Pending Patent Assignment
Agreement
This Pending Patent Assignment Agreement is intended to be used by a patent holder
ocstoc Legal Agreements
(Assignor) to vest, transfer and assign to an individual or entity desiring to obtain the patent
license (Assignee) all rights, titles, interests, claims and demands in and to the Patent
Pending application for a Patent which is not yet granted.
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© Copyright 2011 Docstoc Inc. registered document proprietary, copy not 1
Attorney Drafted
PENDING PATENT ASSIGMENT AGREEMENT
THIS PENDING PATENT ASSIGMENT AGREEMENT (hereinafter referred to as
“Agreement”) made on this _____ [Month] ____ [Date], 20___, by and between
______________________ [Instruction: Insert the name of patent holder] ,located at
___________________________________________ [Instruction: Insert the address of patent
holder] (hereinafter referred to as “Assignor”), and ___________________ [Instruction: Insert
the name of an individual or entity desiring to obtain the patent license] , a company
organized and existing under the laws of the Delaware, located at
___________________________ [Instruction: Insert the address of entity/individual]
(hereinafter referred to as " Assignee"). Assignor and Assignee may be referred to individually
as “Party” and collectively as “Parties” to this Agreement.
NOW, THEREFORE, in consideration of the payments set out in this Agreement Assignor has
authorized the Assignee to use the patent on the terms and conditions contained herein
(“Assignment”).
1. Definition:
Pending Patent: Pending Patent means that inventor has either filed a Provisional
application or a complete application for a patent which is not yet granted.
2. Patent Description:
On _____ [Month] ____ [Date], 20___, Assignor filed for a Provisional Patent application
with USPTO
Patent Title : _____________________________
Patent Application Serial Number : _____________________________
and the inventions set forth and described in that Application (“Invention”), and described as
follows:
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[Instruction: Insert the Description of Invention]
______________________________________________________________________________
______________________________________________________________________________
______________________________________________________________________________
______________________________________________________________________________
______________________________________________________________________________
____________________________________________________________
3. Assignment:
Pursuant to and for the consideration set out in Clause below, the Assignor hereby vests,
transfers and assigns to the Assignee, absolutely with full title guarantee, all its right, title,
interest, claim and demand in and to the Patent Pending application including :
a) the right to claim priority from and to prosecute and obtain grant of patent; and
b) the right to file divisional applications based thereon and to prosecute and obtain grant of
patent on such divisional application;
c) in respect of Invention, the right to file an application, claim priority from such
application, and prosecute and obtain grant of patent or similar protection in or in respect
of any country or territory in the world;
d) the right to bring, make, oppose, defend, appeal proceedings, claims or actions and obtain
relief (and to retain any damages recovered) in respect of any infringement, or any other
cause of action arising from ownership of any of the Patents or any patents granted on
any of the Patent applications filed as aforesaid, whether occurring before, on or after the
date of this Assignment.
4. Payment:
In consideration for the Assignment of the Patents, Inventions and Improvements hereunder,
Assignor shall receive the following compensation:
A flat fee of ________ ($___) [Instruction: Insert the amount E.g., twenty thousand
dollars only ($20,000) as full payment for all rights granted. Payment shall be made upon
execution of this Agreement.
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5. Improvements [OPTIONAL]
a) If the Assignor makes, devises, or discovers, or otherwise acquires rights in, any
Improvement he shall, promptly notify the Assignee in writing, giving details of the
Improvement.
b) Unless prohibited by law, the Assignor shall immediately assign, vest and transfer to the
Assignee, for no additional consideration, all such Improvements and the Inventions
related thereto which shall be then regarded as part of the Patents, and the provisions of
the Agreement shall apply to them (subject to the applicable changes). If any applicable
law prohibits such Assignment for no additional consideration, the Parties hereby agree
that the additional consideration to be paid for the assignment of Improvements shall be
_________ ($__) [One US Dollar only ($1)] [Instruction: Insert the amount].
c) Notwithstanding the above, if by the operation of law such assignments are not possible,
the Assignor shall grant the Assignee, for no additional consideration, a worldwide,
royalty-free, irrevocable, perpetual exclusive license to use, make, manufacture, sell,
reproduce,
distribute, modify, display, prepare derivative works, or any other rights available with
respect to Improvements and any rights therein.
6. Representations and Warranty:
The Patent is pending. The Patent covering the Invention for which the Patent application
was filed is the sole property of the Assignor, without any contribution, assistance,
participation or alleged rights of any third party.
7. Indemnity:
The Assignor shall indemnify and hold the Assignee harmless against all and any loss,
damages, liability and costs (including reasonable legal expenses) that the Assignee suffers
or incurs as a result of or in connection with any breach by the Assignor of the warranties in
Clause 6 above or other obligations under this Agreement. At the request of the Assignee and
at his expense, the Assignor shall provide all reasonable assistance to enable the Assignee to
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resist any claim, action or proceedings brought against the Assignee as a consequence of that
breach. This indemnity shall apply whether or not the Assignee has been negligent or at fault.
