A transfer of intellectual property is the act of assigning ownership of the Intellectual Property Right from the original owner(assignor) to any person as mentioned in the transfer agreement. The intellectual property rights provide the exclusive rights for transmitting and benefiting from their invention made by the owner of an intellectual creation. When transferring intellectual property rights, the first thing to consider is the type of transfer required. ways to transfer intellectual property rights are as follows:
- Intellectual property can be temporarily transferred through a license
- Intellectual property can be permanently transferred through the assignment
Below mentioned are some specific requirement before the transfer of intellectual property right
Proving the ownership
A key compliance factor for transfer of intellectual property is that the assignor must prove that they own the intellectual property. When signing the agreement, the assignor will have to warrant that that have the right to transfer the intellectual property. You can also consult an intellectual attorney who can help you define the requirements.
Determining the type of transfer agreement
Under intellectual property, there are two ways a person can transfer its ownership
- License agreement: a license agreement has a fixed period of time, so when the time expires the right of intellectual property will transfer back to the original owner. When intellectual property is transferred using a license agreement the licensee will generally have the right to sell or commercialize the property. When the license is terminated, the licensee will have to cease all selling and commercialization activities.
- Assignment agreement: A permanent transfer of intellectual property can be used as an assignment. This means that an intellectual property owner will transfer all the right of ownership to assignee which is only transferable back under specific circumstances or as per the clauses mentioned in the contract.
Specify the scope of activities
Other rights associated with the intellectual property may also be licensed such as the right to copy, distribute or produce a similar property. In order to remain in compliance with the license agreement all the activities carried out under intellectual property should be defined and agreed upon.
It is necessary to define the scope of application as the transfer agreement may not cover all the rights. Seeking guidance from intellectual property specialist to ensure your license argent contains all the rights and privileges needed for the transfer of ownership.
Contents of a transfer agreement
A transfer agreement may contain the following information:
- Identification of parties: Identifies the contract a transfer agreement and Identifying details of the Assignor (owner) and the Assignee (receiver).
- Assignment of intellectual property: contains a complete and costs description of the property being transferred. In the case of complex assignment agreements, this clause may also refer to a description of the proposed transferred assets that will be annexed to the agreement.
- Obligations of the parties: It is important to clearly define the obligations of the parties in order to avoid any subsequent conflict with regard to the extent of these obligations. extent of the party’s obligations depends on the type of intellectual property transferred.
- Indemnification: A description of each party’s future obligation, if the intellectual property is found infringed.
- Payment provisions: providing details of payment and other commercial terms
- Duration of the agreement: the assignor may give a maximum duration of the ownership in the contract.
- Miscellaneous provision: contain any other provision such as applicable laws and jurisdiction should also be included.
Intellectual property services in UAE
The transfer of intellectual property, whether it is temporary or permanent, is a difficult process that requires highly specialized knowledge of IP rights and obligations across multiple industries and jurisdictions. HHS lawyers and legal consultants are specialized in dealing with the transfer of intellectual property and we can guide in each and every stages of transfer. You can contact us for further consultation