DEED OF ASSIGNMENT OF INTELLECTUAL PROPERTY RIGHTS

Transcription

1 DATED 201[6] (1) [INSERT FULL OF ASSIGNOR] (2) [INSERT FULL COMPANY NAME OF ASSSIGNEE] DEED OF ASSIGNMENT OF INTELLECTUAL PROPERTY RIGHTS HEALTH WARNING This document is a confirmatory assignment for use by an assignee only in the following circumstances: to formalise an arrangement in which the assignor has provided services to the assignee where the IPR arising out of those services should belong to the assignee and either there is no contract in place or the contract is silent about the ownership of IPR; where the assignor is an individual; and where a sweeper assignment is needed of all the IPR arising from the services (not a partial assignment by the category of IPR or by territory). Please note that: if registered IPR are being assigned, you should bear in mind there may be legal formalities which may need to be carried out (e.g. registering the assignment); you may need to take independent tax advice, as tax issues can often arise on the assignment of IPR; and this agreement must be executed as a deed as, owing to the way it is drafted, there is no provision for consideration. THIS DOCUMENT IS FOR GUIDANCE PURPOSES ONLY AND ITS USE IS NO SUBSTITUTE FOR THE NEED TO TAKE LEGAL ADVICE APPROPRIATE FOR YOUR OWN CIRCUMSTANCES.

2 THIS DEED is dated 201[6] BETWEEN: (1) [INSERT FULL NAME OF ASSIGNOR] of [INSERT ADDRESS] (the "Assignor"); and (2) [INSERT FULL COMPANY NAME OF ASSIGNEE] incorporated and registered in England and Wales with company number [INSERT COMPANY NUMBER] whose registered office is at [INSERT REGISTERED OFFICE ADDRESS] (the "Assignee"). BACKGROUND: (A) (B) (C) The Assignor has provided the Services (as defined below) to the Assignee and has carried out work, including creation of the Materials (as defined below), on behalf of the Assignee in this capacity. At all times during the provision of the Services, the Assignor was acting on behalf of the Assignee and the Assignor acknowledges that any and all Intellectual Property Rights (as defined below) in the Materials belong to the Assignee. In order to document formally the arrangements between the parties referred to at paragraphs (A) and (B) above, the Assignor is willing to enter into this confirmatory assignment to assign to the Assignee the Intellectual Property Rights in the Materials as set out in this agreement. AGREED TERMS: 1. Definitions and Interpretation 1.1. Unless the context otherwise requires, the following definitions and rules of interpretation apply in this agreement and in the Background: Intellectual Property Rights Materials patents, rights to inventions, copyright and neighbouring and related rights, trade marks, business names and domain names, rights in get-up and trade dress, goodwill and the right to sue for passing off or unfair competition, rights in designs, database rights, rights to use, and protect the confidentiality of, confidential information (including know-how and trade secrets), recipes, formulations and all other intellectual property rights, in each case whether registered or unregistered and including all applications and rights to apply for and be granted, renewals or extensions of, and rights to claim priority from, such rights and all similar or equivalent rights or forms of protection which subsist or will subsist now or in the future in any part of the world. [INSERT A DESCRIPTION OF THE CATEGORIES OF MATERIALS CREATED BY THE ASSIGNOR. SEE THE FOLLOWING IN SQUARE BRACKETS FOR SUGGESTED WORDING, for example: [all records, reports, documents, papers, drawings, designs, photos, graphics, logos, typographical arrangements, software programs, inventions, ideas, discoveries, developments, improvements or innovations and all materials embodying them in whatever Ashfords LLP

3 form, including but not limited to their hard copy and electronic form] that the Assignor creates and/or supplies to the Assignee in connection with the Services. Services the development of Materials on behalf of the Assignee during the Assignee s engagement of the Assignor as [INSERT A DESCRIPTION OF CAPACITY IN WHICH THE ASSIGNOR PROVIDED SERVICES TO THE ASSIGNEE, for example as a consultant, director or contractor] Clause headings in this agreement are for ease of reference only and shall not affect its interpretation References to clauses are to the clauses of this agreement In this agreement, unless the context otherwise requires, references to: a "person" include a natural person, corporate or unincorporated body (whether or not having separate legal personality); a party or a person shall include that party or person's legal and personal representatives, successors and permitted assigns; words in the singular shall include the plural and in the plural shall include the singular; one gender shall include a reference to other genders; "writing" includes typing, printing, , visual display, electronic transmission or other modes of representing or reproducing words in a visible form, and expressions referring to writing shall be construed accordingly; and any phrase following the words "including", "include", "in particular", "for example" or any similar expression shall be construed as illustrative and shall not limit the sense of the words, description, definition, phrase or term preceding those terms This agreement shall be binding on, and enure to the benefit of, the parties to this agreement and their respective personal representatives, successors and permitted assigns A reference to a statute or statutory provision is a reference to it as amended, extended or re-enacted from time to time provided that, as between the parties, no such amendment, extension or re-enactment shall apply for the purposes of this agreement to the extent that it would impose any new or extended obligation, liability or restriction on, or adversely affect the rights of, any party. This clause does not, however, apply in relation to taxation A reference to a statute or statutory provision shall include all subordinate legislation made from time to time under that statute or statutory provision. 2. Assignment 2.1. [THE WORDING WHICH HAS BEEN HIGHLIGHTED BELOW IN CLAUSES 2.1 AND 2.2 SHOULD BE USED WHERE THE ASSIGNOR WILL CONTINUE TO CREATE Ashfords LLP

