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Personal Legal Sourcebooks
"LAWCHEK® Intellectual Property"
This is not a substitute for legal advice. An attorney must be consulted. "This
work is protected under the copyright laws of the United States. No
reproduction, use, or disclosure of this work shall be |
How is intellectual property bought or sold? |
Rights
in intellectual property are most often transferred through assignment.
Assignment passes the legal title of substantially all commercial
rights in the intellectual property from one entity to another.
For an assignment to be valid, you should include certain things.
First, title the agreement "ASSIGNMENT."
Second, identify the parties, including legal names, states of
incorporation (for corporate entities), and addresses.
Finally, a grant clause should set forth the complete identity of
the intellectual property being assigned and the terms of the
assignment. See the Patent,
Trademark and Copyright Assignment forms attached as part of this
program. Patents,
federally registered trademarks and copyrights can only be assigned in
writing. An acknowledgement
by a notary, although not mandatory, constitutes prima facie evidence of
the execution of the assignment. To
be a complete patent assignment, the invention and the right to exclude
others from making, using and selling the patented invention must be
transferred. Partial
assignment of a patent, however, is allowed.
Trademarks are assignable only with the goodwill of the business
associated with the mark. Any
of the exclusive rights comprised in a copyright may be independently
assigned. 17 U.S.C. § 106.
Assignments
of intellectual property do not have to be recorded to be legally
binding between the signing parties.
Recordation, however, is prima facie evidence of execution of the
assignment and protects the assignee against subsequent purchasers of
the mark from the assignor. The
recordation procedure is relatively simple and inexpensive ($40 for
patents and trademarks and $20 for copyrights in 1996).
Recordation of all intellectual property assignments is
recommended. A patent or
trademark assignment, grant or conveyance should be recorded in the U.S.
Patent and Trademark Office (PTO) within three months of execution or
prior to subsequent transfer. 35
U.S.C. § 261; 15 U.S.C. § 1060. Copyright
assignments should be recorded in the U.S. Copyright Office within one
month of execution or prior to recordation of a subsequent transfer.
17 U.S.C. § 205(d). See
the Patent, Trademark and Copyright Assignment Recordation forms
attached as part of this program. |
This is not a substitute for legal
advice. An
attorney must be consulted.
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