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?
Lawyers, want to be a Justia Connect Pro too? Learn more ›
- (888) 341-4457
- View Profile
- Answered
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.
1 user found this answer helpful
Justia Ask a Lawyer is a forum for consumers to get answers to basic legal questions. Any information sent through Justia Ask a Lawyer is not secure and is done so on a non-confidential basis only.
The use of this website to ask questions or receive answers does not create an attorney–client relationship between you and Justia, or between you and any attorney who receives your information or responds to your questions, nor is it intended to create such a relationship. Additionally, no responses on this forum constitute legal advice, which must be tailored to the specific circumstances of each case. You should not act upon information provided in Justia Ask a Lawyer without seeking professional counsel from an attorney admitted or authorized to practice in your jurisdiction. Justia assumes no responsibility to any person who relies on information contained on or received through this site and disclaims all liability in respect to such information.
Justia cannot guarantee that the information on this website (including any legal information provided by an attorney through this service) is accurate, complete, or up-to-date. While we intend to make every attempt to keep the information on this site current, the owners of and contributors to this site make no claims, promises or guarantees about the accuracy, completeness or adequacy of the information contained in or linked to from this site.
