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Intellectual Property Assignment Agreement (Contribution to Joint Venture, Short Form)

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Intellectual Property Assignment Agreement

An intellectual property assignment agreement is an agreement to transfer intellectual property from one person or company to another.

What is an Intellectual Property Assignment Agreement?

An intellectual property assignment agreement is an agreement to transfer intellectual property from one person or company to another. The agreement may also be referred to as an intellectual property transfer agreement, an IP assignment agreement or an IP transfer agreement.

When should you use an Intellectual Property Assignment Agreement?

An intellectual property assignment agreement should be used whenever transferring the rights in intellectual property ( IP ). There are a number of situations where you may need to do this. The most common for SMEs is where an individual has done work for a company as a consultant without using a consultancy agreement with the result that the consultant and not the company, owns the IP in the work. It is also necessary to transfer IP where founders create IP before incorporating or being employed by a company and, as a result, title to the IP vests in the founder.  

Why is an Intellectual Property Assignment Agreement important and why should you use it?

Investors in early stage companies will often require the company and key employees to give warranties confirming that the company owns all material IP used by the company. Any IP not owned by the company will need to be transferred to the company before the investment is completed. Failing to transfer the IP can materially impact the valuation of the company or, in extreme cases, lead investors to pull out of the transaction.

It is necessary to use a written agreement for an assignment of certain types of IP (such as copyright) to be effective. Further, it is important to ensure that the agreement is an enforceable contract. For the contract to be enforceable there must be some form of consideration paid in exchange for the IP. The amount of consideration payable will depend on the situation in which the IP is being transferred. If a consultant or founder is transferring IP that should have been owned by the company, the consideration should be a nominal amount, e.g. £1, which is deemed to have been received by the assignor (note that some form of consideration is required for the agreement to be an enforceable contract). The IP can, however, be transferred for valuable consideration or as part of an asset sale.

An IP assignment will also include warranties to confirm that the assignor is the owner of the intellectual property being transferred and that the assignor has the right to transfer the intellectual property. Transferring intellectual property without these assurances means that your company will have limited or no recourse should it transpire that the assignor did not own or have the right to transfer the intellectual property.

What are the common pitfalls of an Intellectual Property Assignment Agreement?

Where possible, it is important to clearly describe the IP being transferred. IP by its nature is not physical so failing to accurately describe the IP can result in disputes about what has been transferred. 

Further, there are several different types of IP (copyright, patents, trade marks and designs). Certain IP rights can also be registered. Depending on what is being transferred it may be necessary to take additional steps to perfect the transfer (for example notifying the appropriate register of the transfer). The agreement should include a requirement that the assignor takes the necessary steps to perfect the transfer and specify which party is required to pay any associated costs (such as registration fees).

In addition where copyright is being transferred, the assignor should also ensure that the assignor waives their moral rights (such as the right to attribution) in respect of the copyrighted work.

Disclaimer: Please note: Pocketlaw is not a substitute for an attorney or law firm. So, should you have any legal questions on the content of this page, please get in touch with a qualified legal professional.

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Practical Law for  intellectual property and technology

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When you are supported by Practical Law, you gain the experience of a team of U.S.-based, licensed attorney-editors who average 12-14 years of experience in every aspect of intellectual property and technology law, mostly in Am Law 200 firms. They dedicate around one-third of their time to making sure Practical Law content is always accurate and up to date.

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Basic Information about Faculties

The Faculty of Law prepares specialists in specialty 021100 �"JURISPRUDENCE," Level of proficiency � "JURIST"

The way to the world of intellect and erudition is opened with the juridical education that is given in the Moscow Financial-Juridical Academy (MFJA) by the Faculty of Law. Not by chance is the motto of the faculty "Knowledge and Intellect." The faculty of law of the MFJA prepares of specialists in the field of law and gives state diplomas. The graduates receive qualification of "Jurist" in the "Jurisprudence" specialty � 021100. The faculty is located in a separate educational building with developed area and a comfortable student yard near the "Warshavskaya" metro station. All educational processes are organized in a single building with lecture halls and laboratories equipped for practical and seminar lessons. Now more than 2,000 students are studying at the faculty.

The faculty prepares jurists � broad specialists � as is evidenced by an educational plan which corresponds fully to the government standard. Our students are studying the disciplines provided for by the Government Standard of the higher professional education. After the 3 rd year students study a specialty they have selected: civil-legal, state-legal, criminal-legal, legal regulation of property-land relations.

