Assignment And License Of Patent for Germany

Assignment And License Of Patent Template for Germany

This document serves as a comprehensive legal instrument under German law for transferring patent ownership while simultaneously establishing a licensing arrangement. It combines the formal requirements of the German Patent Act (Patentgesetz) with the contractual principles of the German Civil Code (BGB). The agreement details the complete transfer of patent rights from the assignor to the assignee, while incorporating specific licensing terms that allow continued use of the patented technology under defined conditions. The document includes provisions for registration with the German Patent Office, compliance with employee invention rights where applicable, and addresses requirements for technology transfer and ongoing technical support.

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What is a Assignment And License Of Patent?

The Assignment And License Of Patent agreement is a crucial document used in German intellectual property transactions where a party wishes to transfer patent ownership while maintaining certain usage rights through a license-back arrangement. This document is particularly relevant when companies are restructuring their IP portfolios, engaging in technology transfers, or completing M&A transactions under German jurisdiction. It must comply with the German Patent Act (Patentgesetz), the German Civil Code (BGB), and when applicable, the Employee Inventions Act (Arbeitnehmererfindungsgesetz). The agreement typically includes detailed specifications of the patent(s), transfer terms, license scope, territorial restrictions, and compensation structures. It's essential for transactions involving German patents or European patents validated in Germany, and requires careful consideration of both technical and legal aspects to ensure enforceability.

What sections should be included in a Assignment And License Of Patent?

1. Parties: Identification of the Assignor/Licensor and Assignee/Licensee with full legal names and addresses

2. Background: Context of the agreement, identification of the patent(s), and purpose of the assignment and license

3. Definitions: Definitions of key terms used throughout the agreement, including 'Patent Rights', 'Technical Information', 'Territory', and 'Field of Use'

4. Assignment of Patent Rights: Clear statement of assignment and transfer of ownership of the patent rights from Assignor to Assignee

5. License Grant: Specific terms of the license granted back to the Assignor, including scope, territory, and field of use

6. Consideration: Details of payment terms, including assignment price and any ongoing royalties

7. Representations and Warranties: Assignor's warranties regarding ownership, validity, and freedom to assign the patent

8. Registration and Recordal: Obligations regarding registration of the assignment with the German Patent Office

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

10. Governing Law and Jurisdiction: Specification of German law as governing law and jurisdiction for disputes

What sections are optional to include in a Assignment And License Of Patent?

1. Grant-Back Rights: Used when the Assignor retains rights to improvements or related technologies

2. Employee Invention Rights: Required when the patent originated from employee inventions under German Employee Inventions Act

3. Quality Control: Included when the license includes trademark rights or quality standards

4. Sublicensing Rights: Required if the license includes rights to sublicense

5. Competition Law Compliance: Needed for licenses with potential competition law implications

6. Patent Maintenance: Used when specifying responsibilities for maintaining patent rights

7. Improvements: Required when dealing with future improvements to the patented technology

8. Export Control: Necessary for technologies subject to export control regulations

What schedules should be included in a Assignment And License Of Patent?

1. Schedule 1 - Patent Specifications: Detailed description of the patent(s) being assigned, including patent numbers, titles, and jurisdictions

2. Schedule 2 - Technical Information: Details of know-how and technical information being transferred with the patent

3. Schedule 3 - Payment Terms: Detailed breakdown of payment structure, including milestone payments and royalty calculations

4. Schedule 4 - Existing Licenses: List of any existing licenses or encumbrances on the patent

5. Appendix A - Form of Patent Assignment: Standard form for patent office recordal of the assignment

6. Appendix B - Technology Transfer Plan: Timeline and process for transferring technical knowledge and documentation

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

Germany

Publisher

Genie AI

Cost

Free to use
Relevant legal definitions
Relevant Industries

Technology

Pharmaceuticals

Biotechnology

Manufacturing

Automotive

Chemical Industry

Electronics

Software Development

Telecommunications

Medical Devices

Aerospace

Industrial Engineering

Clean Technology

Consumer Electronics

Relevant Teams

Legal

Intellectual Property

Research and Development

Corporate Development

Finance

Technology Transfer

Innovation

Patent Administration

Business Development

Technical Documentation

Regulatory Affairs

Relevant Roles

Intellectual Property Manager

Patent Attorney

Legal Counsel

Chief Technology Officer

Research and Development Director

Innovation Manager

Licensing Manager

Technology Transfer Officer

Chief Legal Officer

Patent Engineer

Intellectual Property Strategist

Corporate Development Manager

Chief Executive Officer

Chief Financial Officer

Technology Commercialization 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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