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Patent Assignment Agreement

Patent Assignment Agreement Template for New Zealand

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Key Requirements PROMPT example:

Patent Assignment Agreement

"I need a Patent Assignment Agreement under New Zealand law for transferring a single pharmaceutical patent from my company to a large corporation, with the transfer to be completed by March 2025 and including provisions for technical support during the transition period."

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Document background
A Patent Assignment Agreement is essential when transferring ownership of patent rights from one entity to another in New Zealand. This document is commonly used in various scenarios, including company acquisitions, technology transfers, or strategic intellectual property transactions. The agreement must comply with the Patents Act 2013 and be suitable for registration with the Intellectual Property Office of New Zealand (IPONZ). It typically includes comprehensive details about the patents being transferred, representations and warranties about ownership and validity, consideration for the transfer, and obligations regarding the registration of the assignment. The document is crucial for maintaining clear chains of patent ownership and ensuring legally enforceable transfers of valuable intellectual property rights.
Suggested Sections

1. Parties: Identification of the Assignor and Assignee, including full legal names and addresses

2. Background: Context of the assignment, including the Assignor's ownership of the patent(s) and the intention to transfer

3. Definitions: Key terms used in the agreement, including 'Patent Rights', 'Effective Date', 'Intellectual Property Rights'

4. Assignment: Core provision transferring all rights, title, and interest in the patent(s) from Assignor to Assignee

5. Consideration: Details of the payment or other consideration for the assignment

6. Assignor's Representations and Warranties: Warranties regarding ownership, right to assign, no encumbrances, and validity of patents

7. Further Assurances: Obligation to execute additional documents and assist with transfer procedures

8. Governing Law and Jurisdiction: Specification of New Zealand law and courts' jurisdiction

9. Execution: Signature blocks and execution requirements

Optional Sections

1. Retained Rights: Used when the Assignor retains certain limited rights to use the patent(s)

2. Additional Inventors' Obligations: Required when inventors need to cooperate with patent prosecution or maintenance

3. Tax Provisions: Included when there are specific tax implications requiring detailed treatment

4. Confidentiality: Added when confidential information is exchanged as part of the assignment

5. Payment Terms: Required for assignments involving installment payments or earning out provisions

6. Foreign Rights: Included when the patent has international registrations or pending applications

7. Technology Transfer: Used when technical knowledge or know-how transfer is part of the assignment

Suggested Schedules

1. Schedule 1 - Patent Details: Comprehensive list of patents being assigned, including registration numbers, jurisdictions, and status

2. Schedule 2 - Assignment Form: Official patent assignment form required for filing with IPONZ (Intellectual Property Office of New Zealand)

3. Schedule 3 - Payment Terms: Detailed payment schedule if the consideration involves multiple payments or conditions

4. Appendix A - Technical Documentation: List of technical documents, drawings, and other materials being transferred with the patent

5. Appendix B - Existing Licenses: Details of any existing licenses or agreements affecting the patent that will be assumed by the Assignee

Authors

Alex Denne

Head of Growth (Open Source Law) @ ¶¶Òõ¶ÌÊÓƵ | 3 x UCL-Certified in Contract Law & Drafting | 4+ Years Managing 1M+ Legal Documents | Serial Founder & Legal AI Author

alex.den.21@genieai.co
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Relevant Industries

Technology

Pharmaceuticals

Biotechnology

Manufacturing

Engineering

Research and Development

Electronics

Chemical Industry

Medical Devices

Software Development

Clean Technology

Industrial Design

Telecommunications

Relevant Teams

Legal

Intellectual Property

Research and Development

Executive Leadership

Technology Transfer

Business Development

Innovation

Corporate Development

Patent Administration

Technical Documentation

Relevant Roles

Intellectual Property Counsel

Patent Attorney

Legal Counsel

Chief Technology Officer

Research and Development Director

Innovation Manager

Chief Executive Officer

Chief Legal Officer

Technology Transfer Manager

Intellectual Property Manager

Corporate Counsel

Business Development Director

Chief Innovation Officer

Industries





Teams

Employer, Employee, Start Date, Job Title, Department, Location, Probationary Period, Notice Period, Salary, Overtime, Vacation Pay, Statutory Holidays, Benefits, Bonus, Expenses, Working Hours, Rest Breaks,  Leaves of Absence, Confidentiality, Intellectual Property, Non-Solicitation, Non-Competition, Code of Conduct, Termination,  Severance Pay, Governing Law, Entire Agreemen

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Patent Assignment Agreement

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