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Assignment of IP Agreement (M&A)

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The Law of Assignment (3rd Edition)

Marcus smith, nico leslie.

This book is the leading text on the law relating to intangible property or choses in action. Its clear and approachable structure covers all forms of intangible property (debts, rights under contract, securities, intellectual property, leases, rights/causes of action, and equitable rights), considering the nature of intangible property, how it comes into being, and how it is transferred or assigned. The first part of the book analyses the general principles regarding intangibles and their transfer, and the second examines the practical considerations relating to particular types of intangibles, securities, insurance contracts, leases, and intellectual property under the law. This new edition includes new chapters on powers of attorney and factoring, areas particularly important to legal practice. Other significant developments include the expansion of the chapter on leases to include leasing of chattels, and more material on securities, especially regarding the operation of settlement systems.

Bibliographic Information

Affiliations are at time of print publication..

Marcus Smith, author

Nico Leslie, author

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• Foreword to The Third Edition
• Foreword to the Second Edition
• Foreword to the First Edition
• Preface to The Third Edition
• Preface to the First Edition
• Summary Contents
• Detailed Contents
• Table of Cases
• Statutory Instruments
• Netherlands
• United States
• Conventions
• Regulations
• International Conventions
• List of References
• List of Authority Abbreviations
• Preliminary Material
• Part III.01
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Practical Law Cross-border Intellectual Property: Intellectual property right assignments Q&A - Singapore

7 April 2021

Contributed by Allen & Gledhill Partner Dr Stanley Lai, SC, “ Intellectual property right assignments Q&A: Singapore ” provides an overview of the legal regime governing intellectual property right assignments under Singapore law. Areas covered include the registration and recordal aspects, as well as warranties and indemnities. This Q&A forms part of the Practical Law Cross-border Resource Centre on Intellectual Property.

Reproduced from Practical Law with the permission of the publishers. For further information, visit www.practicallaw.com .

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Intellectual Property General Resources

• USPTO United States Patent and Trademark Office official website. Following links allow access to Trademark Process, TESS Search, and Filing Online.
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• Copyright Clearance Center Tutorial on copyright law and the impact on an institution's use of IP.
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• Trademark Registration Checklist--Student Version
• What's Next After Filing for a Trademark Powerpoint presentation on the next steps to take after filing a Trademark application.
• Sample Company Naming Letter to Client

IP Practical Guidance

• Assignment of Employee Inventions State Laws Chart: Overview (West Practical Law) An at-a-glance Chart describing state laws addressing assignment of employee inventions agreements, which employers commonly use to protect the employer's intellectual property rights, including trade secrets and other proprietary information. This Chart discusses state statutory limitations on these assignments, as well as any notice requirements. This Chart applies to private sector employers.
• Employee Confidentiality and Proprietary Rights Agreement (MA) (West Practical Law) A Massachusetts-compliant agreement between an employer and an employee concerning confidentiality and appropriate handling of the employer's commercially valuable information, compliance with relevant security rules and policies, and protection of the employer's intellectual property assets.
• Intellectual Property & Technology Practice Area (Lexis+ Practical Guidance) The Intellectual Property & Technology Practice Area provides access to a wide variety of practical resources to assist in tasks involved in transactional practice. Guidance includes checklists, practice notes, and sample forms and clauses.
• Intellectual Property & Technology Practice Area (West Practical Law) The Intellectual Property & Technology practice area on Practical Law provides access to a wide range of resources to help you carry out tasks as a practitioner. more... less... West Practical Law
• Trademark Registration and Maintenance Resource Kit (Lexis+ Practical Guidance) This resource kit provides an overview of trademark registration and maintenance, including drafting, filing, and prosecuting trademark applications; and maintaining and renewing trademark registrations, and other post-registration issues.
• Trademark Registration and Maintenance Toolkit (West Practical Law) This toolkit contains resources to help US-based mark owners and their counsel register a trademark or service mark with the US Patent and Trademark Office (USPTO) and maintain the registration.

