The Assignment Of Invention Agreement is a crucial legal document used in Canadian business and research environments to transfer ownership rights of inventions from creators to acquiring entities. This document becomes necessary when companies need to secure intellectual property rights from their employees, when research institutions acquire innovations from their researchers, or in merger and acquisition scenarios where invention rights need to be transferred. The agreement must comply with Canadian federal patent law and provincial contract law requirements, ensuring proper documentation of the invention transfer, consideration provided, and ongoing obligations of the parties. It typically includes detailed descriptions of the invention, any existing patent applications or grants, and provisions for future cooperation in patent prosecution or enforcement actions.
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1. Parties: Identifies and defines the assignor (inventor) and assignee, including their legal names and addresses
2. Background: Explains the context of the invention and the purpose of the assignment
3. Definitions: Defines key terms used throughout the agreement, including 'Invention', 'Intellectual Property Rights', and 'Technical Information'
4. Assignment and Transfer: Core section detailing the transfer of rights from assignor to assignee, including all related intellectual property rights
5. Consideration: Specifies the payment or other consideration provided in exchange for the assignment
6. Representations and Warranties: Assignor's confirmations regarding ownership, right to assign, and non-infringement of third-party rights
7. Further Assurances: Assignor's commitment to assist with additional documentation or actions needed to perfect the assignment
8. Moral Rights: Waiver of moral rights in relation to the invention where applicable
9. Governing Law: Specifies that Canadian law governs the agreement and identifies the relevant jurisdiction
10. General Provisions: Standard contract clauses including severability, entire agreement, and amendments
1. Confidentiality: Detailed confidentiality provisions when the invention involves sensitive information not covered by existing NDAs
2. Multiple Inventors: Additional provisions when there are multiple inventors assigning their rights
3. International Rights: Specific provisions for international patent filings and foreign rights
4. Improvement Rights: Provisions covering future improvements to the invention
5. Retained Rights: Any specific rights retained by the assignor, if applicable
6. Payment Schedule: Detailed payment terms when consideration involves multiple payments or royalties
7. Non-Competition: Restrictions on assignor's future activities related to the invention
8. Dispute Resolution: Alternative dispute resolution procedures if desired as an alternative to court proceedings
1. Schedule A - Invention Description: Detailed technical description of the invention, including any drawings, specifications, and related documentation
2. Schedule B - Existing Patents/Applications: List of any existing patent applications or granted patents related to the invention
3. Schedule C - Related Technical Information: Documentation of know-how, trade secrets, and other technical information being transferred
4. Schedule D - Payment Terms: Detailed breakdown of consideration, including any royalty calculations or milestone payments
5. Appendix 1 - Inventor Declaration: Formal declaration of inventorship and assignment rights
6. Appendix 2 - Prior Rights: Documentation of any pre-existing rights or licenses that affect the invention
Relevant legal definitions
Invention
Intellectual Property Rights
Patent Rights
Technical Information
Know-How
Trade Secrets
Effective Date
Assignment Date
Assignor
Assignee
Consideration
Improvements
Documentation
Patent Applications
Related Rights
Confidential Information
Moral Rights
Background IP
Future Rights
Technical Specifications
Prior Art
Derivative Works
Industrial Designs
Related Patents
Working Prototypes
Test Results
Research Records
Development Documentation
Proprietary Information
Associated Rights
Intellectual Property Rights
Patent Rights
Technical Information
Know-How
Trade Secrets
Effective Date
Assignment Date
Assignor
Assignee
Consideration
Improvements
Documentation
Patent Applications
Related Rights
Confidential Information
Moral Rights
Background IP
Future Rights
Technical Specifications
Prior Art
Derivative Works
Industrial Designs
Related Patents
Working Prototypes
Test Results
Research Records
Development Documentation
Proprietary Information
Associated Rights
Clauses
Assignment and Transfer
Consideration
Representations and Warranties
Further Assurances
Confidentiality
Non-Competition
Moral Rights
Cooperation
Patent Prosecution
Severability
Governing Law
Dispute Resolution
Entire Agreement
Amendment
Notice
Force Majeure
Successors and Assigns
Indemnification
Survival
Third-Party Rights
Waiver
Regulatory Compliance
Technical Assistance
Future Improvements
Registration Rights
Counterparts
Authority
No Challenge
Consideration
Representations and Warranties
Further Assurances
Confidentiality
Non-Competition
Moral Rights
Cooperation
Patent Prosecution
Severability
Governing Law
Dispute Resolution
Entire Agreement
Amendment
Notice
Force Majeure
Successors and Assigns
Indemnification
Survival
Third-Party Rights
Waiver
Regulatory Compliance
Technical Assistance
Future Improvements
Registration Rights
Counterparts
Authority
No Challenge
Relevant Industries
Technology
Biotechnology
Pharmaceutical
Manufacturing
Research and Development
Healthcare
Engineering
Software Development
Chemical Industry
Electronics
Aerospace
Automotive
Clean Technology
Medical Devices
Telecommunications
Relevant Teams
Legal
Research and Development
Intellectual Property
Innovation
Product Development
Engineering
Scientific Affairs
Technology Transfer
Corporate Development
Patent Administration
Relevant Roles
Patent Attorney
Intellectual Property Lawyer
Research Scientist
Development Engineer
Chief Technology Officer
Innovation Manager
R&D Director
Patent Agent
Legal Counsel
Technology Transfer Officer
Product Development Manager
Research Director
Chief Scientific Officer
Intellectual Property Manager
Innovation Director
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