What to Look for in Software Assignments | Practical Law
What to Look for in Software Assignments
Practical law legal update 7-572-5625 (approx. 5 pages).
- The sale of one or more tangible copies of a specific software solution.
- A broader asset sale or carve-out transaction (the sale of a discrete business from a larger business enterprise).
- A merger, acquisition or change of control.
- An exclusive software license.
- Conditionally, as security in a financing arrangement.
Transferred Subject Matter
- Intellectual property (IP) rights in the software.
- Only the ownership of tangible copies of the software.
Assignment of IP Rights
- Trade secrets, know-how and confidential information, for example, in the software's source code.
- Patents on processes and methods practiced by the software.
- US copyright law (if they have original content or selection and arrangement of content);
- trade secret laws covering the database's structure, contents or method of operation; and
- sui generis database rights recognized in the EU or other non-US jurisdictions (see, for example, Database Directive (96/9/EC) ).
- Designs such as computer screen displays, menus, icons and other software-generated graphic materials under EU or other non-US design protection laws (see, for example, Community Design Regulation (6/2002/EC) and EC Designs Directive (98/71/EC) ).
- Trademarks, including registered and unregistered marks and their associated goodwill.
- Moral rights of attribution, integrity and non-destruction that non-US jurisdictions may vest in the creators of the software's documentation (but not the software itself).
- Seek an irrevocable written assignment to the transferee and its successors and assigns of all right, title and interest in and to the software and documentation in all forms, formats and media, including in object code and source code form.
- Specify in the assignment grant that the assignment includes all IP rights, interests and assets comprised by or related to any of the software or documentation.
- Include the geographic scope of the assigned rights (for example, "in the United States," "throughout the world" or, where satellite or other extraterrestrial use is contemplated, "throughout the universe").
- the assignor has granted or received any rights, licenses or other interests in the software; and
- the software is subject to any earlier assignment, exclusive license or security interest, lien or other encumbrance.
- Carefully review the terms of any license, security interest or other encumbrance identified in the due diligence search, including the license term, the assignor's obligations and the assignor's freedom to assign its rights under the license agreements' assignment provisions.
- Include the assignor's license rights in the assignment.
- on and after the effective date of assignment; and
- where applicable, before the effective assignment date.
- If the parties intend to transfer to the assignee the software owner's right to sue for the past infringement, misappropriation or other violation of its rights in or relating to the software, include an express assignment of all rights to sue and receive damages and other legal and equitable remedies for these past, present and future violations.
- Prepare an assignment grant in a form that may be recorded with the US Copyright Office, USPTO or both to protect the assignee's ownership interest in any federally issued, registered or applied-for copyright, patent or trademark rights in the software.
Transfer of Physical Copies
- the first sale doctrine (under US copyright law); and
- the doctrine of patent exhaustion (regarding any applicable US patents).
- Invoke the purchaser's statutory right to make or authorize the making of another copy or adaptation of the software under the US Copyright Act ( 17 U.S.C. § 117 ).
Transfer of IP Rights and Ownership of Software Copies
- Both sets of rights being transferred (either or both in the main text of the agreement and attached schedules).
- The specific software product or products and, if, the assignor has multiple copies of the software (for example in inventory), the number of units, serial numbers and other identifying features of these copies.
Software Assignment and License Agreement Sample Clauses
Related clauses.
- License Agreement
- Software License Agreement
- License Agreements
- End User License Agreement
- Sublicense Agreements
- Trademark License Agreement
- Patent Assignment
- Intellectual Property Assignment
- Assignment Agreements
- Trademark Assignment
Related to Software Assignment and License Agreement
License Agreement The Trust shall have the non-exclusive right to use the name "AIM" to designate any current or future series of shares only so long as A I M Advisors, Inc. serves as investment manager or advisor to the Trust with respect to such series of shares.