Intellectual Property Treatises

• Nimmer on Copyright (Lexis) Nimmer on Copyright provides comprehensive insights into copyright protection in the digital age as well as exhaustive discussions of traditional issues. This definitive work on copyright law is a rich resource for the expert, as well as the practitioner just beginning to explore the arena.
• McCarthy on Trademarks & Unfair Competition (Westlaw) This treatise is a leading authority on trademark law. It provides information and analysis on needed to successfully represent clients in formulating, registering, licensing, protecting, and litigating trademarks and related rights. more... less... Available on Westlaw.
• Chisum on Patents (Lexis) Chisum on Patents is is the leading authority on U.S. patent law. It gives a comprehensive treatment of patentability, validity, examination, and infringement, and includes reprints and commentary on all major primary law sources. more... less... Available on Lexis.
• Copyright Law: A Practitioner's Guide (PLI) This book is intended for the practitioner need a straightforward answer to copyright matters. more... less... Available on PLI Online
• Patent Law: A Practitioner's Guide (PLI) This book provides a clear, uncomplicated approach to a complex field, providing practitioners with a solid working knowledge of the legal framework governing patents. It also features numerous time-saving sample forms, flowcharts, diagrams and tables that quickly enhance your understanding of key patent law issues. more... less... Available on PLI Online.
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Federal Circuit Reversal in Assignment Clause Case Highlights Importance of Contract Language in Intellectual Property Ownership

Contributors

Jeffrey S. Whittle

Karthika Perumal, Ph.D.

Samuel A. Savanich

By Jeffrey Whittle, CLP ; Karthika Perumal, Ph.D., CLP ; & Sam Savanich, CLP-A

In a split opinion issued Tuesday , and based on language in an assignment clause of a contract, the Federal Circuit overturned a district court's summary judgment that Core Optical lacked standing to sue Nokia, Cisco, and ADVA for infringement.

The case, involving a fiber optic patent, centers on the interpretation of the phrase "entirely on my own time" within an assignment clause of the inventor's contractual agreement with his former employer, TRW Inc.

Nokia, Cisco, and ADVA contended that Dr. Mark Core's assignment of his patent rights to Core Optical was invalid because these rights allegedly had been automatically assigned to Dr. Core's employer, TRW, at the time of the invention. The inventor's contract with TRW stipulated that any inventions developed during work hours were to be assigned to the company, while inventions developed entirely on his “own time” remained Dr. Core’s property.

Initially, the lower court granted Nokia and the defendants summary judgment, ruling that the invention was developed as part of the Dr. Core’s research, funded by TRW, and was at least in part “TRW time” and not “entirely” Dr. Core’s “own time.” Therefore, this court concluded that the patent was automatically assigned to TRW, and Core Optical, Dr. Core’s company, lacked standing to sue.

The Federal Circuit majority, however, decided on appeal that it was not clear if the Ph.D. research conducted by Dr. Core constituted the inventor's own time. On one hand, Dr. Core was free to use particular hours or days for his research with no accountability to TRW; and, on the other hand, he worked on projects connected to TRW’s business on TRW-funded fellowship, with reporting obligations to TRW. Therefore, the Federal Circuit vacated the judgment and remanded the case back to the district court for further proceedings, thereby allowing Dr. Core to proceed with his patent infringement lawsuit.

The majority opinion noted, “[b]oth Core Optical’s and Nokia's interpretations of how the years-long, TRW-funded research should be treated under the 1990 invention agreement are plausible based on the undisputed facts presented. However, which interpretation prevails has not been determined, acknowledging that the contract language does not have an unambiguous meaning when applied to these facts.”

In dissent, U.S. Circuit Court Judge Haldane Robert Mayer argued that the lower court was correct in ruling that the inventor did not develop the fiber optic patent on his own time.

This majority decision underscores the complexities and nuances surrounding intellectual property rights and the importance of clear contractual terms regarding intellectual property issues, especially for intellectual property developed by an individual during non-traditional employment, such as employees permitted to pursue research or consulting projects. Care should be taken when drafting assignment and other intellectual property related language to reduce risk of a finding of ambiguity as in this instance.

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Patent Assignment Agreement (Short Form) | Practical Law

Patent Assignment Agreement (Short Form)

Practical law standard document 6-507-2833  (approx. 14 pages).

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Assignment of intellectual property rights and goodwill (for use with asset purchase agreement)

Practical law uk standard document w-023-6300  (approx. 34 pages), get full access to this document with a free trial.

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