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).

The Assignment of Intellectual Property Rights In An Unregistered Design Agreement is a straightforward assignment for £1 of the intellectual property rights in a design or list of designs which are already in existence at the date of the agreement. Representations of the design or designs being sold should be attached in the schedule at the end of the agreement. It is a general assignment of all rights in a design. It is expressed to be between a Designer and the Assignee, so would be appropriate for the situation where the Assignee has requested certain designs from the Designer. It is therefore always advisable in a commission situation to obtain a written assignment of the intellectual property rights from the designer in order to ensure that there is no dispute about who was intended to own the intellectual property rights later on.

Below is an example of how the agreement could be used. This does not cover every situation but gives an idea of how it works in a practical business situation. Additional clauses can always be added, or existing clauses adjusted for your personal use, by a specialist Intellectual Property lawyer.

When would you use it?

When you have commissioned someone to produce a design for you or you are buying a design from another party.

With Whom?

If you are paying for a design which is not registered and has been produced by an independent designer who is not directly employed by you.

Why?

To ensure that you have ownership of the unregistered rights in the design.

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.