Software License Agreement 1) Customers acquiring software licenses under the Contract shall hold, use and operate such software subject to compliance with the End User License Agreement set forth in Appendix D, Appendix E, Subscription and Hosting Licenses, or Appendix F, Hosting Agreement, whichever is applicable, of this Contract. No changes to the these terms and conditions may be made unless previously agreed to between Vendor and DIR. Customers may not add, delete or alter any of the language in Appendix D, Appendix E or Appendix F; provided however, that a Customer and Vendor may agree to additional terms and conditions that do not diminish a term or condition in these Agreements, or in any manner lessen the rights or protections of Customer or the responsibilities or liabilities of Vendor. Order Fulfiller shall make the these terms and conditions available to all Customers at all times.
License Agreements (a) Each Borrower and Guarantor shall (i) promptly and faithfully observe and perform all of the material terms, covenants, conditions and provisions of the material License Agreements to which it is a party to be observed and performed by it, at the times set forth therein, if any, (ii) not do, permit, suffer or refrain from doing anything that could reasonably be expected to result in a default under or breach of any of the terms of any material License Agreement, (iii) not cancel, surrender, modify, amend, waive or release any material License Agreement in any material respect or any term, provision or right of the licensee thereunder in any material respect, or consent to or permit to occur any of the foregoing; except, that, subject to Section 9.19(b) below, such Borrower or Guarantor may cancel, surrender or release any material License Agreement in the ordinary course of the business of such Borrower or Guarantor; provided, that, such Borrower or Guarantor (as the case may be) shall give Agent not less than thirty (30) days prior written notice of its intention to so cancel, surrender and release any such material License Agreement, (iv) give Agent prompt written notice of any material License Agreement entered into by such Borrower or Guarantor after the date hereof, together with a true, correct and complete copy thereof and such other information with respect thereto as Agent may request, (v) give Agent prompt written notice of any material breach of any obligation, or any default, by any party under any material License Agreement, and deliver to Agent (promptly upon the receipt thereof by such Borrower or Guarantor in the case of a notice to such Borrower or Guarantor and concurrently with the sending thereof in the case of a notice from such Borrower or Guarantor) a copy of each notice of default and every other notice and other communication received or delivered by such Borrower or Guarantor in connection with any material License Agreement which relates to the right of such Borrower or Guarantor to continue to use the property subject to such License Agreement, and (vi) furnish to Agent, promptly upon the request of Agent, such information and evidence as Agent may reasonably require from time to time concerning the observance, performance and compliance by such Borrower or Guarantor or the other party or parties thereto with the material terms, covenants or provisions of any material License Agreement.
End User License Agreement Certain Software may be accompanied by an end user license agreement ("XXXX") from Verizon or a third party. Your use of the Software is governed by the terms of that XXXX and by this Agreement, where applicable. You may not install or use any Software that is accompanied by or includes a XXXX unless you first agree to the terms of the XXXX.
Sublicense Agreements Licensee shall grant sublicenses pursuant to written agreements, which will be subject and subordinate to the terms and conditions of this Agreement. Such Sublicense agreements will contain, among other things, the following:
Trademark License Agreement Buyer shall have executed and delivered to Sellers the Trademark License Agreement.
Patent Assignment Seller hereby sells, assigns, transfers and conveys to Purchaser all right, title and interest it has in and to the Patents and all inventions and discoveries described therein, including without limitation, all rights of Seller under the Assignment Agreements, and all rights of Seller to collect royalties under such Patents.