8. Termination:
a) Option of Assignee: Assignee may terminate the license granted by this Agreement,
provided Assignee shall not be in default hereunder, by giving Assignor ___________
(___) [◊ Ninety (90)] days written notice of his intention to do so. If such notice shall
be given, then upon the expiration of such __________ (___) [◊ Ninety (90)] days the
termination shall become effective; but such termination shall not operate to relieve
Assignee from his obligation to pay royalties or to satisfy any other obligations, accrued
hereunder prior to the date of such termination.
b) Option to Assignor: Assignor may, at his option, terminate this Agreement by written
notice to Assignee in case of:
i. Default in the payment of fees required to be paid by Assignee to Assignor hereunder;
ii. Default in the performance of any other material obligation contained in this Agreement
on the part of Assignee to be performed and such default shall continue for a period of
___________ (___) [◊ Ninety (90)] days after Assignor shall have given to Assignee
written notice of such default;
iii. Adjudication that Assignee is bankrupt or insolvent;
iv. The filling by Assignee of a petition of bankruptcy, or a petition or answer seeking
reorganization, readjustment or rearrangement of his business or affairs under any law or
governmental regulation relating to bankruptcy or insolvency. The appointment of a
receiver of the business or for all or substantially all of the property of Assignee; or the
making by Assignee of assignment or an attempted assignment for the benefit of his
creditors; or the institution by Assignee of any proceedings for the liquidation or winding
up of his business or affairs.
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9. Encumbrance:
Each Patent is free from any encumbrance, security interest, option, mortgage, charge, lien,
right of third party or other adverse rights.
If not specify below:
___________________________________________________________________________
___________________________________________________________________________
___________________________________________________________________________
___________________________________________________________________________
___________________________________________________________________________
_________________________________________________________________________
[Instruction: Describe if there is any lien or encumbrance]
10. Sub-Assignment:
Assignee shall not license, sub assign, transfer, or otherwise convey assignment's rights or
obligations under this Agreement without Assignor's prior written consent. Assignee shall
indemnify and hold harmless Assignor against all liability, costs, and expenses, including, but
not limited to, a reasonable attorneys' fee, arising out of or in connection with claims relating to
an attempted license, sub assignment, transfer, or other conveyance of Assignee's rights and
obligations.
11. General Provisions:
a) Successors/Assigns: This Agreement is binding upon and shall inure to the benefit of the
respective successors and/or assigns of the Parties hereto.
b) Amendment and Modification: This Agreement sets forth the entire agreement between
the Parties with respect to the subject matter hereof, and may not be modified or amended
except by written agreement executed by the Parties hereto.
c) Arbitration: Any dispute relating to the interpretation or performance of this Agreement
shall be resolved at the request of either Party through binding arbitration. Arbitration
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shall be conducted in Delaware in accordance with the then-existing rules of the
American Arbitration Association. Judgment upon any award by the arbitrators may be
entered by any state or federal court having jurisdiction. Both Parties intend that this
agreement to arbitrate be irrevocable.
d) Independent Business Relationship: Assignor and Assignee are independent
contractors and are not and shall not be construed as joint ventures, partners,
employer/employee, or agents of the other and neither shall have the power to bind or
obligate the other, except as set forth in this Agreement.
e) Publicity: Neither Party will make any public announcement or issue any press release
concerning the terms of this Agreement without the prior approval of both Parties.
f) Waivers: The waiver by either Party of a breach or other violation of any provision of
this Agreement shall not operate as, or be construed to be, a waiver of any subsequent
breach of the same or other provision of this Agreement.
g) Effects of and Procedure on Termination: Upon the expiration or termination of this
Agreement, Assignee agrees immediately to discontinue all use of the pending Patent.
h) Counterparts: This Agreement may be executed in several counterparts, each of which
shall be an original, but all of which together shall constitute one and the same
Agreement.
i) Inadequate Legal Remedy: Both Parties understand and acknowledge that violation of
their respective covenants and agreements may cause the other irreparable harm and
damage, that may not be recovered at law, and each agrees that the other’s remedies for
breach may be in equity by way of injunctive relief, as well as for damages and any other
relief available to the non-breaching party, whether in law or in equity.
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j) Articles and Other Headings: The articles and other headings contained in this
Agreement are for reference purposes only, and shall not affect in any way the meaning
or interpretation of the terms of this Agreement.
k) Governing Law/ Forum: This Agreement shall be governed by the laws of the State of
Delaware, applicable to agreements made and to be wholly performed therein.
IN WITNESS WHEREOF, the Parties have caused this Agreement to be executed the day and
year set forth above.
[Name and Address of Assignor]
By : ________________________
Title : ________________________
[Name and Address of Assignee]
By : ________________________
Title : ________________________
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