An IP assignment is a transfer by the owner (assignor) of its rights, title and interests in specified intellectual property (IP) to the receiver (assignee). Under English law an assignment of intellectual property rights must be in writing to be effective.
Issues to consider when negotiating an IP assignment include:
- On what date is (or was) the assignment effective?
- Have the intellectual property rights (IPRs) that are the subject of the assignment been adequately identified/described, including any registrations or applications?
- Does the assignee already have a copy of the software or other the material in which the IPRs subsist?
- If the assignee is paying for the IPRs, when and how will payment be made? What happens if payment is late?
- What warranties is the assignor giving in relation to the IPRs?
- What indemnities is the assignor giving?
- If copyright is being assigned, has the assignor (or, if different, the original creator of the copyright) waived their moral rights?
- If the assignor is a company, do the individual(s) who created the IPRs need to be parties to the assignment?