This Checklist identifies the key terms typically included in an assignment of patents or patent applications. This document can be used as a checklist of issues to consider when drafting, reviewing or negotiating an assignment of patents or patent applications. It can also be adapted for use as a heads of terms to record basic agreed terms while a formal assignment is being negotiated.
How to use this Checklist
This Checklist is designed to highlight issues that commonly arise during the negotiation and drafting of the following type of agreements:
- •
Patent assignment—pro-assignor
- •
Patent assignment—pro-assignee
For further information on issues raised by this Checklist, see Practice Note: Assigning intellectual property rights.
This Checklist can also, where appropriate, form the basis of a simple non-binding heads of terms. For guidance on how to do this, see Precedent: Heads of terms—commercial contracts.
Checklist for proposed assignment of patents or patent applications
| Checklist | Further information | Notes (if any) |
| Key commercial considerations | ||
| ☐ Parties | Confirm which entities will be party to the agreement—identify which entity owns the patents and/or patent applications (ie | |
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