Technology Assignment Agreement for Australia

Technology Assignment Agreement Template for Australia

A Technology Assignment Agreement is a legally binding document used in Australia to transfer ownership rights of technological assets from one party (assignor) to another (assignee). The agreement operates under Australian federal and state laws, particularly incorporating provisions from the Patents Act 1990, Copyright Act 1968, and other relevant intellectual property legislation. It comprehensively covers the transfer of all associated intellectual property rights, technical documentation, know-how, and confidential information, while ensuring compliance with Australian legal requirements and providing necessary warranties and protections for both parties.

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What is a Technology Assignment Agreement?

The Technology Assignment Agreement is a crucial document used in Australian business transactions where complete transfer of technological assets is required. This agreement is essential when companies or individuals wish to sell or acquire technology rights, during mergers and acquisitions, or in situations where intellectual property needs to be transferred between related entities. The document addresses Australian legal requirements for technology transfer, including provisions under federal intellectual property laws, and typically covers patents, copyrights, trade secrets, and associated rights. It's particularly important in corporate restructuring, commercialization of research outcomes, or when startups are being acquired. The agreement ensures clear documentation of the transfer, includes warranties about ownership and non-infringement, and provides mechanisms for the practical implementation of the technology transfer.

What sections should be included in a Technology Assignment Agreement?

1. Parties: Identification of the assignor and assignee, including full legal names and addresses

2. Background: Context of the agreement, brief description of the technology, and purpose of the assignment

3. Definitions: Detailed definitions of key terms including 'Technology', 'Intellectual Property Rights', 'Documentation', and other relevant terms

4. Assignment: Core provisions detailing the transfer of rights, title, and interest in the technology

5. Consideration: Details of payment or other consideration for the assignment

6. Delivery and Implementation: Specifications for how and when the technology will be transferred

7. Representations and Warranties: Assignor's warranties regarding ownership, non-infringement, and right to assign

8. Confidentiality: Obligations regarding confidential information and trade secrets

9. Further Assurance: Obligations to execute additional documents and assist with transfer

10. Taxes and Expenses: Responsibility for transfer taxes and related costs

11. General Provisions: Standard clauses including governing law, dispute resolution, and notices

What sections are optional to include in a Technology Assignment Agreement?

1. Ongoing Support: Used when the assignor will provide technical support post-assignment

2. Training: Include when knowledge transfer and training are required

3. Source Code Escrow: For software technology where source code protection is needed

4. Third Party Consents: When third party approvals are required for the assignment

5. Earn-out Provisions: For assignments with performance-based additional payments

6. Employee/Contractor Obligations: When relevant personnel need to sign additional documents

7. Transition Services: For complex technology requiring transitional assistance

8. Grant-Back License: When assignor needs limited rights to use the assigned technology

9. Regulatory Compliance: For technology subject to specific regulatory requirements

What schedules should be included in a Technology Assignment Agreement?

1. Schedule 1 - Technology Description: Detailed technical specifications and description of the assigned technology

2. Schedule 2 - Intellectual Property Rights: List of all IP rights being assigned (patents, trademarks, etc.)

3. Schedule 3 - Documentation: List of all documentation, manuals, and materials included

4. Schedule 4 - Payment Terms: Detailed payment schedule and mechanisms

5. Schedule 5 - Existing Licenses: List of any existing licenses or encumbrances

6. Appendix A - Technical Requirements: Technical specifications and requirements for implementation

7. Appendix B - Third Party Components: List of any third-party technology components and licenses

Authors

Alex Denne

Head of Growth (Open Source Law) @ Genie AI | 3 x UCL-Certified in Contract Law & Drafting | 4+ Years Managing 1M+ Legal Documents | Serial Founder & Legal AI Author

Jurisdiction

Australia

Publisher

Genie AI

Document Type

Transfer Agreement

Sector

Cost

Free to use
Relevant legal definitions
Relevant Industries

Information Technology

Software Development

Biotechnology

Financial Technology

Healthcare Technology

Manufacturing

Research and Development

Artificial Intelligence

Robotics

Telecommunications

Clean Technology

Digital Media

Industrial Technology

Education Technology

Cybersecurity

Relevant Teams

Legal

Intellectual Property

Research and Development

Technology Transfer

Innovation

Corporate Development

Business Development

Information Technology

Engineering

Product Development

Commercial Operations

Risk Management

Compliance

Strategy

Relevant Roles

Chief Technology Officer

Chief Legal Officer

Intellectual Property Lawyer

Technology Transfer Manager

Research and Development Director

Innovation Manager

Legal Counsel

Patent Attorney

Commercial Director

Business Development Manager

Technology Commercialization Officer

Corporate Lawyer

Chief Executive Officer

Chief Innovation Officer

Intellectual Property Manager

Industries
Teams

Employer, Employee, Start Date, Job Title, Department, Location, Probationary Period, Notice Period, Salary, Overtime, Vacation Pay, Statutory Holidays, Benefits, Bonus, Expenses, Working Hours, Rest Breaks,  Leaves of Absence, Confidentiality, Intellectual Property, Non-Solicitation, Non-Competition, Code of Conduct, Termination,  Severance Pay, Governing Law, Entire Agreemen

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