrictions on use and disclosure of confidential information in this Agreement, then Assignee may request, and Assignor shall arrange, a timely audit of its or Seller Licensee’s compliance with such restrictions in this Agreement, at Assignee’s sole expense, and by a Third Party auditor selected by Assignor and approved by Assignee. If Assignor reasonably believes it or a Seller Licensee is not in compliance with the restrictions on use and disclosure of confidential information in this Agreement, then Assignor shall promptly notify Assignee thereof and may arrange an audit, at Assignor’s sole expense, by a Third Party auditor selected by Assignor. The Third Party auditor shall determine the scope of the audit and disclose the results of any such audit conducted pursuant to this Section 3.2.2 only to Assignor, and Assignor shall share all such results with Assignee as soon as possible. If the results of any such audit show that it or the Seller Licensee is not in compliance with the restrictions on use and disclosure of confidential information in this Agreement, then Assignor shall (i) take appropriate steps to address such non-compliance, (ii) take immediate action to stop any such use or disclosure that violates such restrictions and retrieve, to the extent possible, any confidential information of Assignee. The licence granted to Assignor or an Seller Licensee shall be terminated immediately if Assignor or an Seller Licensee is willfully or negligently at fault for a material violation of such restrictions.

3.2.3 The Parties agree that each Seller Licensee, if any, shall accede to Assignor’s obligations under this Agreement except for the obligations under Section 2 so that Assignee may take legal or other action for damages and all other appropriate relief and exercise any other rights or remedies that Assignee or Assignor may have at law or in equity against such Seller Licensee relating to, or arising from, such Seller Licensee’s breach of this Agreement and the relevant accession instrument. At Assignee’s expense, Assignor shall reasonably cooperate with Assignee in such taking of legal action or exercising of such rights or remedies. Further, Assignee may, to the extent not inconsistent with the provisions of Section 8 hereof, take any action or pursue or exercise any right, remedy or action against Assignor to the extent caused by, arising out of, or in connection with or relating to, any of Assignor’s inaction or any breach of, or failure to perform, any obligation or covenant of Assignor under this Agreement in connection with any breach by Seller Licensee of this Agreement.

3.3 All rights not expressly granted by Assignee hereunder are reserved to Assignee. Without limiting the generality of the foregoing, Assignee and Assignor expressly acknowledge that nothing contained herein shall be construed or interpreted as a grant, by implication or otherwise, of any licenses other than the licenses specified in Section 3.1.

3.4 The Parties expressly and specifically agree that the licenses granted herein shall be limited to, and the Assigned Patents shall not be used beyond, the Licensed Business. Assignor acknowledges that the technology that is subject to this Agreement constitutes or comprises confidential information and shall agree that any use or disclosure by such Assignor of such confidential information beyond that expressly authorized in this Agreement is prohibited.

3.5 Subject to Section 7.3(c) of the Supplement, all improvements and enhancements to the Assigned Patents made, developed, created, invented or discovered by Assignor and/or any Seller Licensee shall belong to Assignor and/or such relevant Seller Licensee.

3.6 Assignor expressly acknowledges and agrees that (i) all of its rights to use the Assigned Patents are set forth herein, (ii) nothing herein shall be construed to convey any rights to Assignor in any Intellectual Property Rights of Assignee or its Affiliates (including, without limitation, any improvements or enhancements made by Assignee or its Affiliates to any of the Intellectual Property Rights granted by Assignee and its Affiliates to Assignor hereunder), which in their entirety are made, developed, conceived, or otherwise created without contribution by Assignor, Seller or Seller Subsidiaries after the date of this Agreement and (iii) it shall use the licenses granted pursuant to Sections 3.1 to the Assigned Patents exclusively in the Licensed Business. Notwithstanding anything else herein, each license herein granted to any registered patent is limited to the territory or jurisdiction in which such registered patent has been issued.

3.7 Assignee hereby acknowledges and agrees that it shall, and shall cause its Affiliates to, execute or deliver any further instruments, information, explanations or documents and take all such further action as may be necessary to grant to Assignor the licenses hereunder, to enable Assignor to practice, make and use the invention, technology or ideas covered by the Assigned Patents under the license in this Agreement, and for Assignor to fully enjoy all of the rights and benefits to, the Assigned Patents as provided in the license of this Agreement, subject in each case to the limitations herein described.

Section 4. Payment and Communication

4.1 The consideration for the assignments and other rights granted to Assignee under this Agreement consists of the substantial benefits derived by Assignor and Seller and Assignee and Purchaser from the Purchaser’s purchase of the Assets from the Seller, as set forth in the Acquisition Agreement, and the consummation of the transactions contemplated thereby, there being no further consideration or royalty payable in respect thereof.

