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Assignment And License Of Patent
"I need an Assignment and License of Patent agreement under Australian law for transferring ownership of our semiconductor manufacturing patent to TechCorp Ltd, while retaining a non-exclusive license to use the technology in our Asia-Pacific operations."
1. Parties: Identification of the assignor/licensor and assignee/licensee with full legal details
2. Background: Context of the agreement, details of the patent(s), and purpose of the assignment/license
3. Definitions: Key terms used throughout the agreement including Patent Rights, Territory, Field of Use, etc.
4. Assignment and Grant of Rights: Core provisions detailing the assignment of patent rights and/or scope of license granted
5. Consideration: Details of payment or other consideration for the assignment/license
6. Representations and Warranties: Assignor's/licensor's warranties regarding ownership, right to assign, validity, non-infringement
7. Further Assurance: Obligations to execute additional documents and assist with registration
8. Confidentiality: Provisions regarding confidential information shared during the transaction
9. Taxes and Costs: Responsibility for transfer taxes, registration fees, and professional costs
10. General Provisions: Standard boilerplate including governing law, notices, entire agreement, etc.
11. Execution: Signature blocks and execution formalities
1. License Terms: Required if agreement includes ongoing license rights - covers territory, field of use, exclusivity
2. Royalties: Include when the agreement involves ongoing royalty payments rather than one-time consideration
3. Quality Control: Include for licenses where maintaining product quality is important to patent value
4. Improvements: Rights and obligations regarding future improvements to the patented technology
5. Sub-licensing Rights: Include when assignee/licensee is permitted to grant sub-licenses
6. Performance Obligations: Include when there are minimum performance or commercialization requirements
7. Patent Maintenance: Include provisions about who maintains and pays for patent registration
8. Infringement Actions: Rights and obligations regarding enforcement against third party infringers
9. Term and Termination: Required for licenses but not assignments - conditions for termination and consequences
1. Patent Details: Complete details of patent(s) including registration numbers, jurisdictions, and status
2. Payment Schedule: Detailed breakdown of payment terms, installments, or royalty calculations
3. Form of Recordal: Template documents for recording the assignment/license with patent offices
4. Technical Information: Technical details and specifications related to the patented technology
5. Existing Licenses: Details of any existing licenses or encumbrances affecting the patent
Authors
Assigned Rights
Commencement Date
Confidential Information
Effective Date
Field of Use
Improvements
Intellectual Property Rights
Know-How
License
Licensed Products
Licensed Territory
Net Sales
Patent Applications
Patent Rights
Patents
Permitted Purpose
Regulatory Approvals
Related Body Corporate
Royalties
Sub-licensee
Technical Information
Term
Territory
Third Party
Trade Secrets
Working Day
License Grant
Payment and Royalties
Representations and Warranties
Confidentiality
Intellectual Property
Further Assurance
Registration
Quality Control
Performance Obligations
Territory Restrictions
Sub-licensing
Improvements
Technical Support
Patent Maintenance
Infringement Protection
Indemnification
Term and Termination
Force Majeure
Dispute Resolution
Governing Law
Assignment and Transfer
Notices
Entire Agreement
Severability
Waiver
Amendment
Counterparts
Technology & Software
Pharmaceuticals & Healthcare
Manufacturing & Industrial
Biotechnology
Electronics & Semiconductors
Automotive
Telecommunications
Chemical & Materials
Research & Development
Clean Technology & Energy
Legal
Intellectual Property
Research & Development
Business Development
Technology Transfer
Innovation
Commercial
Corporate Development
Patents
Licensing
Intellectual Property Counsel
Patent Attorney
Legal Counsel
Chief Technology Officer
R&D Director
Innovation Manager
Business Development Manager
Licensing Manager
Chief Legal Officer
Technology Transfer Officer
IP Portfolio Manager
Commercial Director
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