Assignment of Intellectual Property Rights In General

An assignment is used whenever one person or company wants to sell some or all of the intellectual property rights in a design to another person or company. Assignments effectively change the ownership of the intellectual property rights assigned, leaving the original owner with no further rights.
An assignment is used to confirm a transfer of ownership. If the IP in question has previously been paid for the rights are sold for £1 to ensure that the assignment is legal. Where they are being sold for a price the value should be inserted. Careful thought should be given to the value of the intellectual property rights in a design whenever the rights are being sold for their full value in an ‘arm’s length transaction’ (such as on the sale of a business), rather than for a nominal amount as in these agreements. Assignments can also be used to transfer some of the intellectual property rights in a design only, as well as to grant rights in relation to certain activities (such as manufacturing only) or for certain products (e.g. to use a copyright work for clothing designs only).

Assignment of Registered Designs (and IP Rights in a Registered Design) Agreement

This agreement is slightly more specific than other assignment agreements as it deals with the assignment of a Registered Design, as opposed to all IP rights generally. It is drafted to ensure that the assignment of the Registered Design is executed in the correct manner. However, it does contain a general assignment of all other IP rights as well as a ‘catch all’. It also does not mention the ‘designer’ but just a general assignee/assignor relationship.

When would you use it?

When you own a design that you have registered with the UKIPO or OHIM or you have made an application for a registered design and you want to transfer the ownership.

With Whom?

With a second party whom you wish to take over ownership and control of the design or to whom you have sold the design.

Why?

To ensure that the new owner of the design has all the benefits of the registered rights.

This agreement is a reusable legal document template which you can alter to include names, dates, addresses etc. There may be some clauses which need to be amended or deleted as they do not apply to your circumstances. This is because the document is designed as a general document to cover most commercial situations and therefore certain wording may not be appropriate, or suitable, for all situations.

As this agreement has not been drafted specifically for your circumstances, it is strongly advised, once you have made the appropriate changes to meet your business requirements, that you check it with your solicitor or with an ACID Accredited lawyer before using it, in order to ensure that the document suits your particular circumstances. No liability is accepted by ACID or any ACID Accredited Law Firm.