Lectures in the faculty are given in well-equipped auditoria. Lessons in such disciplines as criminalistics and forensic medicine are carried out in a specially equipped criminalistics laboratory.

Educational programs provide obligatory familiarization of students with computer techniques, therefore many lessons are carried out in laboratories of the Center of Information Technology .

The system of combining theoretical and practical training has become traditional in the faculty. Students of the faculty of law attend regularly inter-municipal courts of Moscow , are present at criminal and civil cases with follow-up analysis of trials in seminars.

Practical and pre-graduation training is a component part of the educational process. Practical training is the basis for the study of general-scientific principal legal disciplines.

During pre-graduation training, students firm up and extend the theoretical knowledge received during study of principal disciplines, obtain practical skills using the knowledge imparted. Besides carrying out tasks provided by the program, they collect material for their degree work. For practical work, students are directed to courts, the Ministry of Justice, organs of prosecutor's office and the Ministry of Internal Affairs, Military Prosecutor's Office, legal departments of enterprises and firms, committees of the Council of Federation and State Duma of Russia, and structural divisions of the Moscow Government.

Testimonials of experts tutoring students in work conditions show that during an education period students receive good modern knowledge and prove themselves skillful during performance of specific practical work. The main direction of student-jurists to practical training is a special form of assignment and employment assistance for future specialists. The experience of the faculty of law has shown that our graduates after graduation from the Academy find jobs as a rule in locations doing practical work.

Terms of training

Terms of training in the faculty of law are:

schedule of intramural education � 5 years; intramural-correspondence schedule � 6 years;   correspondence schedule � 6 years; second higher education � 3 years; graduates of colleges and technical schools are taught according to a short program. Students of intramural division receive a deferment for the period of their education. After completion of education the graduates receive governmental diplomas in higher professional education.

Cost of Education

Specializations

The faculty of law of the Moscow Financial-Juridical Academy , founded 10 years ago, has prepared specialists in the field of law and given governmental diplomas. The graduates acquire the JURIST qualification in the "Jurisprudence" specialization.

Since the 3 rd year students have been studying disciplines in accordance with a chosen specialty.

"Civil-legal" specialization

Disciplines of the specialization: Housing law, Insurance law, Corporate law, Legal problems of privatization, Bankruptcy, Securities, Legal regulation of bank activities, Customs law, Legal regulation of foreign-economic activity, Law of inheritance, Executive law, Legal regulation of audit activity, Legal regulation of intellectual property.

Students having become familiar with the basic educational program in specialty 21100 "Jurisprudence" with civil-law specialization have a wide opportunity to engage in labor activity: in courts of arbitrage; as city executives; at notary organizations; at specialized organizations (realtor, legal, shipping, etc.); to take part in civil commodity circulation as middlemen in preparation and realization of contracts with different kinds of interests including exclusive rights of intellectual property; as jurists and heads of legal services of juridical persons of different organizational forms; as officers at organizations of governmental management and in organs of local control including housing and communal organizations, housing inspections, etc.

"State-legal" specialization

Disciplines of the specialization: Housing law, Insurance law, Budgetary law, Constitutional fundamentals of taxes and fees in the Russian Federation, Suffrage and electoral process in the Russian Federation, Problems in modern Russian nationhood, Public service in the Russian Federation, Customs law, Executive law, Human rights and civics, Fundamentals of constitutional and statute law of the subjects of the Russian Federation, Administrative process in the Russian Federation, Parliamentary law.      Jurists of this specialization work in structural divisions of Moscow Government, organs of executive power of the Russian Federation and the subjects of the Russian Federation , and organs of social protection.

"Criminal-legal" specialization

Disciplines of the specialization: Forensic medicine, Forensic psychiatry, Governmental prosecution, Psychology of operation-research activity ( ��� -ORA), Crimes against public safety, Branch records management, Performing a preliminary inquest, Crimes against state power, Crimes in the sphere of economy, Crimes against personality, Crimes against justice and administrative procedures, Operation-research activity ( ��� -ORA), Procedure in jury trial. Jurists of this specialization work for law-enforcement and judicial organs: the Ministry of Internal Affairs, Office of Prosecutor, Federal Service of Security (FSS), courts of general jurisdiction, arbitration tribunals � inquest, investigation.

