Apart from IP licences, such as software licences, the most common types of IP Agreements your business will encounter are IP assignments.
IP Assignments transfer the ownership of IP from one person to another. Typically these are used:
- in business sale agreements to transfer the IP of the business being purchased from the seller to the buyer;
- business restructuring – to transfer the IP of one company in a business to another; and
- to transfer IP created by a founder of a business or its employees to the business.
To be effective, IP Assignments must be in writing and signed by the IP owner and the transferee. An oral (unwritten) assignment of IP will not be effective to pass the ownership of the IP.
If the IP being assigned is registered IP (trade marks, designs, patents, plant breeder’s rights) then the change of ownership effected by the IP Assignment will also need to be recorded on the appropriate IP register.
Failure to record the transfer of ownership can prevent a claim for financial compensation in an infringement action and, in the case of trade marks, could lead to the removal of your trade mark from the trade marks register.
As with the sale of any asset, certain promises need to be sought from the seller. In relation to IP these are quite unique and specific for each different IP right; thus there can be no “one-size-fits-all” IP assignment.
The most common IP assignments that your business may need assistance with are trade mark assignments and copyright assignments. Trade mark assignments are generally limited to the transfer of registered and unregistered trade marks, whilst copyright assignments cover a wide range of applications from transfer of rights in photographs, artworks, software and websites – including bespoke software, artwork and webpage layouts.
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"Marshall IP Group has been assisting SAI Global with its trade mark, IT and other intellectual property agreements for over 4 years now. They have demonstrated a good understanding of our businesses and services and this commercial understanding is applied to the legal advice and assistance they have provided. They have shown expertise beyond their size and (regional) location and an ability to stand their ground against their City counterparts: you get the quality of a city law firm partner but you are not charged the big city law firm rates. They are pro-active, commercially sensible and this has given me, as a busy in-house Corporate Counsel and Company Secretary, peace of mind in relation to SAI Global’s national and international IP Portfolio and other legal needs. "Read More >
"Marshall IP Group has been a supporter of the iAccelerate from its very beginnings. iAccelerate is a state of the art incubator for start-ups and early stage technology businesses located at the University of Wollongong’s Innovation Campus. Marshall IP Group’s CEO, Tim Marshall, has provided thorough, thoughtful and insightful contributions to iAccelerate providing informative seminars, workshops and advice for many of iAccelerate’s companies. Marshall IP Group demonstrates a commitment to the innovation agenda for Australia and the Illawarra region. "Read More >
"Marshall Legal helped us out with a particularly nasty allegation of IP rights infringement. They quickly got to the nub of the problem and navigated the complex regime of trade marks and copyright law to diffuse the situation. Not only were the allegations withdrawn but we got our costs back. I would recommend Marshall Legal; not only did they get us a great result, they put our minds at ease throughout the proceeding."Read More >
"I am delighted to recommend Tim Marshall and the team at Marshall IP Group for all aspects of intellectual property and technology law. Marshall IP Group fills an important space in the legal market in regional Australia and Australian capital cities. The businesses that I am heavily involved in, RMB Lawyers and Unison Outsourcing, have both enjoyed excellent advice and customer service from Marshall IP Group in relation to trade marking our businesses and protecting our brand."Read More >
"Nobody likes to have to fight a court case and especially one against an internationally based company, but that was what we found ourselves facing in 2012. We were so lucky we found Tim Marshall of Marshall Legal. We highly recommend his services to anyone who wants a good business lawyer that gives good solid advice on all matters, including Intellectual property matters, trademarks and Patent attorneys who have proved invaluable to our business"Read More >
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