IP Assignment Contract for Germany

IP Assignment Contract Template for Germany

A comprehensive legal agreement governed by German law that facilitates the transfer of intellectual property rights from one party (the Assignor) to another (the Assignee). The document ensures compliance with German intellectual property laws, including the German Civil Code (BGB), Patent Act (PatG), and Copyright Act (UrhG). It covers the complete transfer of various types of intellectual property, including patents, trademarks, copyrights, and trade secrets, while addressing specific German legal requirements such as employee inventor rights and moral rights considerations.

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What is a IP Assignment Contract?

The IP Assignment Contract is a crucial legal instrument used in German business transactions to transfer intellectual property rights from one party to another. It is commonly used in various scenarios, including company acquisitions, employee invention transfers, technology transfers, and corporate restructuring. The document must comply with German legal requirements, including the specific provisions of the German Civil Code (BGB), Patent Act (PatG), Copyright Act (UrhG), and Employee Inventions Act (ArbnErfG). This agreement is particularly important as German law has specific requirements regarding the form and content of IP assignments, including special considerations for employee inventions and moral rights.

What sections should be included in a IP Assignment Contract?

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

2. Background: Context of the IP assignment, relationship between parties, and purpose of the transfer

3. Definitions: Definitions of key terms including 'Intellectual Property Rights', 'Effective Date', 'Assignment', and other relevant terms

4. Assignment: Core provision detailing the transfer of IP rights from Assignor to Assignee

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

6. Representations and Warranties: Assignor's warranties regarding ownership, right to assign, non-infringement, and third-party rights

7. Further Assurance: Obligation to execute additional documents and take further steps to perfect the assignment

8. Taxes and Costs: Allocation of responsibility for taxes and costs related to the assignment

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

10. Entire Agreement: Integration clause confirming the agreement represents the entire understanding between parties

What sections are optional to include in a IP Assignment Contract?

1. Employee Inventor Rights: Required when the IP was created by employees, addressing requirements under the German Employee Inventions Act

2. Confidentiality: Required when confidential information is being disclosed as part of the assignment process

3. Competition Restrictions: Optional provisions regarding non-compete obligations, subject to German competition law

4. Registration and Recordal: Required for registered IP rights like patents, trademarks, or designs

5. Third Party Rights: Required when the IP is subject to licenses or other third-party rights that will survive the assignment

6. Data Protection: Required when personal data is involved in the assigned IP

7. Moral Rights: Required for copyright assignments, addressing German moral rights provisions

What schedules should be included in a IP Assignment Contract?

1. Schedule 1 - Intellectual Property Rights: Detailed list and description of all IP being assigned, including registration numbers where applicable

2. Schedule 2 - Existing Licenses: List of existing licenses, permissions, and third-party rights affecting the assigned IP

3. Schedule 3 - Assignment Confirmations: Forms of assignment confirmations required for various IP registries

4. Schedule 4 - Payment Terms: Detailed payment schedule and terms if the consideration is complex or involves multiple payments

5. Appendix A - Invention Disclosure Forms: Required for patent assignments, containing technical details of inventions

6. Appendix B - Chain of Title Documentation: Evidence of Assignor's ownership and right to assign the IP

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

Software Development

Research and Development

Media and Entertainment

Industrial Design

Healthcare

Automotive

Telecommunications

Consumer Electronics

Chemical Industry

Fashion and Design

Academic and Research

Relevant Teams

Legal

Intellectual Property

Research and Development

Technology Transfer

Corporate Development

Innovation

Patents

Business Development

Compliance

Technical Documentation

Relevant Roles

Intellectual Property Counsel

Legal Director

Patent Attorney

General Counsel

Technology Transfer Manager

Research Director

Innovation Manager

Chief Technology Officer

Chief Legal Officer

Contracts Manager

Research Scientist

Development Engineer

IP Portfolio Manager

Corporate Counsel

Business Development Manager

Technology Licensing Officer

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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