"Legal regulation of property-land relationship" specialization

Disciplines of the specialization: Scientific fundamentals of property-land relationship, Regulation of legal relationship among proprietors of property-land complex, Legal regulation of privatization of property-land complex, Informatization of legal regulation of property-land relationship, Economic regulation of property-land relationship, Intraeconomic land-utilization of property-land complex, Cadastre of property-land complex, Territorial land-utilization of property-land complex, Ecological regulation of property-land relationship, Control of property-land complex, Urban land-utilization of property-land complex, Licensing in property-land complex system, State control of property-land complex regulation.

Jurist of this specialization work in such structural divisions of Moscow Government as: Committee of management of Moscow property, Department of support and development of small business, Fund of Moscow property, Moscow committee of land-usage (Moscomzem), Moscow land chamber, Technical inventory bureau, Moscow license chamber, Moscow registration chamber, Department of analysis and control of economic policy realization, Department of property-land relationship coordination, State urban inspection (Gosgorinspectsiya) and others.

Disciplines Studied in the Faculty of Law

in specialty 021100 "Jurisprudence"

I. General humanities and social-economic disciplines: Foreign languages, Physical culture, Domestic history, Logic, Philosophy, Economics, Political science, Sociology, Culturology, Latin, Oratory, Russian language and standard of speech, Psychology and pedagogy, Ethics and aesthetics, Philosophy of law, Conflictology.

II. General mathematical and natural-scientific disciplines: Conceptions of modern natural science, Informatics and mathematics, Legal informational systems, Modern facilities of computers and telecommunications, Legal statistics.

III. General-professional disciplines: Theory of state and law, History of legal and political doctrines, History of state and law of foreign countries, History of domestic state and law of Russia, Constitutional (public) law of the Russian Federation, Constitutional (public) law of foreign countries, Civil law, Civil procedure, Administrative law, Employment law, Criminal law, Criminal procedure, Criminalistics, International law, Ecological law, Land law, Roman law, International private law, Financial law, Municipal law of RF, Family law, Criminology, Law-enforcement authorities, Juridical psychology, Criminal-executive law, Prosecutor's supervision, Russian entrepreneurial law, Commercial law, Arbitrage procedure, Fiscal law of RF.

IV. Special disciplines

V. Disciplines of specializations

State-legal : Documentation, Procedural documentation, Advocacy, Notariate, Legal regulation of state property control, Suffrage and electoral procedure, Customs law, Administrative procedure, Housing law, Parliamentary law, Fundamentals of constitutional and constituent law of subjects of the Russian Federation, Migratory law, Problems of modern Russian nationhood, Executive law.

Civil-legal : Documentation, Procedural documentation, Advocacy, Notariate, Banking law, Legal regulation of security market, Copyright and patent law, Corporate law, Legislation about consumer rights, Insurance law, Customs law, Housing law, Succession law, Problems of civil law and civil procedure, Executive law.

Criminal-legal : Documentation, Procedural documentation, Advocacy, Legal fundamentals of operation-research activity, Legal regulation of fight against organized crime, Legal regulation of private security detective activity, Evidence in legal procedure, Preventive measures against crimes and incidents, International cooperation in fight against crime, Legal accounting, Forensic medicine, Forensic psychiatry, Procedure in jury trials, Problems of criminal law and criminal procedure, Executive law.

Legal regulation of property-land relationship : Documentation, Procedural documentation, Advocacy, Notariate, Scientific fundamentals of property-land relationship regulation, Legal support of economic regulation of property-land relationship, Legal regulation of property-land complex privatization, Cadastre of property-land complex, Ecological-legal regulation of property-land relationship, Legal methods in controlling property-land complex, Urban land management of property-land complex, Public control of property-land relationship regulation, Problems of civil-legal regulation of land proprietary and problems of land law, Executive law.

Financial-legal specialization : Documentation, Procedural documentation, Advocacy, Notariate, Banking law, Legal regulation of security market, Currency law, Corporate law, Legislation about consumers' rights in financial sphere, Investment law, Legislation about bankruptcy, Insurance law, Succession law, Problems of civil-legal regulation of physical and juridical persons' activities in the sphere of finances, Executive law.

