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 New Mexico that wishes to assign or acquire rights in an invention where the patent is still pending.
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 New Mexico that wishes to assign or acquire rights in an invention where the patent is still pending. ® DISCLAIMERS: ALL INFORMATION AND FORMS ARE PROVIDED “AS IS” WITHOUT ANY WARRANTY OF ANY KIND, EXPRESS, IMPLIED, OR OTHERWISE, INCLUDING AS TO THEIR LEGAL EFFECT AND COMPLETENESS. They are for general guidance and should be modified by you or your attorney to meet your specific needs and the laws of your state. Use at your own risk. Docstoc, its employees or contractors who wrote or modified any form, are NOT providing legal or any other kind of advice and are not creating or entering into an Attorney -Client relationship. The information and forms are not a substitute for the advice of your own attorney. Use of this document and our service are deemed to be your acknowledgement and agreement to the following: The disclaimers and links on this page and the back page(s); our Terms of Service (http://www.docstoc.com/popterm.aspx?page_id=15), and read more here (http://www.docstoc.com/popterm.aspx?page_id=114) for additional disclaimers and more. You also agree that if you are not the person using the document and services that you will provide such person(s) who will be with these front and back disclaimer pages. This document is not approved, endorsed by, or affiliated with any State, or governmental or licensing entity. Entire document copyright © Docstoc®, Inc., 2010 - 2013. All Rights Reserved 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 New Mexico, 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 (“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 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 follows: [Instruction: Insert the Description of Invention] ______________________________________________________________________________ ______________________________________________________________________________ ______________________________________________________________________________ ______________________________________________________________________________ ______________________________________________________________________________ ____________________________________________________________ © Copyright 2011 Docstoc Inc. registered document proprietary, copy not 2 3. Assignment: 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. 4. Payment: 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 ($20,000) as full payment for all rights granted. Payment shall be made upon execution of this Agreement. 5. Improvements [OPTIONAL] a) If the Assignor makes, devises, discovers or otherwise acquires rights in any improvement, he shall promptly notify the Assignee in writing, giving details of the improvement. b) Unless prohibited by law, the Assignor shall immediately assign, vest and transfer to the Assignee, for no additional consideration, all such improvements and the Inventions related thereto which shall be then regarded as part of the patents, and the provisions of the Agreement shall apply to them (subject to the applicable changes). If any applicable law prohibits such assignment for no additional consideration, the Parties hereby agree that the additional consideration to be paid for the assignment of improvements shall be _________ ($__) [One US Dollar ($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, © Copyright 2011 Docstoc Inc. registered document proprietary, copy not 3 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/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 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 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 hereunder; 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 © Copyright 2011 Docstoc Inc. registered document proprietary, copy not 4 his/her creditors; or the institution by the Assignee of any proceedings for the liquidation or winding up of his/her business or affairs. 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: 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 New Mexico 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. © Copyright 2011 Docstoc Inc. registered document proprietary, copy not 5 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 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. 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 New Mexico, 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 : ________________________ © Copyright 2011 Docstoc Inc. registered document proprietary, copy not 6
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