Assignment Of Inventions Agreement Template for New Zealand

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Key Requirements PROMPT example:

Assignment Of Inventions Agreement

"I need an Assignment of Inventions Agreement for a software developer who has created a new AI algorithm while working as a contractor for my tech company, and we want to ensure all rights are transferred to the company by March 2025."

Document background
The Assignment Of Inventions Agreement is a critical legal instrument used in New Zealand when transferring ownership rights of inventions from one party to another. This document is commonly employed in various scenarios, including employee-employer relationships, commercial transactions, or research partnerships. It ensures clear documentation of the transfer of intellectual property rights, including patents, designs, and associated know-how. The agreement must comply with New Zealand's intellectual property laws, particularly the Patents Act 2013, and includes essential provisions for protecting both assignor and assignee interests. It's particularly important in commercial contexts where companies acquire innovative technologies, in employment situations where companies seek to secure rights to employee inventions, or in research and development partnerships where intellectual property ownership needs to be clearly established.
Suggested Sections

1. Parties: Identifies and defines the Assignor and Assignee, including full legal names and addresses

2. Background: Explains the context of the agreement, including the Assignor's development of inventions and the parties' intention to transfer rights

3. Definitions: Defines key terms including 'Inventions', 'Intellectual Property Rights', 'Effective Date', and other relevant terms

4. Assignment and Transfer: Core provision transferring ownership of the inventions and associated IP rights from Assignor to Assignee

5. Consideration: Specifies the payment or other consideration for the assignment

6. Representations and Warranties: Assignor's warranties regarding ownership, right to assign, non-infringement, and no prior assignments

7. Further Assurances: Obligation to execute additional documents and assist with IP registration if needed

8. Confidentiality: Obligations regarding confidential information related to the inventions

9. Governing Law: Specifies New Zealand law as governing law and jurisdiction for disputes

Optional Sections

1. Employee Obligations: Include when Assignor is an employee and agreement covers future inventions

2. Third Party Rights: Include when other parties may have rights in the inventions or when third-party licenses are involved

3. Royalties: Include if the assignment includes ongoing royalty payments rather than just a one-time payment

4. Moral Rights: Include when the invention includes copyrightable works and moral rights need to be addressed

5. Competition Restrictions: Include when assignment includes non-compete or non-solicitation provisions

6. Tax Provisions: Include when significant tax implications exist for the assignment

Suggested Schedules

1. Schedule 1 - Invention Description: Detailed technical description of the inventions being assigned

2. Schedule 2 - Existing Patents/Applications: List of any existing patent applications or granted patents related to the inventions

3. Schedule 3 - Related IP Rights: List of associated intellectual property rights (e.g., designs, copyright, know-how)

4. Schedule 4 - Payment Terms: Detailed payment schedule and terms if payment is not a single lump sum

5. Appendix A - Technical Documentation: Technical drawings, specifications, and other supporting documentation

Authors

Alex Denne

Head of Growth (Open Source Law) @ Genie AI | 3 x UCL-Certified in Contract Law & Drafting | 4+ Years Managing 1M+ Legal Documents | Serial Founder & Legal AI Author

Relevant legal definitions
Relevant Industries

Technology

Biotechnology

Manufacturing

Research and Development

Pharmaceuticals

Engineering

Software Development

Medical Devices

Clean Technology

Electronics

Telecommunications

Industrial Design

Relevant Teams

Legal

Research and Development

Intellectual Property

Innovation

Product Development

Executive Leadership

Technology Transfer

Contracts Administration

Patent Administration

Corporate Development

Relevant Roles

Patent Attorney

Intellectual Property Lawyer

Research Scientist

Chief Technology Officer

Innovation Manager

R&D Director

Legal Counsel

Product Development Manager

Chief Executive Officer

Intellectual Property Manager

Technical Director

Head of Innovation

Research Engineer

Technology Transfer Officer

Contract Manager

Industries
Teams

Employer, Employee, Start Date, Job Title, Department, Location, Probationary Period, Notice Period, Salary, Overtime, Vacation Pay, Statutory Holidays, Benefits, Bonus, Expenses, Working Hours, Rest Breaks,  Leaves of Absence, Confidentiality, Intellectual Property, Non-Solicitation, Non-Competition, Code of Conduct, Termination,  Severance Pay, Governing Law, Entire Agreemen

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