4 MATERIALS AFTER THE DATE OF THIS ASSIGNMENT (AND THERE IS NO OTHER AGREEMENT IN PLACE WHICH STATES THAT THE ASSIGNEE IS TO OWN THE IPR IN THOSE MATERIALS).] 2.2. The Assignor hereby assigns, by way of present [and future] assignment, absolutely with full title guarantee all right, title and interest that the Assignor has [and/or will have] in: the Intellectual Property Rights in the Materials; and all materials embodying the Materials, in each case, with effect from the date of their creation [In respect of any Intellectual Property Rights in the Materials not in existence at the date of this agreement and not capable of assignment hereunder, the Assignor agrees to assign the same by way of future assignment. The Assignee may call on the Assignor to execute a confirmatory assignment under clause 3, and pending such assignment title to the same shall be held on bare trust for the Assignor from the date of creation on the same terms as set out in this agreement.] 2.4. The assignment effected herein shall include, without limitation, the assignment and transfer of all rights of action, powers and benefits arising from ownership of the Intellectual Property Rights in the Materials, including the right to sue for damages and other legal and equitable remedies (and retain any financial award made in any action) in respect of all causes of action arising before, on or after the date of this agreement The Assignor waives absolutely all [his] moral rights arising under the Copyright, Designs and Patents Act 1988 in relation to the Works and, so far as is legally possible, any similar or broadly equivalent rights [he] may have in any other territory of the world. 3. Further assurance The Assignor shall perform (or procure the performance of) all further acts and things and execute and deliver (or procure the execution or delivery of) all further documents required by law or which the Assignee reasonably requests for the purpose of giving full effect to this agreement including assisting the Assignee in obtaining, defending and enforcing the Intellectual Property Rights in the Materials, and assisting with any other proceedings which may be brought by or against the Assignee against or by any third party relating to the Intellectual Property Rights in the Materials. 4. Warranties 4.1. The Assignor warrants and represents that: (to the extent that such rights are not already owned by the Assignee) he is the legal and beneficial owner of, and owns all rights and interests in and to, the Materials; no third party has any right or interest whatsoever in the property hereby assigned whether by way of assignment, licence, contract of employment or otherwise; the Materials (and all Intellectual Property in the Materials) are free from any security interest, option, mortgage, charge or lien; Ashfords LLP

5 there are and have been no claims, challenges, disputes or proceedings, pending or threatened, in relation to the ownership, validity or use of any of the Materials and/or any Intellectual Property in the Materials; and the Materials are original works and have not and will not be copied wholly or substantially from any other work or source Each party warrants and represents to the other with respect to itself that it has the full right, power and authority to execute, deliver and perform this agreement. 5. Waiver No failure or delay by a party to exercise any right or remedy provided under this agreement or by law shall constitute a waiver of that or any other right or remedy, nor shall it prevent or restrict the further exercise of that or any other right or remedy. No single or partial exercise of such right or remedy shall prevent or restrict the further exercise of that or any other right or remedy. 6. General provisions 6.1. Entire agreement. This agreement sets out the entire agreement between the parties and supersedes and extinguishes all previous agreements, promises, assurances, warranties, representations and understandings between them, whether written or oral, relating to its subject matter Each party agrees that, in entering into this agreement, it has not relied on and shall have no right or remedy in respect of any statement, representation, assurance or warranty (whether made innocently or negligently) that is not expressly set out in this agreement. Each party agrees that it shall have no claim for innocent or negligent misrepresentation or negligent misstatement based on any statement in this agreement Nothing in this agreement shall limit or exclude any liability for fraud Variation. This agreement may not be amended, modified, varied or supplemented except in writing and signed by the parties (or their authorised representatives) Severance. If any provision or part-provision of this agreement is or becomes invalid, illegal or unenforceable, it shall be deemed modified to the minimum extent necessary to make it valid, legal and enforceable. If such modification is not possible, the relevant provision or part-provision shall be deemed deleted. Any modification to or deletion of a provision or part-provision under this clause shall not affect the validity and enforceability of the rest of this agreement Counterparts. This agreement may be executed in any number of counterparts, each of which when executed and delivered shall constitute an original of this agreement, but all the counterparts shall together constitute the same agreement. No counterpart shall be effective until each party has executed and delivered at least one counterpart Governing law and jurisdiction. This agreement and any dispute or claim arising out of or in connection with it or its subject matter or formation (including non-contractual disputes or claims) shall be governed by and construed in accordance with the law of England and Wales. Ashfords LLP

6 6.8. Each party irrevocably agrees that the courts of England and Wales shall have exclusive jurisdiction to settle any dispute or claim arising out of or in connection with this agreement or its subject matter or formation (including non-contractual disputes or claims). This document has been executed as a deed and is delivered and takes effect on the date stated at the beginning of it. Signed as a deed by ) [INSERT FULL NAME OF ASSIGNOR] )... ) Assignor in the presence of: ) )... Witness name... Witness Witness address... Witness occupation... Executed as a deed by ) [INSERT FULL COMPANY NAME OF )... ASSIGNEE] ) Director of Assignee acting by [INSERT NAME OF DIRECTOR], ) a director, ) in the presence of: )... ) Witness Witness name... Witness address... Witness occupation... Ashfords LLP