Assignment Of Inventions Agreement Template for Philippines

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Assignment Of Inventions Agreement

"I need an Assignment of Inventions Agreement for our Philippines-based technology company to acquire all rights to a new software encryption method from an independent developer, including provisions for technical documentation transfer and ongoing consultation support through March 2025."

Document background

The Assignment of Inventions Agreement is a crucial legal instrument used in the Philippines when transferring ownership rights of inventions from inventors to other parties, typically companies or institutions. This document is essential in situations where intellectual property needs to be formally transferred, such as when an employee has developed an invention during employment, when a company acquires invention rights from an independent inventor, or in technology transfer scenarios. The agreement must comply with Philippine intellectual property laws, particularly the Intellectual Property Code (Republic Act No. 8293) and the Technology Transfer Act (Republic Act No. 10055). It includes detailed provisions about the invention's technical specifications, scope of rights being transferred, warranties, and ongoing obligations of both parties. This type of agreement is particularly important in protecting the interests of both the assignor and assignee while ensuring the proper documentation and legal transfer of valuable intellectual property rights.

Suggested Sections

1. Parties: Identifies and provides full details of the Assignor (inventor) and Assignee, including their legal capacity to enter into the agreement

2. Background: Explains the context of the agreement, including the Assignor's creation of the invention(s) and the parties' intention to transfer ownership

3. Definitions: Defines key terms used throughout the agreement, including 'Invention', 'Intellectual Property Rights', 'Technical Information', and other relevant terms

4. Assignment and Transfer: Core section detailing the transfer of rights, title, and interest in the invention(s) from Assignor to Assignee

5. Consideration: Specifies the payment or other consideration provided in exchange for the assignment

6. Representations and Warranties: Assignor's warranties regarding ownership, right to assign, non-infringement, and other key assurances

7. Further Assurances: Assignor's commitment to assist with patent applications, documentation, and other necessary actions

8. Confidentiality: Obligations regarding the confidential treatment of invention-related information

9. Governing Law and Jurisdiction: Specifies Philippine law as governing law and establishes jurisdiction for disputes

10. General Provisions: Standard clauses including severability, entire agreement, amendments, and notices

Optional Sections

1. Future Inventions: Used when the agreement covers future inventions, typically in employment relationships

2. Shop Rights: Included when the inventor retains limited rights to use the invention

3. Revenue Sharing: When the assignment includes provisions for sharing future revenues from the invention

4. Third Party Rights: Required when the invention involves or affects rights of third parties

5. Government Rights: Necessary when the invention was created using government funding or resources

6. Export Control: Required when the invention has potential export control implications

7. Moral Rights: Important for inventions that may have associated moral rights under Philippine law

Suggested Schedules

1. Schedule A - Description of Invention: Detailed technical description of the invention(s) being assigned, including any patent applications or patents

2. Schedule B - List of Intellectual Property Rights: Comprehensive list of all IP rights associated with the invention, including patent numbers and applications

3. Schedule C - Payment Terms: Detailed breakdown of consideration, including any milestone payments or royalties

4. Schedule D - Technical Documentation: List of all technical documents, drawings, and other materials being transferred

5. Appendix 1 - Form of Patent Assignment: Standard form for recording the assignment with the Intellectual Property Office of the Philippines

6. Appendix 2 - Inventor's Declaration: Formal declaration by the inventor regarding the invention's originality and ownership

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

alex.den.21@genieai.co

Relevant legal definitions

Clauses

Relevant Industries

Technology

Pharmaceuticals

Biotechnology

Manufacturing

Research and Development

Electronics

Chemical Industry

Engineering

Software Development

Medical Devices

Automotive

Aerospace

Clean Energy

Telecommunications

Relevant Teams

Legal

Research and Development

Intellectual Property

Innovation

Product Development

Engineering

Technology Transfer

Corporate Development

Executive Leadership

Scientific Affairs

Relevant Roles

Chief Technology Officer

Research and Development Director

Patent Attorney

Intellectual Property Manager

Innovation Manager

Research Scientist

Product Development Manager

Legal Counsel

Technology Transfer Officer

Chief Executive Officer

Chief Legal Officer

Senior Engineer

Laboratory Director

Inventor

Technical Project Manager

Head of Innovation

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