Docstoc Legal Agreements
This is an agreement which effectively assigns a patent holder's rights in and to a patent to
another party. The agreement sets forth the specific terms and conditions of the
assignment including the identities of the assignor and assignee, a patent description 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 Rhode Island that assigns or acquires patent rights in an invention.
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PATENT ASSIGNMENT AGREEMENT
THIS PATENT ASSIGNMENT AGREEMENT made on this ____ [Month] ____ [Date],
20____ by and between ______________________ [Instruction: Insert the name of patent
holder], residing 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 rights], having an address at ___________________________ [Instruction:
Insert the address of assignee entity/individual] (hereinafter referred to as the “Assignee”).
Assignor on the one hand and Assignee on the other hand, are each sometimes referred to herein
as “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: Patent pending means that inventor has either filed a Provisional
application or a complete application for a patent which is not yet granted.
2. Patent Description
By application dated ____ [Month] ____ [Date], 20____, the Assignor applied for and
subsequently received from the United States Patent & Trademark Office a Patent dated
____ [Month] ____ [Date], 20____ bearing Patent Number _____________ [Instruction:
Insert the patent application number], a copy of which is attached to this Assignment as
Exhibit A, reduced to practice on ____ [Month] ____ [Date], 20____.
Pursuant to and for the consideration set out in Clause 4 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.
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 ($20,000) [Instruction: Insert the amount] as full payment for all rights granted.
Payment shall be made upon execution of this Agreement.
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5. Improvements [OPTIONAL]
a) If the Assignor makes, devises or discovers, or otherwise acquires rights in, any
Improvement, it shall promptly notify the Assignee in writing, giving details of the
b) Unless prohibited by law, the Assignor shall immediately assign, vest and transfer to the
Assignee, for no additional consideration, all such Improvements and the Inventions
related thereto which shall be then regarded as part of the Patents, and the provision of
the Agreement shall apply to them (subject to the applicable changes). If any applicable
law prohibits such assignment for no additional consideration, the Parties hereby agree
that the additional consideration to be paid for the assignment of Improvements shall be
_________ ($__) [One US Dollar ($1)] [Instruction: Insert the amount].
c) Notwithstanding the above, if by the operation of law such assignment is 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 Assignor hereby represents and warrants that, till date, the Patent has not been
invalidated by judicial courts and is in full force and effect. The Patent covering the
Invention for which the Patent is granted 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 its 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.
a) Option of Assignee: The Assignee may terminate the license granted by this agreement,
provided the Assignee shall not be in default hereunder, by giving the Assignor
___________ (___) [◊ Ninety (90)] days notice to its 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 its obligation to pay royalties or to satisfy any other obligations,
accrued hereunder prior to the date of such termination.
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b) Option of Assignor: The Assignor may, at its 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 ___________ (___) [◊ Thirty (30)] 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 filing by the Assignee of a petition of bankruptcy, or a petition or answer seeking
reorganization, readjustment or rearrangement of its 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 its creditors; or the institution by the Assignee of any proceedings for the
liquidation or winding up of its 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 liens or encumbrances]
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 attorneys' 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.
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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 Rhode Island 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.
e) Cumulative Rights: Any specific right or remedy provided in this Agreement will not be
exclusive but will be cumulative upon all other rights and remedies described in this
section and allowed under applicable law.
f) 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.
g) 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.
h) Effects of and Procedure on Termination: Upon the expiration or termination of this
Agreement, the Assignee agrees immediately to discontinue all use of the Patent.
i) 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
ii. 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.
iii. Governing Law: Forum: This Agreement shall be governed by the laws of the State
of Rhode Island, applicable to agreements made and to be wholly performed therein.
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IN WITNESS WHEREOF, the parties have caused this License Agreement to be executed the
day and year set forth above.
[Name and Address of Assignor] [Name and Address of Assignee]
By : ________________________ By : ________________________
Title : ________________________ Title : ________________________
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DESCRIPTION OF PATENT
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