Intellectual Property Assignment The Executive acknowledges that any and all intellectual property that he produces, including inventions, works of authorship, physical products, ideas, designs, concepts, plans, programs or applications, during his Employment Period is and shall remain the Company’s sole property during and after the Employment Period. All inventions, works of authorship, ideas, processes, programs, software, and designs (including all improvements) (i) conceived (whether or not actually conceived during regular business hours) or made by the Executive during the Employment Period and for a period of one (1) year subsequent to the Employment Period, and (ii) related to the Company’s business, shall be disclosed in writing promptly to Company and shall be the Company’s sole and exclusive property. The Executive shall cooperate with the Company and its attorneys in the preparation of patent and copyright applications for such developments and hereby assigns all such inventions, works of authorship, ideas, processes, and designs to the Company. The decision to file for patent or copyright protection or to maintain such development as a trade secret shall be in the Company’s sole discretion, and the Executive shall be bound by such decision. The Executive shall provide, on Exhibit “B” of this Agreement, a complete list of all inventions, works of authorship, ideas, processes, and designs, if any, patented or unpatented, copyrighted or uncopyrighted, including a brief description, which he made or conceived prior to his employment with the Company and which therefore are excluded from the scope of this Agreement. The Executive shall assign, sell and/or transfer to the Company and/or its Affiliates the entire right, title and interest in and to any and all inventions, works of authorship, applications and any and all letters patent which may be granted for inventions that result during the course of the Executive’s work for the Company or its Affiliates in the United States of America and its territorial possessions and in any and all foreign countries, including divisions, reissues and continuations thereof, including the right to file foreign applications directly in the name of the Company and/or its Affiliates and claim priority rights deriving from such United States application to which said foreign applications are entitled by virtue of international convention, treaty or otherwise.
Assignment Agreements The following Assignment, Assumption and Recognition Agreements, each dated as of January 16, 2007, whereby certain Servicing Agreements solely with respect to the related Mortgage Loans were assigned to the Depositor for the benefit of the Certificateholders:
Trademark Assignment Upon the request of Theravance, GSK shall prepare a global assignment to Theravance of any Trademark extensively and publicly used by GSK and Theravance in connection with the Terminated Non-Respiratory Commercialized Alliance Product. If Theravance elects to record the Assignment, Theravance shall undertake such recordal tasks and shall bear the costs and fees associated with the recordal, including but not limited to all filing fees, agent fees, and costs of notarization and legalizations. GSK shall cooperate with Theravance as reasonably necessary. Notwithstanding the foregoing, in the event that any Trademark is used by GSK on any other product, GSK shall not assign such Trademark as contemplated in the preceding sentence but shall license such Trademark to Theravance on a non-exclusive basis and subject to any further license terms to be agreed by the Parties in good faith at the time.
- Practical Law
Assignment of rights in software
Practical law uk standard document 7-202-2186 (approx. 30 pages).
- Information Technology
- Asset Acquisitions
- Infrastructure
- Licensing, selling and reselling software
- United Kingdom
Log in to view available jurisdictions
Software Rights Assignment Template
Create a software rights assignment in less than 5 minutes with zegal's document builder. no legal knowledge required. try now for free, what is a software rights assignment.
Use this if you are selling the source code of software you have built or otherwise own, or if you’re transferring software to another company in your group as part of a restructuring. If you’re licensing the software use the Software License Agreement instead.
How to create a Software Rights Assignment
Easy to use legal templates.
Quickly and easily create any legal agreement for you or your team.
Affordable Plans
Straightforward pricing plans and bespoke packages built to simplify all your legal demands.
Vast Document Library
Zegal’s comprehensive collection of agreements means you always have what you need at your fingertips.
Start using Zegal for free
If you like it, pick a plan that suits you best.
Software Rights Assignment FAQ
Table of Contents
Basically, a Software Rights Assignment is an agreement to transfer the intellectual property rights of software from a software developer to another company. Essentially, the company being assigned the property rights will have full ownership of the source code.
Conversely, if you are licensing the software, you’ll want to use a Software License Agreement instead.
What is in a Software Rights Assignment Agreement?
In essence, a software rights assignment assigns all intellectual property of a developed software. Usually, this includes source code, documentation, manuals, training materials, testing scripts, etc. Typically, the agreement specifies the name of the software and the version number. Additionally, it may specify terms and conditions of use after the transfer of ownership.
When Should You Use a Software Rights Assignment?
Basically, you’ll want to use this template when you are transferring or selling intellectual property to another company. However, if you are looking to license your software, you should use a Software License Agreement instead.
In summary, easy-to-use templates for your software company can enable your team to grow. And, without increasing your administrative burden. Thus, an agreement generated from Zegal allows you to take control.
