5.11 - Assignment Agreement

The Assignment Agreement is for use to legally transfer ownership of intellectual property (IP) from one party to another, for example when a party is the owner of IP developed by the other party under a joint research collaboration.

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When should it be used?

  • When one party wishes to assign an IP right (IPR) to another party to formalise the sale and purchase of the IP
  • When a university has concluded that the best route to commercialise its IPR is to sell this to an industry partner rather than the more usual route of granting a licence

While it would normally be the university (Assignor) that is providing the IP to an industry partner (Assignee), the agreement has been structured so that either party could be the Assignee or Assignor. The agreement is also suitable when a party is a Commonwealth Entity.

When should it not be used?

  • When a licence is a more appropriate mechanism to grant rights to an industry partner (refer to the Licensing IP guide to decide which licence template to use)
  • When it is important that the university retains certain rights to the IP (e.g., for academic research and teaching purposes), unless a separate licence agreement is used to grant back these rights
  • The template is not intended to cover the assignment of student IP

Key considerations when completing the template

The following table is provided as a guide to help the parties appreciate the key considerations that each party will have when negotiating an Assignment Agreement using the template.

The template is provided in the Standard track to reflect the importance of a decision to assign IPR. Discussing and understanding each party’s needs and concerns up front will help you reach an agreement more quickly and decide if an assignment or a licence is the best mechanism to use. Simple assignments can be completed very quickly. However, if this involves agreeing a fair price for the IPR, an assignment agreement may take up to six months to negotiate and sign, often longer, depending on the complexity of the proposed transaction. It is, therefore, important the parties start these discussions as early as possible.

For organisations, particularly SMEs, that have not previously been asked to enter this type of agreement, this table will help you understand what the key provisions of an Assignment are and what you need to discuss and agree in order to finalise the agreement from the template.

Additional plain English guidance on the meaning of key clauses is provided in a separate annotated version of the template.

This table sets out the key points each party needs to consider when using the Assignment Agreement. Understanding your own key considerations, as well as those of the other party, will help you to negotiate a fair and reasonable agreement that works for both parties.

Key points Assignment Agreement Provision University (Assignor) Collaborator (Assignee)
Details of the IPR being assigned
  • A clear description of the IPR being assigned
  • Schedule 1 is provided to list the specific IPR being assigned
  • Additional considerations (including taxation) and amendments may be required if the agreement is to be used for assigning foreign registered and/or created IPR
  • The agreement includes an option to include goodwill or not if trademarks are being assigned
  • It is very important that the assigned IPR is clearly described, and where there are registered rights that the correct filing details are given
  • Seek advice from your patent attorney if the assignment relates to foreign registered and/or created IPR
  • Seek advice from a stamp duty expert if an assignment of goodwill is required
  • It is very important that the assigned IPR is clearly described, and where there are registered rights that the correct filing details are given
  • Seek advice from your patent attorney if the assignment relates to foreign registered and/or created IPR
  • Seek advice from a stamp duty expert if an assignment of goodwill is required
Fees
  • The agreed fee payable for the IPR
  • If this is a confirmatory assignment a Fee of $1 should be inserted
  • If the Fee reflects the value of the IPR, this needs to be discussed and agreed up front
  • Decide whether a Fee is appropriate and discuss this with the Collaborator as early as possible. Be prepared to justify the Fee, for example, based on the costs incurred by the University in developing and protecting the IPR, or its future value to the Collaborator
  • If the Fee is not taken in full as a one-off payment, there may be financial risks if the company is unable to meet future payment obligations
  • Be clear on what your financial liabilities will be for accessing the IPR
  • If a Fee is being charged, this should reflect the future value to the company, as well as the costs incurred by the University in developing and protecting the IPR
Retained Rights
  • The template does not include a licence back to the Assignor. If this is important, the parties should discuss the Assignee providing a licence back to the Assignor
  • Consider seeking rights under a separate licence agreement to use the assigned IPR for academic research and teaching if this is important
  • Consider whether to provide a licence to the other party to continue to use the IPR
Warranties
  • The template includes standard warranties from the Assignor relating to its ownership of the IPR, and its knowledge of any issues relating to the IPR, including whether any rights have been granted to a third party
  • Ensure you can give the warranties described and that you are not aware of any information that would breach these warranties
  • If any rights to the IPR have been granted previously, ensure these do not restrict your ability to assign the IPR and that these prior grants of rights are notified to the Assignee and listed in the Agreement
  • Ensure you understand any restrictions that might apply to the IPR being assigned, particularly any licences that have been granted previously
  • Be clear that if any prior rights have been granted that these do not impact on your ability to take assignment of the IPR