Template Description

The "Assignment of a Patent" template is a legally binding document used to transfer ownership rights of a patent from one party (the assignor) to another (the assignee) in exchange of equity shares. This template is a 4-page MS Word document, is designed for use across various jurisdictions in India and is fully customizable to suit the specific details of the patent assignment. It is particularly beneficial for companies, patent holders, legal professionals, and other stakeholders involved in intellectual property transactions.

Understanding the concept of Assignment of a Patent

Key Elements:

Stamp Paper

• The assignment must be executed on non-judicial stamp paper of appropriate value, as per the regulations of the respective state where the agreement is executed.

Parties Involved

• Assignor: The original patent holder transferring the rights.
• Assignee: The individual or entity (e.g., a company) receiving the patent rights.

Patent Details

• Patent Description: Details of the invention or process that is the subject of the patent.
• Patent Number: The official registration number and the date of the patent.

Consideration

• Payment: The monetary value or allotment of equity shares agreed upon for the transfer of patent rights.
• Board Resolution: If the assignee is a company, a board resolution must be passed to authorize the allotment of shares.

Covenants and Warranties

• The assignor guarantees that the patent is unencumbered and not previously assigned or dealt with in a manner that could affect the assignee’s rights.
• The assignor agrees to assist the assignee in applying for any extensions or improvements related to the patent during its tenure.

Procedure:

1. Drafting the Assignment: Clearly identify the assignor and assignee, include patent details, specify consideration, and ensure the assignor confirms the patent is free of encumbrances.
2. Execution of the Agreement: Execute the agreement on the appropriate stamp paper and obtain the signatures of all parties involved.
3. Filing with the Patent Office: The assignee must file an application for registration with the Controller of Patents within six months of the agreement's execution, submitting necessary forms and documents.
4. Registration of the Assignment: The Patent Office verifies and records the assignment in the Register of Patents, making it legally effective and enforceable against third parties upon registration.
5. Notification of Registration: The Patent Office issues a notification confirming the registration, serving as proof of the legal transfer of patent rights.
6. Compliance with the Patents Act: Ensure the assignment agreement meets all terms and procedural requirements as per the Patents Act, 1970.
7. Post-Registration Actions: Keep a record of the registered agreement and take necessary steps for any future transactions related to the patent.

Conclusion

This template is a comprehensive guide to ensure all legal formalities are met for the assignment of patent rights, providing a clear and enforceable record of the transaction. It safeguards the interests of both the assignor and the assignee, ensuring a smooth and compliant transfer of ownership.