You Might Also Like
Along with this document, make sure you see these other templates in our library:
- Shareholder Agreement
- Option Agreement
- Employee Option Repurchase Agreement
- Share Appreciation Rights Plan
- Share Option Plan
The Zegal Template Library
Zegal's template library is a list of essential and premium business templates for your everyday legal needs.
Save money and time without sacrificing quality or missing vital legal requirements. Whether you're a startup or a larger enterprise, Zegal lets anyone create a legal agreement.
Let us take care of the legals so you can focus on running your business .
If you need more help, our "Talk to a Lawyer" feature gives you access to a qualified lawyer to get all the expert advice you need.
Zegal's template library represents a complete and curated list of essential and premium business templates that can be used directly, for everyday business needs. Importantly, whether you're a startup or a larger enterprise, you will find that our Zegal automation solution allows anyone to create a legal agreement, any time, anywhere. All without a need for an expensive lawyer. Why do we do this? Well, we think that running your business day-to-day is important, and having these templates at your fingertips allows you to not miss a beat!
Lawyers draft and curate all of our legal templates for ease of understanding using plain English. Just fill out our guided questionnaires, and we will create the contract for you. Using our patent-pending expert rules engine, we automate the creation of complex legal contracts.
Try it for free today!
Draft your Consultancy Agreement in minutes with Zegal.
Get started for free
Please leave this field empty.
Ready to get started?
Create a free account now and explore all of the Zegal features.
Get Started
No credit card required
Choose from 1000+ legal templates and draft contracts with ease and confidence.
Contract and document management made easy..
- Collaborate
Pay As You Go
All-Access Plans
Nice things people say about zegal., "using zegal allows us to take a lean and efficient approach that cuts costs while maximising results.".
Managing Partner
"Zegal is easy to use and customer service is responsive and helpful! I strongly recommend it!!"
"Zegal makes onboarding a new client or employee fast and simple."
Veronika Kuznetsova
Managing Director
“Zegal really works well for all our legal documentation needs, and it is also user-friendly and mobile at the same time.”
Daniel W. Ho
Managing Director & Principal Consultant
“Zegal is like my teammate, helps me draft the right template, quickly gets my work done, and also saves me money on legal needs.”
Alan Schmoll
CEO & Co-Founder
“With colleagues, partners, and clients across the globe, Zegal provides an easy-to-use tool that streamlines processes that saves costs and time.”
CEO of Turnkey
“Zegal has been such a great help in my business operations.”
Amanda A Atan
Managing Director at VIBES Mastery
“With Zegal, we work smarter rather than harder. Being a business professional, a proper document management system is always a must.”
Edgar Kautzner
Managing Consultant
“Zegal, a platform for compact package of legal templates, secured e-signing, reasonable cost and high level customer service.”
Paul Falzon
“Zegal is easy to use, affordable and the platform is simple to navigate which makes the process of putting together a document fast and fuss-free.”
Jonathan Wong
Founder & Managing Director
“Love the new flow/design, very quick and easy to use now. I have done 2 or 3 customer contracts in a flash over the past 2 days.”
General Manager and Managing Editor
“Consistently positive experiences with Zegal’s technology, and customer services teams, who ensure that our issues or questions are responded to immediately.”
© Zegal 2013-2023. All Rights Reserved.
Join Zegal and Use Our Legal Templates
Access thousands of contracts, and get help from a lawyer any time.
No credit card required.
If you already have an account click here to log in.
ASSIGNMENT OF SOFTWARE AGREEMENT
£ 10.00
A software program consists of computer programming code (source and object code), together with the written documentation, e.g. Software listings, schematics, etc. In order properly to transfer all rights to that asset to a purchaser, the developer must assign all of his original rights (his intellectual property rights), title and interest to the purchaser. This assignment secures the transfer of those rights. Read more Read more
Description
A software program consists of computer programming code (source and object code), together with the written documentation, e.g. software listings, schematics, manuals, flowcharts and drawings which make up the preparatory design and specification work and which leads to the development of the finished software.
