IP Assignments for Unrelated Parties

On 25th May 2018, PwC Legal Switzerland ("PwC") published two new automated documents on PartnerVine that assign IP: the "Patent or Trade Mark Assignment" and the "Assignment of IP in Assets". These are the first automated documents that address assignments of intellectual property between unrelated parties. This blog is a question and answer session about the assignment documents with Natascha Tsalas, senior IP counsel at PwC.

PartnerVine: PwC has recently posted two IP assignment documents on PartnerVine. In what circumstances would you use one of these documents?

Natascha: Most commonly, these documents would be used as part of a wider transaction involving the acquisition of all or part of another business, where the assets to be acquired include intellectual property rights.  These documents may also be used on a stand-alone basis, in cases where intellectual property rights are the only assets being acquired.  For example, you agree to sell certain trade marks or domain names that are no longer required by your business, or you wish to acquire data and information from a third party. 

PartnerVine: PwC is already selling an intra-group Trade Mark Assignment, Patent Assignment and Intellectual Property Assignment on PartnerVine. How do the new documents differ from the intra-group documents?

Natascha: The intra-group assignments look similar to these documents because companies that are part of a group are required to transact on arm’s length terms. However, the intra-group documents include provisions that are specific to such situations, for example describing the rationale for the transaction, and the ability to leave payment outstanding as an intra-group loan.  Conversely, the new documents that are for use between unrelated parties offer more flexibility to customise the warranties and liability provisions to the user’s needs.  

PartnerVine: To make it easier for our users, could you explain the two new assignments you've published?

Natascha: Sure. We've published the following two assignments on May 25th. Here is a summary of the two new assignments:

Patent or Trade Mark Assignment. This agreement assigns Swiss patents and/or trademarks (both registered and unregistered). The assignment may also include domain names (although these are not strictly speaking intellectual property rights) and related know-how.  While the document can be used to assign patents or trademarks registered in countries other than Switzerland, each country has its own formalities for recording an assignment of intellectual property rights in the relevant register, and so we can’t guarantee that this document reflects all the formalities that may be required in jurisdictions other than Switzerland. 

Assignment of IP in Assets. This agreement assigns all intellectual property rights subsisting in specified assets such as technology, data or editorial content. This includes unregistered rights such as copyright, as well as registered rights including patents and trademarks. It is drafted broadly to include worldwide rights, but as with the Patent or Trade Mark Assignment, local law advice should be obtained in relation to the formalities required to assign rights subsisting in countries other than Switzerland. 

PartnerVine: What other recommendations would you give to anyone thinking of using these documents? 

Natascha: Before purchasing any intellectual property rights, it is important to perform due diligence to assess the quality and quantity of the intellectual property portfolio that is being acquired. This would involve searching relevant registers to validate the existence of registered rights, as well as identifying potential infringements.  In addition, the documents may be configured to include appropriate warranties by the seller as to ownership, validity and non-infringement in relation to the assigned rights. 

PartnerVine: Thanks!

Nothing in this blog may be relied on as legal advice. Please consult your own counsel for advice specific to your facts and circumstances.

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Patent or Trade Mark Assignment Patent or Trade Mark Assignment
PricewaterhouseCoopers AG
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Assignment of IP in Assets Assignment of IP in Assets
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