Template deed of assignment of intellectual property

Transcription

1 Templte deed of ssignment of intellectul property User notes This document is intended for use y the founders of strt up compny to formlly trnsfer intellectul property relevnt to the usiness, products or services of the compny, to tht compny. Before completing this deed, we suggest tht compnies nd their founders first work to identify nd record the intellectul property tht the compny intends to use (or is lredy using in its usiness, including detils of who: using this templte The User Notes nd the sttements in the footer elow (ll mrked in red re included to ssist in the preprtion of this document. They re for reference only you should delete ll user notes nd the sttements in the footer from the finl form of your document. The use of [squre rckets] round lck text mens tht: creted the intellectul property, nd on wht sis (e.g. s founder, employee or externl consultnt of the compny owns tht intellectul property nd on wht sis (i.e. if the compny owns intellectul property ecuse it ws creted y its employees in the course of their employment, this should e recorded the requested detils need to e inserted there re different options for you to consider within cluse the whole cluse is optionl nd you need to consider whether to include it, sed on the compny s circumstnces nd the user notes. This will help: to identify ny intellectul property tht needs to e trnsferred y founder or consultnt, etc to the compny (nd to properly descrie tht intellectul property in deed of ssignment Before finlising your document, check for ll squre rckets to ensure you hve considered the relevnt option nd ensure tht ll squre rckets hve een deleted. Also, if you delete ny cluses or schedules, rememer to cross reference check the document. to prove ownership of the compny s intellectul property in the future, e.g. in cpitl rising or M&A trnsction. When using the deed of ssignment, try to e s specific s possile when listing in the Schedule the intellectul property to e trnsferred. While the deed includes ctch-ll ssignment of ny intellectul property owned y the founder tht is relevnt to the usiness, products nd services of the compny, relying on this lone my hinder you in demonstrting title to intellectul property in susequent due diligence process for cpitl rising or M&A trnsction. This document is generic document intended for use for simple trnsfer of intellectul property. If the usiness uses complex intellectul property, we recommend you consult n intellectul property lwyer or ptent ttorney. This templte document is provided for guidnce purposes only. We recommend you otin the help of qulified lwyer to complete it. Use of

2 DEED OF ASSIGNMENT OF INTELLECTUAL PROPERTY Confidentil DATE PARTIES 1 [INSERT] (Assignor 2 [INSERT NAME OF COMPANY] LIMITED, compny numer [insert] (Compny BACKGROUND The Assignor is [shreholder in] [founder of] [employee of] the Compny. The Assignor hs greed to ssign to the Compny ll of his or her intellectul property rights relting to the usiness, technologies, softwre, products nd services of the Compny on the terms set out in this Deed. [User notes: This document must e signed y two directors of the compny (unless otherwise specified in the constitution of the compny. If the compny hs only one director, tht director s signture must e witnessed.] SIGNED AND DELIVERED s DEED for [INSERT NAME OF COMPANY] y: Director Director Print full nme Print full nme 1

3 SIGNED AND DELIVERED s DEED y [INSERT NAME OF ASSIGNOR] in the presence of: Signture of witness [Insert nme of Assignor] Occuption of witness Address of witness 2

4 TERMS OF THIS DEED 1 INTERPRETATION 1.1 Definitions: In this Deed the following words hve the following menings: Definition Assigned IP Mening ll Intellectul Property Rights rising in connection with or relting to the usiness, technologies, softwre, products nd services of the Compny, including ll Intellectul Property Rights in the: c ptents, trde mrks nd domin nmes; copyright works including softwre nd wesites; nd knowhow nd confidentil informtion, listed in Schedule 1. Deed Intellectul Property Rights this Deed, including its Schedule. includes ll right, title nd interest in nd to copyright (including copyright in softwre source code nd oject code, rights in dtses, inventions, ptents, registered nd unregistered trde mrks, registered nd unregistered designs, circuit lyouts, confidentil informtion, know-how, trde secrets, trde nmes, usiness nmes, nd domin nmes, ll pplictions for ny of those intellectul property rights, nd like rights. 1.2 Interprettion: reference to: i ii iii iv v cluse or Schedule is to cluse in or schedule to this Deed; person includes ody corporte, n ssocition of persons (whether corporte or not, trust, governmentl or other regultory ody, uthority or entity, in ech cse whether or not hving seprte legl personlity; including nd similr words do not imply ny limittion; sttute includes references to tht sttute s mended or replced from time to time; prty is reference to prty to this Deed, nd includes tht prty s permitted ssigns; nd 3

