Docstoc Legal Agreements
This is an agreement which effectively assigns a patent holder's rights in a pending patent
to another party. A pending patent is where an inventor has filed a patent application, but
the patent has not yet been granted. The agreement sets forth the specific terms and
conditions of the assignment including the identities of the assignor and assignee, a
description of the patent application and payment details. It is necessary to memorialize
this transaction in written form and to record it with the United States Patent and Trademark
Office in order to prevent any future litigation or disagreements. This document should be
used by an individual or company located in Kansas that wishes to assign or acquire rights
in an invention where the patent is still pending.
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PENDING PATENT ASSIGNMENT AGREEMENT
THIS PENDING PATENT ASSIGNMENT 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 the “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 Kansas, located at ___________________________
[Instruction: Insert the address of entity/individual] (hereinafter referred to as the
“Assignee”). The Assignor and the Assignee may be referred to individually as the “Party” and
collectively as the “Parties” to this Agreement.
NOW, THEREFORE, in consideration of the payments set out in this Agreement, the Assignor
has authorized the Assignee to use the patent on the terms and conditions contained herein
Pending Patent: Pending Patent means that inventor has either filed a Provisional
application or a complete application for a patent, which is not yet been granted.
2. Patent Description:
On _____ [Month] ____ [Date], 20___, the 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
[Instruction: Insert the Description of Invention]
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Pursuant to and for the consideration set out in the 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.
In consideration for the assignment of the patents, Inventions and improvements hereunder,
the Assignor shall receive the following compensation:
A flat fee of ________ ($___) [Instruction: Insert the amount, e.g., twenty thousand
dollars ($20,000) as full payment for all rights granted. Payment shall be made upon
execution of this Agreement.
5. Improvements [OPTIONAL]
a) If the Assignor makes, devises, discovers or otherwise acquires rights in any
improvement, he shall promptly notify the Assignee in writing, giving details of the
b) Unless prohibited by law, the Assignor shall immediately assign, vest and transfer to the
Assignee, for no additional consideration, all such improvements and the Inventions
related thereto which shall be then regarded as part of the patents, and the provisions of
the Agreement shall apply to them (subject to the applicable changes). If any applicable
law prohibits such assignment for no additional consideration, the Parties hereby agree
that the additional consideration to be paid for the assignment of improvements shall be
_________ ($__) [One US Dollar ($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,
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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.
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/her expense, the Assignor shall provide all reasonable assistance to enable the Assignee
to 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
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 the
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: The Assignor may, at his/her option, terminate this Agreement by
written notice to the Assignee in case of:
i. Default in the payment of fees required to be paid by the Assignee to the Assignor
ii. Default in the performance of any other material obligation contained in this Agreement
on the part of the Assignee to be performed and such default shall continue for a period
of ___________ (___) [◊ Ninety (90)] days after the Assignor shall have given to the
Assignee written notice of such default;
iii. Adjudication that the Assignee is bankrupt or insolvent;
iv. The filling by the Assignee of a petition of bankruptcy, or a petition or answer seeking
reorganization, readjustment or rearrangement of his/her 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 the Assignee; or
the making by the Assignee of assignment or an attempted assignment for the benefit of
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his/her creditors; or the institution by the Assignee of any proceedings for the liquidation
or winding up of his/her business or affairs.
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]
The Assignee shall not license, sub-assign, transfer or otherwise convey assignment's rights or
obligations under this Agreement without the Assignor's prior written consent. The Assignee
shall indemnify and hold harmless the Assignor against all liability, costs and expenses,
including, but not limited to, a reasonable attorney’s fee, arising out of or in connection with
claims relating to an attempted license, sub-assignment, transfer or other conveyance of the
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
shall be conducted in Kansas 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: The Assignor and the Assignee are independent
contractors and are not and shall not be construed as joint venturers, 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.
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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, the 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
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.
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
Kansas, 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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