Denver, CO asked in Business Law for Arizona

Q: Is it possible to create an agreement that would give all IP rights produced by one company to another?

My company is considering making an IP Holding company and is interested in moving all the Intellectual Property rights over to the IP Holding company. We know that we can do individual Intellectual Property Assignments of our IPs, but were wondering if it would be possible to create a general agreement that would assign all the IP, past and future, over to the Holding company. Is this possible or do we need to assign each IP individually?

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1 Lawyer Answer
Robyn T. Williams
PREMIUM

A: The answer to your question depends on the type of IP rights you are seeking to transfer. If you are talking about patents, you can do an assignment agreement for a group of patents/applications that will have to be recorded in the patent office for each patent/application. This agreement will cover past patents/applications. It is best to execute a new assignment for new patents/applications. You can have a form agreement drafted that you can use going forward.

If the IP holding company intends to license its patents/applications, much care should be taken regarding which patents are transferred to the holding company and to whom it grants licenses.

If you are seeking to transfer trademarks, you can draft and assignment agreement assigning all existing trademarks (enumerated) to your IP holding company. It is best to just file new trademark applications in the name of the IP holding company for future marks.

If you are seeking to transfer copyrights, you can draft an assignment agreement assigning all copyrights and works to the IP holding company. Future copyright assignment may depend on the existence of other agreements such as licenses and/or work for hire agreements.

This process can be very tedious and there are many factors to be considered in transferring a group of IP assets. I strongly recommend engaging an IP attorney to draft and file the agreements and create template agreements that you can use going forward.

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