This example short form IP assignmenthas been providedfor illustration purposes only and in conjunction with the “need to know” document entitled “intellectual property ownership – a practical guide”.
this document provides an example of how ownership of intellectual property in materialsalready created by a developer (as an independent contractor) for another party could be transferred to that party.
This document does not constitute legal advice nor can it be relied upon to successfully transfer all intellectual property due to the complexity and variety of materials that may be involved in the project/development and anyunderlying intellectual property contained therein. this document does not address third party intellectual property/software or any open source software and related issues.
It is strongly recommended that legal advice is taken in relation to any assignment of intellectual propertyfor all of these reasons.
THIS AGREEMENT is made by way of DEED on the2016
PARTIES
(1)[NAME OF COMPANY/ INDIVIDUAL] [(registered in England with company number [NUMBER] of [ADDRESS] (“Assignor”); and
(2)[NAME OF COMPANY/INDIVIDUAL] (registered in England with company number [NUMBER])]) of[ADDRESS] (“Assignee”).
WHEREAS:
Assignor has provided certain services and deliverables to Assignee. Assignor owns or is deemed to own certain intellectual property in and to suchdeliverables and has agreed by way of this Deed of Assignment (the “Agreement”) to assign to Assignee the intellectual property in suchdeliverableson the terms and conditions set out below.
IT IS HEREBY AGREED:
1.The followingdefinitions apply in this Agreement:
Deliverables: means any and all of the products (and any part thereof) of the Services including, but not limited to,all copy, ideas, layouts, artwork, storyboard, scripts, presentations, drawings, documents, charts, graphics, images, photographs, films, recordings, compositions, software, computer programs, reports, specifications, drafts, records, processes, research, logos, designs, codes, manuals, products, deliverables, or other tangible or intangiblematerials prepared, designed or written by Assignor in relation to the Services, in hard copy, digital or other form whether created prior to or after the date of this Assignment [including, but not limited to, the[NAME OF DELIVERABLES/SOFTWARE CREATED];
Intellectual Property: means patents, rights to inventions, copyright and neighbouring and related rights, moral rights, trade marks and service marks, trade names and domain names, rights in get-up, rights in goodwill or to sue for passing off, rights in designs, rights in computer software, database rights, rights in confidential information (including, but not limited to, know-how and trade secrets) and any other intellectual property rights whether now or hereafter known and whether conferred or existing now, in each case whether registered or unregistered and including, but not limited to, all applications (or rights to apply) for, and renewals, extensions, revivals and reversions of, such rights and all similar or equivalent rights or forms of protection which may now or in the future subsist in any part of the world; and
Services: meansthe services provided by Assignor as a [ROLE] in relation to [NAME OF PROJECT].
2.Assignor hereby irrevocably assigns and transfers to Assignee by way of present assignment of present and future rights, title and interest with full title guarantee, absolutely and free from all encumbrances, the entire legal and beneficial right, title and interest of allIntellectual Propertyin and to the Deliverables(the “Assigned IP”) including, but not limited to, the right to bring, make, oppose, defend, appeal proceedings, claims or action and obtain relief (and to retain any damages recovered) in respect of any infringement, or any other cause of action arising from ownership, of any of the Assigned IP, whether occurring before, on or after the date of this Agreement.
3.Assignor warrants, represents and undertakes that:
a)Assignor is the sole legal and beneficial owner of, and owns all the rights and interests in, the Assigned IPand has sufficient power and authority to enter into this Agreement;
b)Assignor has not licensed or assigned any of the Assigned IP;
c)the Assigned IP are free from any security interest, option, mortgage, charge or lien;
d)so far as Assignor is aware, there are no claims, challenges, disputes or proceedings, pending or threatened, in relation to the ownership, validity or use of the Assigned IP, and the exploitation of the Assigned IP will not infringe the rights of any third party;
e)the Assigned IP are valid and subsisting and Assignor is not aware of any claims, challenges, disputes or proceedings, pending or threatened, in relation to the ownership, validity or use of the Assigned IP by or against any third party;
f)the Deliverables are Assignor’s original work and have not been copied wholly or substantially from other sources and, so far as Assignor is aware, nothing in the Deliverables or the provision of the Services shall infringe the rights (including, but not limited to, any rights of confidentiality and/or privacy) of any third party; and
g)Assignor has not and will not enter into, nor has Assignor or will Assignor authorise any third party to enter into, any agreement, licence, assignment, charge or other document concerning the Services or the Deliverables which will or might conflict or interfere with the assignment and granting of rights hereunder.