Not all of the code or written documentation can be owned by the software developer, since much of the programming languages, algorithms and logic are in the public domain to be used by all. What is owned by the software developer is the original way in which the developer has used his know-how and expertise to create an original end product (software program) which is his own “expression”.
This original “expression” is protected by copyright law in most countries in the world and it is this part of the software which can be licensed by or bought and sold by the developer like any asset.
However, in order properly to transfer all rights to that asset to a purchaser, the developer must assign all of his original rights (his intellectual property rights) to the purchaser and if the Assignment is drafted for the purchaser’s benefit he should also seek an undertaking from the developer not to create that same software again.
The Assignment must also secure the rights to any enhancements, modifications or other variations which the developer may create or be capable of creating, as well as the right to apply for patents or other protections anywhere in the world.
Finally, since software is created through the developer’s know how, it is important to secure the developer’s continued help in understanding the software and securing such rights of ownership as are possible to obtain (see Clause 3).
You may also like…
SOFTWARE DISTRIBUTION AGREEMENT (Distributor)
Related products, escrow agreement, software licence and support agreement, software support agreement, software license.
We're not around right now. But you can send us an email and we'll get back to you, asap.
Start typing and press Enter to search
By continuing to use the site, you agree to terms and conditions and privacy policy. more information Accept
The cookie settings on this website are set to "allow cookies" to give you the best browsing experience possible. If you continue to use this website without changing your cookie settings or you click "Accept" below then you are consenting to this. You can read more about this on our Privacy Policy page .
Aug 23, 2017
Software IPR Assignment Agreement and why is important for Tech-Startups
It is very common among tech entrepreneurs to use it agencies to create mvp, or a new feature to pivot or growth their startup, but who owns that code is the software protected by ipr´s.
When it comes to intellectual property rights like patents, trademark and copyright, they are established in order to give certain degree of control over the IP to the holder. It allows them to create a monopoly on the use of the software or product , always during a certain period of time.
In the case of software the IPRs belong to the developers or creators of the platform or program. But, It is important to mention that all intellectual property rights can be transferred from one party to another. In the majority of cases when transferring an IP, it is legally demanded that the transfer is represented in a written form . The written statement will work as a legal proof in order to avoid any conflicts concerning the IP, with individuals or other organizations.
When it comes to software’s the most common IPR will be copyright , as it will work in several forms. For example, on one hand, copyright can be used in order to protect any software codes that are essential for the business actions. On the other hand, literary copyright is also helpful for more low key information like day to day literary works. In addition, copyright can also be useful for protecting the design of the software. In the case that the IP holder wishes to transfer any copyright, there must be a written contract.
Furthermore, other forms of IPR like patenting are also crucial for software organizations, they can be helpful for the protection of database valuable information, as well as, rights on the design of the platform.
H ere are 5 questions to better understand what is a Software Assignment Agreement and why is important for tech startups.
What is a Software Assignment Agreement?
It is an agreement between two parties (individuals, startups or companies), by which the exploitation rights of a software or computer program are normally transmitted in exchange for a price, but can also be transmitted free of charge.
The exploitation rights are those that correspond to the creator or author of the code and allow to obtain a performance or economic enjoyment of the use of the software or computer program. However they can be transferred to third parties. The assignment of these rights may be exclusive or not, costly or free.
Who should use it?
People (entrepreneurs, developers), companies or startups who want to:
- Transfer the rights of the total or partial reproduction, even for personal use, of a software or computer program,
- Translate, make adaptations, arrangement or any other transformation of a software and the reproduction of the results,
- Any form of public distribution including the rental of the original software or its copies.
What are some frequently use cases?
You need a Software Assignment Agreement if:
- You have worked with freelance programmers or collaborators who have finished programming or do not wish to continue with the project and have not signed any software development agreement or other prior agreement with them.
- Any of the partners of the startup that being a programmer (CTO) has developed software before the startup had a certain legal form, and once the company has been incorporated it is necessary to transfer in favor of the incorporated company the rights of exploitation of the software .