5 vi $ or dollrs re to New Zelnd currency; c the hedings in this Deed re for convenience only nd hve no legl effect; nd the singulr includes the plurl nd vice vers. 2 ASSIGNMENT 2.1 Assignment: To the extent tht the Assignor owns (or if pplicle owned Intellectul Property Rights in the Assigned IP, the Assignor ssigns to the Compny (or if pplicle confirms the ssignment to the Compny of ll of his or her right, title nd interest in the Assigned IP. 2.2 Assignment of right to sue: The ssignment in cluse 2.1 includes the right for the Compny to sue or ring proceedings ginst ny third prty for infringement of ny Assigned IP (whether the infringement occurs efore, on or fter the dte of this Deed nd the right to sue for dmges nd other legl nd equitle remedies in respect of ll cuses of ction rising efore, on or fter the dte of this Deed. 2.3 Perfection of ssignment: The Assignor must: do ll resonle things nd execute, t the Compny s request nd cost, ll documents tht the Compny considers necessry or desirle to give effect to the ssignment in cluse 2.1, including perfecting ny prt of tht ssignment, nd to fcilitte the filing, otining, mintennce, protection or enforcement of the Assigned IP in the nme of the Compny; nd not chllenge, contest or oppose the vlidity of, or the Compny s right, title or interest in or to, ny of the Assigned IP. 2.4 Morl rights: The Assignor irrevocly nd unconditionlly wives in fvour of the Compny ny nd ll morl rights conferred on the Assignor y legisltion in New Zelnd or elsewhere in the world in respect of ny work the rights in which re, s result of this deed, vested in the Compny. 3 GENERAL 3.1 Confidentility: The Assignor must keep this Deed, its terms nd informtion he or she receives out the Compny nd its usiness in connection with this Deed, the Assigned IP nd ll informtion relting to the Assigned IP (Confidentil Informtion confidentil, nd must not use or disclose tht Confidentil Informtion without the prior written consent of the Compny except to the extent tht: disclosure is required y lw; the relevnt informtion is lredy in the pulic domin; or 4

6 c disclosure is resonly required to otin professionl dvice nd the prty receiving the Confidentil Informtion hs entered into confidentility undertkings sustntilly the sme s those set out in this cluse. 3.2 Entire greement: This Deed contins ll of the terms greed etween the prties relting to the mtters delt with in this Deed nd supersedes nd cncels ll prior discussions nd greements covering the suject mtter of this Deed. The prties hve not relied on ny representtion, wrrnty or greement relting to the suject mtter of this Deed tht is not expressly set out in this Deed, nd no such representtion, wrrnty or greement hs ny effect from the dte of this Deed. 3.3 Further ssurnces: The prties must ech sign ll further documents, pss ll resolutions nd do ll further things s my e necessry or desirle to give effect to this Deed. 3.4 Amendments: This Deed my only e mended y greement of the prties in writing. 3.5 Wiver: No exercise or filure to exercise or dely in exercising ny right or remedy will constitute wiver y tht prty of tht or ny other right or remedy ville to it. 3.6 No prtnership: Nothing contined in this Deed will e deemed or construed to constitute ny prty to e prtner, gent or representtive of ny other prty, or to crete ny trust or commercil prtnership. 3.7 Costs: Except s otherwise provided in this Deed, the prties will meet their own costs relting to the negotition, preprtion nd implementtion of this Deed. 3.8 Prtil invlidity: If ny provision of this Deed ecomes invlid or unenforcele to ny extent, the reminder of this Deed nd its ppliction will not e ffected nd will remin enforcele to the gretest extent permitted y lw. 3.9 Signture: This Deed my e executed in two or more counterprts, ech of which is deemed n originl nd ll of which constitute the sme Deed. A prty my enter into this Deed y signing nd sending (including y emil counterprt copy to ech other prty Delivery: For the purposes of section 9 of the Property Lw Act 2007 nd without limiting other delivery modes, this Deed is delivered y ech prty on the erlier of: physicl delivery of n originl (or counterprt of the Deed properly executed y tht prty, to ech other prty (or its solicitors; nd trnsmission (including y emil of fcsimile or scnned copy of n originl (or counterprt of the Deed properly executed y tht prty, to ech other prty (or its solicitors Governing lw nd jurisdiction: This Deed will e governed y New Zelnd lw, nd the prties sumit to the non-exclusive jurisdiction of the New Zelnd courts. 5

7 SCHEDULE Assigned IP Ptents, trde mrks nd domin nmes [Insert detils of ptents, registered nd unregistered trde mrks nd domin nmes tht the Assignor hs or hd n ownership interest in, including ny pplictions for ptents, trde mrks, etc.] Know how nd confidentil informtion [Insert detils of know how nd confidentil informtion the Assignor hs or hd n ownership interest in.] Copyright works including softwre nd wesites [Insert detils of copyright works including softwre nd wesites. For softwre, include relevnt detils of softwre nme nd version, lirries etc, nd do the sme for wesites if relevnt.] 6