Patent Assignment

A Patent Assignment transfers ownership of a patent from one person or entity to another. This transfer can happen for a variety of reasons, such as the sale of a business, the transfer of assets in a merger or acquisition, or the licensing of a patent.

This document allows you to assign up to four patents or patent applications to another party. It is an important tool for managing patent ownership and protecting intellectual property rights. Certain clauses in this document allow you to assign patents that are registered in Australia or abroad.

If you are a co-owner of a patent (i.e., you are one of several parties that own that patent), note that you will require the consent of your other co-owners before that patent can be assigned. For further information, please follow this link.

It is typically used when an inventor or company wants to assign their patent rights to another party. The Patent Assignment includes details such as the name of the patent owner, the name of the assignee, the patent number, and a description of the patent rights being transferred.

What are the benefits of a Patent Assignment?

For the assignor:

• The assignor can receive financial compensation for transferring ownership of the patent.

• Assigning the patent to someone else means that the assignor will no longer be responsible for maintenance fees or other costs associated with maintaining the patent.

• If the assignor is no longer interested in using or commercialising the invention covered by the patent, a patent assignment ensures that the assignor is not liable for legal issues that arise from the use of the patent.

For the assignee:

• The assignee gains full ownership and control over the patent, including the ability to license, sell, or enforce it.

• Owning a patent gives the assignee the right to exclude others from making, using, or selling the invention covered by the patent for a period of time.

• The assignee may be able to commercialise the invention covered by the patent and generate revenue from it.

What does a Patent Assignment provide?

• Space for the assignment of up to four patents or patent assignments;

• Provisions designed to account for patents registered in a jurisdiction outside of Australia;

• A comprehensive list of warranties provided by the assignor in clause 8, which may be modified if required.

What does the Patent Assignment cover?

• Background.

• Further action.

• Costs.

• GST.

• Delivery of documents.

• Warranties and indemnity.

• Entire agreement.

• Applicable law.

• Amendments.

• Severability.

• Charges.

Further information:

• How Can I Assign My Intellectual Property?

• Using An IP Agreement To Protect Your Business