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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."
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
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
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
Licensed Patents
Patent Applications
Field of Use
Territory
Effective Date
Improvements
Technical Information
Know-How
Net Sales
Royalties
Licensed Products
Licensed Processes
Affiliate
Confidential Information
Intellectual Property Rights
Commercial Sale
Valid Claim
Prosecution
Infringement
Licensed Technology
Assignment Date
Consideration
Continuation Applications
Divisional Applications
Foreign Applications
Consideration
Representations and Warranties
Patent Prosecution
Patent Maintenance
Infringement Protection
Confidentiality
Technology Transfer
Improvements
Royalties
Payment Terms
Indemnification
Field of Use Restrictions
Territory Restrictions
Sublicensing Rights
Term and Termination
Quality Control
Record Keeping
Audit Rights
Further Assurances
Assignment and Transfer
Force Majeure
Dispute Resolution
Governing Law
Notices
Severability
Entire Agreement
Amendment and Waiver
Export Control
Regulatory Compliance
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