4.Assignor shall indemnify, defend and hold harmless Assignee [its parent company, successors, affiliates, subsidiaries and assigns and their respective officers, directors, employees, agents and shareholders] from and against any and all, damages, claims, costs, demands, liabilities and reasonable expenses (including,but not limited to, reasonable legal fees and costs) arising out of any breach by Assignor of clause 3, provided that such claim is either reduced to a judgement of a court of competent jurisdiction or a settlement approved by Assignor (not to be unreasonably withheld or delayed). No provision in this clause shall either restrict or limit Assignee’s general obligation at law to mitigate any liability, loss or damage it may suffer or incur as a result of an event that may give rise to a claim.
5.Assignor shall do and execute all such further acts and things as reasonably required to give full effect to the provisions of this Agreement.
6.[FOR A COMPANY]–[Assignor shall provide Assignee, on or before the date of this Agreement, with written absolute waivers from all authors of the Deliverables in relation to any and all of their moral rights arising under any applicable law of any jurisdiction in relation to the Deliverables and procures that all authors of the Deliverables shall agree not to assert the same against Assignee or any third party at any time in the future.]
OR
[FOR AN INDIVIDUAL] [Assignor hereby waives absolutely any and all moral rights which Assignor may have under any applicable law of any jurisdiction in the Deliverables and agrees not to assert the same against Assignee or any third party at any time in the future.]
7.In no event will any delay, failure or omission (in whole or in part) in enforcing, exercising or pursuing any right, power, privilege, claim or remedy conferred by or arising under this Agreement or by law, be deemed to be or construed as a waiver of that or any other right, power, privilege, claim or remedy in respect of the circumstances in question, or operate so as to bar the enforcement of that, or any other right, power, privilege, claim or remedy, in any other instance at any time or times subsequently.
8.A person who is not a party to this Agreement has no right under the Contracts (Rights of Third Parties) Act 1999 to rely upon or enforce any term of this Agreement but this does not affect any right or remedy of a third party which exists or is available apart from that Act.
9.This Agreement constitutes the entire agreement and understanding of the parties relating to the subject matter of this Agreement and supersedes any previous agreement or understanding between the parties whether written or oral in relation to such subject matter. In entering into the Agreement, the parties have not relied on any statement, representation, warranty, understanding, undertaking, promise or assurance (whether negligently or innocently made) of any person (whether party to the Agreement or not) other than as expressly set out in the Agreement.
10.If any provision of this Agreement shall be prohibited by or adjudged by a court to be unlawful void or unenforceable such provision shall to the extent required be severed from this Agreement and rendered ineffective as far as possible without modifying the remaining provisions of this Agreement and shall not in any way affect any other circumstances or the validity or enforcement of this Agreement.
11.This Agreement may be executed in any number of counterparts and by the parties to it on separate counterparts, each of which shall be an original, but all of which together shall constitute one and the same instrument when executed and delivered. The Agreement is not effective until each party has executed at least one counterpart.
12.This Agreement shall be governed by and construed in accordance with the laws of England and Wales and each party irrevocably submits to the exclusive jurisdiction of the English courts
IN WITNESS whereof the hands of the parties hereto or their duly authorised representatives execute and deliver this Agreement as a DEED the day and year first before written.
[FOR A COMPANY]
EXECUTED AS A DEED by ) ______
[______]) Director
by the signature of its)
undermentioned officer acting under )
its authority)
in the presence of:-[______) ______
Witness
EXECUTED AS A DEED by ) ______
[______])Director
by the signature of its)
undermentioned officer acting under )
its authority)
in the presence of:- [______) ______
Witness
[FOR AN INDIVIDUAL]
EXECUTED AS A DEED by[FULL NAME OF PARTY] in the presence of: / ......
[NAME OF WITNESS]
[ADDRESS OF WITNESS]
[OCCUPATION OF WITNESS] / ......
EXECUTED AS A DEED by
[FULL NAME OF PARTY] in the presence of: / ......
[NAME OF WITNESS]
[ADDRESS OF WITNESS]
[OCCUPATION OF WITNESS] / ......
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Example Short Form IP Assignment