Assignment And License Of Patent Template for United States

Create a bespoke document in minutes,  or upload and review your own.

4.6 / 5
4.8 / 5

Let's create your Assignment And License Of Patent

Thank you! Your submission has been received!
Oops! Something went wrong while submitting the form.

Get your first 2 documents free

Your data doesn't train Genie's AI

You keep IP ownership of your information

Key Requirements PROMPT example:

Assignment And License Of Patent

"I need an Assignment And License Of Patent agreement to transfer my software encryption patent to a large tech company, including provisions for ongoing royalties and the right to continue using the technology in my consulting business after March 2025."

Document background
The Assignment And License Of Patent agreement is essential when transferring or licensing patent rights in the United States. This document is commonly used in technology transfers, mergers and acquisitions, or strategic partnerships where intellectual property rights need to be transferred or licensed. It must comply with U.S. patent laws, USPTO regulations, and state contract laws. The agreement typically includes detailed information about the patent(s), terms of transfer or license, payment provisions, and parties' rights and obligations. It's particularly important for maintaining clear patent ownership records and establishing licensing arrangements.
Suggested Sections

1. Parties: Identification of assignor/licensor and assignee/licensee

2. Background: Context of the assignment/license and description of the patent(s)

3. Definitions: Key terms used throughout the agreement

4. Assignment/License Grant: Scope and nature of rights being transferred

5. Consideration: Payment terms and other consideration

6. Representations and Warranties: Statements regarding ownership, validity, and right to transfer

7. Term and Termination: Duration and conditions for ending the agreement

8. Governing Law: Applicable jurisdiction and choice of law

Optional Sections

1. Field of Use Restrictions: Limitations on how the patent can be used - include when licensing specific applications of the patent

2. Sublicensing Rights: Rights to grant licenses to third parties - include when licensee needs to sublicense

3. Improvements: Rights to future improvements of the patent - include when ongoing development is expected

4. Export Control: Compliance with export regulations - include when international transfer is involved

Suggested Schedules

1. Schedule A - Patent Details: Detailed list of patents being assigned/licensed including registration numbers

2. Schedule B - Payment Terms: Detailed payment schedule and royalty calculations

3. Schedule C - Technical Documentation: Technical information and know-how related to the patent

4. Form of Assignment: USPTO recordable assignment document

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

Clauses
Industries

Federal Patent Laws: Key federal statutes including Patent Act (35 U.S.C.), America Invents Act (AIA), and Patent Cooperation Treaty (PCT) for international rights

Contract Laws: State-specific contract laws, Uniform Commercial Code (UCC), and common law principles of contract formation

Antitrust Laws: Sherman Antitrust Act, Clayton Act, and Federal Trade Commission Act to ensure compliance with competition laws

Employment Laws: State-specific employment laws, shop rights doctrine, and hired-to-invent doctrine for employee invention matters

Securities Laws: Securities Act of 1933 and Securities Exchange Act of 1934 for transactions involving public companies

USPTO Requirements: Recording requirements for patent assignments and USPTO regulations regarding patent ownership

IRS Regulations: Tax implications of patent assignments and licenses, including treatment of royalties

Export Control Laws: Export Administration Regulations (EAR) and International Traffic in Arms Regulations (ITAR) for international aspects

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

Find the exact document you need

Assignment Of Intellectual Property

A U.S.-governed legal agreement transferring ownership of intellectual property rights from one party (assignor) to another (assignee).

find out more

Assignment And Transfer Of Copyright

A U.S.-law compliant agreement transferring complete copyright ownership from one party to another.

find out more

Intellectual Property Contribution And Assignment Agreement

A U.S.-governed agreement that transfers intellectual property rights from one party to another, ensuring legal compliance with federal and state IP laws.

find out more

Assignment Of Future Intellectual Property Rights

A U.S. legal agreement transferring ownership of future intellectual property from creator to recipient, typically used in employment contexts.

find out more

Assignment And License Of Patent

A U.S.-governed agreement transferring or licensing patent rights between parties, compliant with USPTO requirements.

find out more

Short Form Copyright Assignment

A U.S.-compliant legal document that transfers copyright ownership from one party to another in a simplified format.

find out more

Founder Ip Assignment Agreement

A US-governed agreement that transfers intellectual property rights from a founder to their company.

find out more

Assignment And License Of Copyright

A US-law compliant agreement transferring copyright ownership while establishing potential licensing arrangements.

find out more

Confirmatory Assignment Of Intellectual Property Rights

A U.S. legal document that confirms and formalizes a previous transfer of intellectual property rights between parties.

find out more

Assignment Agreement Intellectual Property

A U.S. legal document transferring ownership rights of intellectual property from one party to another, governed by federal IP laws and state contract laws.

find out more

Ip Transfer Agreement

A US-governed agreement facilitating the legal transfer of intellectual property rights between parties.

find out more

Patent Assignment Agreement

A U.S.-governed legal agreement that transfers ownership rights of patents from one party to another, compliant with USPTO requirements.

find out more

Download our whitepaper on the future of AI in Legal

By providing your email address you are consenting to our Privacy Notice.
Thank you for downloading our whitepaper. This should arrive in your inbox shortly. In the meantime, why not jump straight to a section that interests you here: https://www.genieai.co/our-research
Oops! Something went wrong while submitting the form.

Genie’s Security Promise

Genie is the safest place to draft. Here’s how we prioritise your privacy and security.

Your documents are private:

We do not train on your data; Genie’s AI improves independently

All data stored on Genie is private to your organisation

Your documents are protected:

Your documents are protected by ultra-secure 256-bit encryption

Our bank-grade security infrastructure undergoes regular external audits

We are ISO27001 certified, so your data is secure

Organizational security

You retain IP ownership of your documents

You have full control over your data and who gets to see it

Innovation in privacy:

Genie partnered with the Computational Privacy Department at Imperial College London

Together, we ran a £1 million research project on privacy and anonymity in legal contracts

Want to know more?

Visit our Trust Centre for more details and real-time security updates.