IP assignments for international use: are they fit for purpose?

How can you tell whether your template IP assignment will “work” in other jurisdictions?  Does it work in your own jurisdiction?  Ultimately, there is no substitute for seeking local legal advice in each country in which the IP exists.  But life is too short, and very little IP is worth so much, for this counsel of perfection to be followed in most cases.

Here are a few drafting suggestions that may improve the chances of the assignment being legally effective in jurisdiction in which the IP exists. This is not an exhaustive list.  Some of these points come from the comments of the contributors (from 7 countries) to our book, Drafting Agreements in the Biotechnology and Pharmaceutical Industries (OUP, looseleaf, 2008 onwards).

    1. Have all parties execute the assignment. (It goes without saying that the assignment should be in writing.)  English patent and copyright laws only require the assignment to be executed by the assignor, but Article 72 of the European Patent Convention, and national laws governing IP assignments in many other countries, require the assignee to execute the assignment as well as the assignor.
    2. Be clear as to whether it is an immediate assignment or merely an agreement to assign.  Words such as “X hereby assigns the Patents” should put this point beyond doubt.
    3. State in the assignment that the assignee “accepts” the assignment. Although not required under English law, we understand that this is necessary under Dutch law.
    4. If required, state that the assignment includes the right for the assignee to sue for infringements that occurred prior to the date of the assignment.  It seems this needs to be stated explicitly under the laws of several countries.
    5. In the case of patent assignments, be clear whether the assignment includes future applications that derive priority from the assigned patents and applications.
    6. If the assignee is to have the right to rely on the priority date of the assigned patent applications when making further patent applications, under French law this “priority right” must be assigned separately.  We are not aware of any such requirement under the laws of any other country, and indeed under English law it is not clear that there is any property right called “priority right”.  Wording such as the following may be appropriate:

To the extent (if any) that any of the Patents generates a “right of priority” and is within the “period of priority” at the date of this Assignment, the Institution hereby assigns to the Company such rights of priority.  For the purposes of this Assignment, the expressions “right of priority” and “period of priority” have the meanings given to them in the Paris Convention for the Protection of Industrial Property, as amended from time to time, and shall be understood as including any equivalent expressions in any national or supra-national legislation that gives effect to that Convention.

Where the assignment is registered at national patent offices or other IP registries, the client may well be using the services of local IP attorneys to undertake the registration, and they may suggest using their own form of preferred assignment template for that country or territory.  It may be impossible to draft a single form of assignment that works in all territories.  Nevertheless, it is desirable that any general form of assignment should conform as closely as reasonably possible with the requirements of national law and the expectations of national registries.  Addressing the points numbered above should not require too much effort (except perhaps point 6 which as far as we know is a purely French requirement).

1 Comment

Filed under Contract drafting, Intellectual Property

One response to “IP assignments for international use: are they fit for purpose?

  1. anonymous

    is it necessary also to assign rights to “the invention” in addition to the application and any eventual patent?

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