Confirmatory Assignment Agreement Template for Canada

A Confirmatory Assignment Agreement is a crucial legal document that formally confirms and documents the transfer of intellectual property rights that has already taken place in Canada. This agreement serves as official confirmation when the original assignment was verbal, informal, or lacked proper documentation required under Canadian federal IP legislation.

When do you need this document?

You need a Confirmatory Assignment Agreement when there's uncertainty about IP ownership despite a previous transfer having occurred. This commonly happens in employment situations where employees created IP during their tenure but formal assignment documentation is missing. Corporate restructuring often requires these agreements to clarify IP ownership chains, particularly during mergers, acquisitions, or spin-offs. You'll also need this document when preparing for IP registration with the Canadian Intellectual Property Office (CIPO) and the original assignment documentation doesn't meet their requirements. Start-up companies frequently use confirmatory assignments to clean up IP ownership before seeking investment or going public, ensuring all employee-created IP is properly assigned to the company.

Key legal considerations

The agreement must clearly identify all parties involved, including the original assignor and the current assignee, with their full legal names and addresses. You need to provide detailed descriptions of the intellectual property being confirmed, including patent numbers, trademark registrations, or copyright works. The document should include representations that the assignor had the right to make the original assignment and that no conflicting assignments exist. Consider including indemnification clauses to protect against future ownership disputes. The agreement should specify the effective date of the original assignment and confirm that all rights, title, and interest have been transferred. Ensure the document includes proper execution formalities, including witness signatures where required and notarization for certain types of IP transfers.

Legal requirements in Canada

Under the Patent Act (R.S.C., 1985, c. P-4), patent assignments must be in writing and properly executed to be valid for registration purposes. The Trade-marks Act (R.S.C., 1985, c. T-13) requires written assignments for trademark transfers, and these must be recorded with CIPO to be effective against third parties. Copyright assignments under the Copyright Act (R.S.C., 1985, c. C-42) must also be in writing to be valid. Provincial Electronic Commerce Acts allow for electronic signatures in most circumstances, but check specific provincial requirements. PIPEDA compliance may be necessary when personal information is collected or disclosed during the assignment process. The document must meet provincial requirements for contract formation and may require specific formalities depending on the type of IP being assigned. Consider whether the agreement needs to be filed with CIPO or other regulatory bodies to perfect the assignment.