Ecological-legal specialization : Documentation, Procedural documentation, Advocacy, Legal aspects of nature management economics, Legal regulation of environmental protection, Water and forest legislation, Legislation about protection of subsoil, atmosphere, wild life, Legal measures of protection of people's health against environmental hazard, Ecological law-enforcement system, responsibilities of state authorities of providing for ecological safety of the country and population protection, International cooperation in the field of environmental protection, Ecological assessment, Ecological auditing, Problems of legislation in the sphere of ecological safety, Executive law.

Departments

The department of civil-legal disciplines

The department graduates specialists in the civil-legal specialization, the content of which is disclosed with the specialization disciplines: Housing law, Insurance law, Corporate law, Legal problems of privatization, Bankruptcy, Securities, Legal regulation of banking activity, Customs law, Legal regulation of foreign-economic activity, Succession law, Execution law, Legal regulation of auditing activity, Legal regulation of intellectual property.

The faculty staff trains students in accordance with the main educational program of specialist training in the "Jurisprudence" specialty and with civil-legal specialization as well as bachelor's and magister's degrees in "Jurisprudence."

The department conducts research activity in the development of fundamental and applied sciences, scientific-methodological investigations with the aim of increasing effectiveness and improving quality of education and teaching. The department staff actively involves students in these kinds of activities through a learned-student society of the faculty, conducting scientific conferences, and developing term projects on problems of perfecting civil legislation of the Russian Federation .

The faculty staff consists of qualified teachers on the staff as well as of teachers the best Moscow higher institutions hired by the department to give lectures and to carry out group lessons with students of the faculty of law of the Moscow Financial-Juridical Academy .

The department is headed by a candidate of jurisprudence, assistant professor Vladimir Nikolaevitch Tulaev.

The department of criminal-legal disciplines

The department prepares students in the criminal-legal field and has the following disciplines: Forensic medicine; Forensic psychiatry; State prosecution; Psychology of operation-research activity ( ��� � ORA); Crimes against public safety; Industry record management; Holding preliminary inquests; Crime against the state power; Crime in the sphere of economy; Crime against the person; Crime against justice and administrative procedures; Operation-research activities; Jury procedures.

The department of criminal-legal disciplines was founded in 2000. Teachers have rich experience in the judicial system and other law-enforcement agencies. The department is staffed with experienced experts, high-qualified methodologists, and well-known scientists.

Teachers of the department give courses of criminal law and procedure, criminalistics and criminology, criminal-executive law, law-enforcement authorities, prosecutor's supervision, juridical psychology and psychology of operation-research activity and operation-research activity.

From the foundation of the department they have continuously improved methods of educational work, carried out large educational-methodological work in courses assigned to the department.

A laboratory of criminalistics technique and a photo-laboratory have been created. Work on computerization of educational process continues on the basis of the Center of Informational Technologies .

The department is headed by Professor Makhtay Shopievitch Makhtaev.

The department of state-legal disciplines

These disciplines of state-legal specialization are the responsibility of the department: Budget law; Constitutional fundamentals of taxes and fees in the Russian Federation; Election law and electoral procedures in the Russian Federation; Problems of modern Russian nationhood; Government service in the Russian Federation; Customs law; Executive law; Human rights and citizen rights; Fundamentals of constitutional and constituent law of the subjects of the Russian Federation; Administrative procedures in the Russian Federation; Parliamentary law; Conflict of laws; Problems of state and legal theory.

The department is headed by Vitaly Gavrilovitch Pakhomov, doctor of history, Professor, specializing in problems of history of political and juridical sciences. He is the author of 50 publications (with a total volume of 150 printer's sheets) on the history of state and law, the history of political and juridical sciences, culturology and geopolitics. In the last five years he has published two monographs and eight tutorials.

Doctor of law Alexander Vasilievitch Karpov, the head of the research laboratory, works in four research institutes of the Ministry of Defense of Russia .

The department of property-land relationship

The department of property-land relationship is staffed with high-qualified specialists and has a significant experience and creative potential. The main motto of the department is practical orientation of education, i.e., maximum correspondence of theoretical training of students to knowledge and skills of specialists working in the field. The following special disciplines are the responsibility of the department: Scientific fundamentals of property-land relationship; Regulation of legal relationships among owners of property-land complex; Legal regulation of privatization of property-land complex; Informatization of legal regulation of property-land relationship; Economic regulation of property-land relationship; Intraeconomic land utilization of property-land complex; Cadastre of property-land complex; Territorial land utilization of property-land complex; Ecological regulation of property-land relationship; Management of property-land complex; Urban land utilization of property-land complex; Licensing in system of property-land complex; State control of property-land complex regulation.

