tag:blogger.com,1999:blog-5574479.post280275615030294461..comments2024-03-29T09:21:58.696+00:00Comments on The IPKat: The Murky World of the IP AssignmentVerónica RodrÃguez Arguijohttp://www.blogger.com/profile/05763207846940036921noreply@blogger.comBlogger3125tag:blogger.com,1999:blog-5574479.post-20813364183822859372011-10-31T14:10:42.979+00:002011-10-31T14:10:42.979+00:00The following arrangement works well for registere...The following arrangement works well for registered IP rights. Draft the main agreement so that it is clearly just an agreement to assign and clearly not an assignment. Then draw up one short form assignment for each right type (patents/trademarks/design) for each official register. The latter usually means per country but, for example EP patent applications go on the EPO assignment whereas the national parts of a granted EP go on the assignments for the DE,FR,GB,IT... national registers.<br /><br />If you have time ahead of execution send the wording of the short form assignments to local patent attorneys, who as necessary will suggest that both parties should sign, make remarks about stamp duty, notarisation, legalisation, translations requirements (or even translate your text so that the signed assignment will be in the local language) and so on.<br /><br />This arrangement avoids having to provide to the patent office extracts of the main agreement having to be provided to the local offices (which costs since the whole agreement may have to be read to do that in a non-distoring way and sensitivities of the parties to clauses appearing on the register may have to be discovered), some costs of translation, and allows the separate short form assignments to proceed along their sometimes tortuous paths (e.g. notarisation, legalisation, making certified copies subission and return from the patent office) in parallel rather than in series.<br /><br />When there is the chance I always suggest this approach, but it is not as common as it might be given its efficiency - so is there anything wrong with it apart from not being familiar?Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-58174703066826735902011-10-30T13:44:53.783+00:002011-10-30T13:44:53.783+00:00Let's hear it for more IP lawyer involvement i...Let's hear it for more IP lawyer involvement in transactional work --<br /><br />I would say that the main agreement is the assignment of the rights. Without the exhibits I don't think that there's any argument, under U.S. law anyway, that there was not a present assignment of rights with your sample language. The scope of the rights would be construed based on the four corners of the main agreement, although it then gets sticky when, as you point out happens, the IP assignments, which are exhibits, aren't consistent with the main agreement. I find it happens most often with unregistered trademarks - the main agreement may say just "trademarks," or perhaps even mention unregistered trademarks specifically, but those are NEVER listed on the schedules or assignment exhibits. Perhaps the answer is not to have exhibits? Or to state that the exhibits are sample agreements only?Pamela Chestekhttps://www.blogger.com/profile/09997764091535406126noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-84960564783087182202011-10-28T16:26:07.395+01:002011-10-28T16:26:07.395+01:00Under IP laws the assignment has not taken place. ...Under IP laws the assignment has not taken place. The equitable assignment has value under contract law and may give valid claims to royalties for example. There have been a few cases covering these issues, though I can't think of specifics right now, partly because it has been a long day.<br /><br />Such contracts MUST be avoided and usually exist because patent attorneys have not been involved in the writing of the contract. IP rights are frequently a vague add-on rather than being covered by the essential clear and well-defined clauses. Not only must all assignments of existing IP be clear (as to their scope) and specifically made, but so too must all future IP. I have had to deal with vague open-ended assignments of future IP, which leave one side in a very difficult position.Anonymousnoreply@blogger.com