ip-assignment
Drafts intellectual property assignment agreements transferring patents, trademarks, copyrights, and trade secrets. Covers conveyancing language, registration recordation, consideration, representations and warranties, and post-closing obligations. Use when drafting IP assignments, asset purchase...
SKILL.md
Full skill instructions
IP Assignment Agreement
Drafts an agreement transferring all right, title, and interest in specified IP assets from assignor to assignee.
Prerequisites
Gather before drafting:
- IP inventory — type, registration numbers, filing dates, jurisdictions, pending applications
- Chain of title — prior assignments, employment/contractor agreements, co-ownership
- Encumbrances — active licenses, liens, security interests
- Party details — legal names, entity types, jurisdictions, signatory authority
- Deal terms — consideration, payment timing, license-back, retained rights
- Recording requirements — target registries (USPTO, USCO, foreign), notarization
Quick Start
Core conveyancing language:
Assignor hereby irrevocably assigns, transfers, and conveys to Assignee
all right, title, and interest in and to the Assigned IP, including:
Then enumerate: use, reproduce, modify, distribute, sublicense, enforce rights, associated goodwill, right to sue for past/present/future infringement, renewals/extensions/continuations, and ancillary materials.
Agreement Structure
1. Parties & Recitals
- Full legal name, entity type, jurisdiction, address, signatory for each party
- Flag: multiple assignors, joint ownership (all co-owners must consent), partial assignments
- Describe IP with registration-level specificity; reference exhibits for full listings
- State business context; note chain-of-title history
- Do NOT embed operative warranties in recitals
2. Assignment Clause
Rights checklist:
- Use, reproduce, modify, distribute, display, perform, sublicense, enforce
- Associated goodwill (required for trademark validity)
- Right to sue for past, present, and future infringement
- All renewals, extensions, continuations, divisionals
- Ancillary materials (source code, design files, prototypes, docs, domains)
Scope: geographic (worldwide or limited), temporal (full remaining term + renewals), retained rights (none or license-back).
Registration-specific requirements:
| IP Type | Requirement |
|---|---|
| Patents | USPTO recordation language; inventorship confirmation |
| Copyrights | Writing required per 17 U.S.C. § 204(a) [VERIFY]; specify works |
| Trademarks | Must include goodwill transfer (without = void); USPTO recording |
| Trade secrets | Confidentiality maintenance; NDA inventory |
3. Consideration
- Exact amount, method, timing
- Structured payments: schedule, acceleration triggers, default remedies
- Non-monetary (equity, services): describe with equal precision
- Tax allocation if bundled; specify who bears recording fees
- Payment security and assignor remedies for non-payment
4. Representations & Warranties
Assignor reps:
- Sole owner; full authority; free of liens/encumbrances
- No third-party infringement; no claims asserted or threatened
- Registered IP valid, enforceable; maintenance fees current
- All existing licenses disclosed; no inconsistent grants
- Trade secret confidentiality maintained; NDAs in place
- Compliance with applicable laws (export controls, privacy)
- Patents: accurate inventorship, duty of candor compliance
- Copyrights: originality; contributor rights obtained
Negotiate: knowledge qualifiers, materiality thresholds, disclosure schedules, survival periods, liability caps.
5. Indemnification
| Direction | Covers |
|---|---|
| Assignor → Assignee | Third-party infringement, breach of reps, pre-closing violations |
| Assignee → Assignor | Post-assignment use, modifications, combinations |
Include notice procedures, defense control, settlement approval, survival period, liability caps.
6. Post-Closing Obligations
Assignor must:
- Execute documents for registry recordings; powers of attorney for foreign filings
- Deliver all IP embodiments (originals, files, records) per agreed timeline
- Provide testimony/declarations for prosecution or enforcement
- Cease all use; remove ownership indicia
- Cooperate until all recordings complete
7. Boilerplate & Execution
- Governing law (note: patent = federal; copyright = federal; trademark = federal + state)
- Jurisdiction/venue; equitable relief carve-out
- Entire agreement, amendment, severability, notice, counterparts
- Signature blocks matching entity types; notarization if required for recording
- Multiple originals if recording in multiple jurisdictions
Critical Checks
- Trademark assignments must include goodwill or assignment is void
- Copyright assignments must be in writing per 17 U.S.C. § 204(a) [VERIFY]
- Confirm chain of title — employment agreements, prior assignments, co-ownership can defeat transfer
- Patent assignments: USPTO-compliant recordation language; duty of candor compliance
- If part of larger asset purchase, ensure IP assignment is independently enforceable
- Use exhibits/schedules for IP listings; don't embed in operative text
- Flag jurisdiction-specific formalities (foreign filings may need legalization/apostille)
- Never assume IP is unencumbered — require disclosure of all licenses and liens