The complexity and severity of social-economic problems faced by Russia during the period of transition make it necessary to revise the principles and priorities in the field of management and use of property and land, strengthen state control and regulate property-land relationship in the economic sphere of the country.

Liberalization of the economy and institutional changes have caused fundamental changes in state policy in the field of regulation of property-land relationship, and in the essence and content of professional activities of specialists in the complex of economic policy and property-land relationship. Strengthening of the role of the state in regulation of property-land relationship forms the modern requirements for a new specialization in property-land complex.

A current need for specialists in the regulation of property-land relationship on the basis of the MFJA faculty of law is determined on the assumption of volume of use of specialists by the complex on economic policy and property-land relationship of Moscow . The complex includes such structural divisions as: Committee of management of Moscow property; Department of support and development of small business; Fund of Moscow property; Moscow committee of land-usage (Moscomzem); Moscow land chamber; Technical inventory bureau; Moscow license chamber; Moscow registration chamber; Department of analysis and control of economic policy realization; Department of property-land relationship coordination; State urban inspection (Gosgorinspectsiya); Realty organizations; Prefectures of administrative districts, and others.

The Dean of the Faculty of Law

Oksana Alexandrovna Minaeva, the dean of the faculty of law.

We call our faculty a way to the world of intellect and erudition. Not without reason the faculty motto � "Knowledge and Intellect" � has vindicated itself over the past ten years. In our faculty now about two thousand students are studying who study programs fully corresponding to state ones. Just the enumeration of them would take up the whole page. By the way, you can become familiar with the list of subjects studied in our faculty at the admission office of the Academy or during "days of open doors."

Till the third year all students study the same program. But by the third year everybody has to determine what specialization he chooses. I think two years are a sufficient period for thought.

What specializations do we offer? There are only four: civil-legal, state-legal, criminal-legal and legal regulation of property-land relationship, that we opened at the Moscow Government's request. And there are practically no juridical institutions of higher education where this specialization can be studied. So think about the future! The time is not far off when we will need jurists who will arbitrate land disputes, draw up land agreements and determine property.

Of course, I could still talk long and in detail about my favorite faculty and about our scientific student society, about student scientific conferences, about our well-equipped informational classrooms, about our criminalistics laboratory, and, certainly, about the respectable practical work and jolly rest of our students. I could tell much that is interesting about a student legal advice office recently created, which we call a legal clinic�

But, as they say, it is better to see something one time than to hear it one hundred times. Come to us to Warshavkaya. And even if you missed the "day of open doors," come all the same. We'll meet you with pleasure and show you the faculty.

You can contact the dean of the faculty of law by phone (095) 119-15-22.

Contact information

Office of the head of studies, dean's office � Telephone, fax:   (095) 119-15 22.

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Intellectual Property & Technology Law Brochure

Patent Assignment Agreement (Short Form) | Practical Law

Patent Assignment Agreement (Short Form)

Practical law standard document 6-507-2833  (approx. 14 pages).

• Practical Law

Intellectual Property License Agreement Transferability

Practical law legal update 6-567-5046  (approx. 4 pages).

• Parties negotiating license agreements must consider clauses that are necessary to prohibit or permit the transfer of the agreement under various future circumstances.
• Buyers and sellers of companies must consider the effect a proposed transaction may have on existing agreements.

Licensor and Licensee Perspectives on Assignability

• It chose the licensee for its specific characteristics.
• The terms of the license were based on the particular licensee's operations.
• It does not want the licensed IP to end up in the hands of its competitor or the licensee's bankruptcy trustee.
• If the agreement includes obligations to provide services that the original licensor is uniquely qualified to provide.
• Where the transferee is the licensee's competitor. In that case, the licensee may have concerns about perceived relationship issues, loss of competitive advantages or the transferee's commitment to sustaining the IP.

Contract Transferability Default Rules

• A statute or public policy provides otherwise.
• There are material adverse consequences to the non-assigning party.

IP License Transferability Default Rules

• Trade Marks
• United States