Transfer of Intellectual Property Rights

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Transfer of Intellectual Property Rights

• HHS Lawyers and Legal Consultants

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• A transfer of intellectual property is the act of
  assigning ownership of the Intellectual Property
  Right from the original owner(assignor) to any
  person as mentioned in the transfer agreement.
  The intellectual property rights provide the
  exclusive rights for transmitting and benefiting
  from their invention made by the owner of an
  intellectual creation. When transferring
  intellectual property rights, the first thing to
  consider is the type of transfer required. ways
  to transfer intellectual property rights are as
  follows
• Intellectual property can be temporarily
  transferred through a license
• Intellectual property can be permanently
  transferred through the assignment
• Below mentioned are some specific requirement
  before the transfer of intellectual property
  right

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Proving the ownership

• A key compliance factor for transfer of
  intellectual property is that the assignor must
  prove that they own the intellectual property.
  When signing the agreement, the assignor will
  have to warrant that that have the right to
  transfer the intellectual property. You can also
  consult an intellectual attorney who can help you
  define the requirements.

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Determining the type of transfer agreement

• Under intellectual property, there are two ways a
  person can transfer its ownership
• License agreement a license agreement has a
  fixed period of time, so when the time expires
  the right of intellectual property will transfer
  back to the original owner. When intellectual
  property is transferred using a license agreement
  the licensee will generally have the right to
  sell or commercialize the property. When the
  license is terminated, the licensee will have to
  cease all selling and commercialization
  activities.
• Assignment agreement A permanent transfer of
  intellectual property can be used as an
  assignment. This means that an intellectual
  property owner will transfer all the right of
  ownership to assignee which is only transferable
  back under specific circumstances or as per the
  clauses mentioned in the contract.

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• Specify the scope of activities
• Other rights associated with the intellectual
  property may also be licensed such as the right
  to copy, distribute or produce a similar
  property. In order to remain in compliance with
  the license agreement all the activities carried
  out under intellectual property should be defined
  and agreed upon.
• Define ownership
• It is necessary to define the scope of
  application as the transfer agreement may not
  cover all the rights. Seeking guidance from
  intellectual property specialist to ensure your
  license argent contains all the rights and
  privileges needed for the transfer of ownership.

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Contents of a transfer agreement

• A transfer agreement may contain the following
  information
• Identification of parties Identifies the
  contract a transfer agreement and Identifying
  details of the Assignor (owner) and the Assignee
  (receiver).
• Assignment of intellectual property contains a
  complete and costs description of the property
  being transferred. In the case of complex
  assignment agreements, this clause may also refer
  to a description of the proposed transferred
  assets that will be annexed to the agreement.
• Obligations of the parties It is important to
  clearly define the obligations of the parties in
  order to avoid any subsequent conflict with
  regard to the extent of these obligations. extent
  of the partys obligations depends on the type of
  intellectual property transferred.
• Indemnification A description of each partys
  future obligation, if the intellectual property
  is found infringed.
• Payment provisions providing details of payment
  and other commercial terms
• Duration of the agreement the assignor may give
  a maximum duration of the ownership in the
  contract.
• Miscellaneous provision contain any other
  provision such as applicable laws and
  jurisdiction should also be included.

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