4.2 Any notice, request, instruction or other document or communications required or permitted to be given hereunder by any party hereto to the other party hereto will be provided in accordance with the terms of Section 9.1 of the Acquisition Agreement.

4.3 Assignor and Seller Licensee shall be responsible for the recordal of this Agreement by the relevant local authorities as required by local law and regulations in respect of the rights granted pursuant to Section 3.1 and shall bear the relevant fees in respect thereof.

Section 5. Enforcement

5.1 Assignor agrees to promptly notify Assignee in writing of any infringement or misappropriation or claim of infringement of third party rights in respect of any of the Assigned Patents to which Assignor or any Seller Licensee becomes aware and will provide Assignee with any and all evidence in its possession, if any, of such infringement or misappropriation.

5.2 Assignee agrees to promptly notify Assignor in writing of any infringement or misappropriation or claim of infringement of third party rights in respect of any of the Assigned Patents to which Assignee becomes aware and will provide Assignor with any and all evidence in its possession, if any, of such infringement or misappropriation.

5.3 In the event of any infringement or misappropriation or claim of infringement of third party rights in respect of any of the Assigned Patents, Assignee will have the right to determine an appropriate course of action to enforce or defend such Assigned Patents or otherwise abate the infringement or misappropriation thereof, to take (or refrain from taking) appropriate action to enforce or defend such Assigned Patents, and, in the event that Assignee elects to take action, to control any litigation or other enforcement action, to enter into or permit the settlement of any such litigation or any other enforcement action with respect to such Assigned Patents, and to recover and retain any monetary damages, settlement, royalties or other recovery arising from such litigation or other enforcement action. Assignor will use reasonable efforts to cooperate with Assignee at Assignee’s expense, in any litigation or enforcement action under this Section 5.3 and Assignor will join as a party to any such litigation or other enforcement action as required by Law at Assignee’s expense. Assignee shall indemnify and hold harmless Assignor against any and all Losses arising out of or in relation to (i) any such cooperation given by Assignor to Assignee and (ii) Assignor joining as a party to such litigation or other enforcement action, which Losses may include, without limitation, payment by Assignor of any Third Party legal costs as a result of Assignor joining as a party to such litigation or enforcement action.

5.4 In the event that Assignee takes no action against such infringer or unauthorised user or claim of infringement of third party rights, within three (3) months of the date on which it first learns of such misappropriation or infringement or claim of infringement of third party rights, then subject to Assignee’s consent (which shall not be unreasonably withheld), Assignor may take such action in the name of Assignee or in its own name, as it shall see fit and Assignee shall co-operate fully, at Assignor’s expense, with Assignor in respect thereof. Assignor shall be entitled to retain any monetary damages, settlement, royalties or other recovery, if any, recovered or obtained in any proceedings or action taken by Assignor at its own expense.

6.1 This Agreement (other than Sections 2.1, 2.4 and 3) shall become effective as of the date first above written and Sections 2.1, 2.4 and 3 shall become effective as of the date this Agreement has been registered with the patent authority of the PRC and as to any item of the license granted under this Agreement, the rights and obligations contained herein shall continue during the validity of such Assigned Patents, except as may be otherwise provided herein.

6.2 Notwithstanding Section 6.1, upon providing prior written notice of termination to Assignor, Assignee may terminate the license under this Agreement if Assignor or any of its Seller Licensee violates, defaults or fails to perform any of its respective covenants, obligations, agreements, representations or warranties contained herein, which violation, default or failure is material and not cured within ninety (90) days after receipt of a written notice thereof from Assignee. Further, Assignee may automatically terminate the license granted under this Agreement without notice to Assignor in the event that Assignor makes a general assignment for the benefit of its creditors, or ceases operations, or is liquidated.

Section 7. Breach of Contract

If either Party shall breach its obligations in relation to the license granted under this Agreement, such breaching party shall be responsible to the other Party for all direct losses or damages caused by such breach, including without limitation lost profits suffered by the non-breaching party. The Parties expressly agree that, in the event a Party violates, defaults or fails to perform any of its respective covenants, obligations, agreements, representations or warranties contained herein, in addition to Assignee’s right to terminate under Section 6, full legal remedy shall remain available to the non-defaulting party in such violation, default or failure, including the right to recover monetary damages or to secure such other relief appropriate to the circumstances, provided that no immaterial violation, default or failure to perform shall result in relief that unreasonably disrupts the operation of the Licensed Business.

Section 8. Resolution of Disputes