Technology Assignment Agreements are crucial documents used when transferring ownership of technological innovations and related intellectual property rights. These agreements are particularly important in corporate acquisitions, employee inventions, and research commercialization. The document must comply with U.S. federal intellectual property laws and state-specific requirements, particularly regarding invention assignment and trade secret protection. A well-drafted Technology Assignment Agreement should clearly define the technology being transferred, establish the scope of rights being assigned, and include provisions for future developments and improvements.
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1. Parties: Identifies and defines the parties to the agreement, including legal names and addresses
2. Background/Recitals: Explains the context and purpose of the agreement
3. Definitions: Defines key terms used throughout the agreement
4. Technology Description: Detailed description of the technology being assigned
5. Assignment: Core provisions detailing the transfer of rights
6. Consideration: Details of payment or other consideration for the assignment
7. Representations and Warranties: Statements about ownership, rights to assign, and non-infringement
8. Confidentiality: Provisions protecting confidential information
9. General Provisions: Standard boilerplate clauses including governing law, notices, etc.
1. Further Assurances: Obligation to execute additional documents - use when future actions might be needed to perfect the assignment
2. International Rights: Provisions for international protection - use when technology has international applications
3. Future Improvements: Rights related to future modifications - use when ongoing development is expected
4. Technology Support: Provisions for technical assistance - use when assignee needs help implementing the technology
5. Tax Provisions: Specific tax treatment of the transfer - use for high-value transfers or international assignments
1. Technology Description Schedule: Detailed technical specifications and documentation
2. Patent Schedule: List of relevant patents and patent applications
3. Payment Schedule: Details of payment terms and conditions
4. Prior Rights Schedule: List of any pre-existing rights or licenses
5. Technical Documentation: Supporting technical materials and documentation
6. Form of Assignment Confirmations: Templates for country-specific assignments if needed
Relevant legal definitions
Technology
Effective Date
Intellectual Property Rights
Technical Information
Improvements
Confidential Information
Documentation
Know-How
Patent Rights
Trade Secrets
Derivative Works
Licensed Products
Territory
Field of Use
Assignment
Consideration
Background IP
Technical Assistance
Governing Law
Force Majeure
Effective Date
Intellectual Property Rights
Technical Information
Improvements
Confidential Information
Documentation
Know-How
Patent Rights
Trade Secrets
Derivative Works
Licensed Products
Territory
Field of Use
Assignment
Consideration
Background IP
Technical Assistance
Governing Law
Force Majeure
Clauses
Definitions
Assignment
Consideration
Representations and Warranties
Confidentiality
Further Assurances
Technical Assistance
Improvements
Intellectual Property Rights
Technology Transfer
Documentation Delivery
Non-Competition
Non-Disclosure
Indemnification
Governing Law
Dispute Resolution
Force Majeure
Assignment and Succession
Notices
Entire Agreement
Severability
Amendment
Waiver
Tax Matters
Export Control
Data Protection
Third Party Rights
Survival
Costs and Expenses
Counterparts
Assignment
Consideration
Representations and Warranties
Confidentiality
Further Assurances
Technical Assistance
Improvements
Intellectual Property Rights
Technology Transfer
Documentation Delivery
Non-Competition
Non-Disclosure
Indemnification
Governing Law
Dispute Resolution
Force Majeure
Assignment and Succession
Notices
Entire Agreement
Severability
Amendment
Waiver
Tax Matters
Export Control
Data Protection
Third Party Rights
Survival
Costs and Expenses
Counterparts
Relevant Industries
Relevant Teams
Relevant Roles
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