- You have agreed with another startup or company to assign one or more of the exploitation rights of a particular software or computer program in return for remuneration.
When not to use it?
This type of agreement should not be used for:
- Hire programmers. It is appropriate to hire programmers under a labor or freelancer contract and incorporate a clause stating the ownership of intellectual property rights, or by signing a software development contract where the ownership of intellectual property rights are established.
- To assign rights of exploitation to the ideas and principles on which are based any elements of a computer program including those that are the basis of their interfaces.
- Neither should it be used to transfer exploitation rights to a computer program that is not original, in the sense of being an intellectual creation of its author.
What do you need to draft this contract?
- Be registered in Starting Legal
- Select create a contract in the home page and go to early stage , click on Software assignment agreement
- Be the author or creator of the software or computer program or have their data, and be the author or creator part of the contract.
- The personal data of the people, startups or companies that will sign the contract with you (names and surnames, ID or Passport, addresses, etc).
Also to draft the contract you need to think and decide on the following:
- If it is an exclusive assignment or not of the rights of exploitation of the software.
- The duration of the assignment.
- The territorial scope (Spain, Italy or all the countries of the world)
- Exploited exploitation rights, which may be all or some of them (reproduction, distribution, transformation, public communication).
- Modalities of exploitation for which the rights are transferred (onerous or free).
- The price of the assignment.
- A refreshing drink and some nuts.
In addition, there are some special situations where individuals can own different copyrights in one single software. This means that there is certain boundaries to what each owner can transfer to other parties.
If you are having any trouble drafting any of our agreements or want to contact a lawyer (special price) just contact us because solving your legal problems is our passion!
More from Starting Legal
Crea tus contratos y otros documentos legales desde cualquier lugar y a cualquier hora, y firma con plena validez legal.
About Help Terms Privacy
Get the Medium app
Starting Legal
Text to speech
Publications
How to improve your company’s form software license agreement — part 2: assignment.
***This article is one part of a ten-part article series published by Koley Jessen to help software licensors improve their form software license agreements.
Key takeaways :
A form software license agreement should:, prohibit the customer from assigning the contract to any third party without the licensor’s prior written consent;, expressly state that all assignments in violation of the assignment clause are null and void; and, address the licensor’s rights if the customer undergoes a change of control..
Assignment provisions govern a party’s ability to transfer some or all of its rights, obligations, and liabilities under a contract to a third party. As a general rule, if the contract does not include an assignment provision or otherwise address a party’s right to assign the contract, default law permits a party to assign the contract to a third party without the consent of the other contracting party. This general rule is not always true for intellectual property licenses, but licensors should take the safe approach and work under the assumption that default law (absent contract terms to the contrary) will permit the customer to assign the contract without the licensor’s consent. As a good starting point in their form software license agreement, licensors should prohibit the customer from assigning the contract to any third party without the licensor’s consent.
The simple example we will use to illustrate the importance of addressing assignment rights in a software license agreement is a licensor granting an enterprise software license to a small company (“SmallCo”), and SmallCo subsequently being acquired by a large multi-national company (“BigCo”). In one version of the example, SmallCo is acquired by BigCo via an asset sale. In another version of the example, SmallCo is acquired by BigCo via a stock sale. In the last version of the example, SmallCo is acquired by BigCo via a merger.
There are many different reasons why the licensor may want to prohibit SmallCo from assigning the software license agreement to BigCo and having BigCo using the software as the new counterparty to the agreement. BigCo may be a competitor or potential competitor of the licensor. Also, the licensor may miss out on additional revenue because BigCo would now have an enterprise license in exchange for SmallCo’s presumably lower enterprise license fees. Furthermore, the licensor may have difficulty complying with its other obligations in the software license agreement (ex. maintenance and support) if the other party is BigCo and not SmallCo.
If the licensor has a standard assignment provision in its form software license agreement with the “null and void” language referenced above, the licensor has largely protected itself from SmallCo assigning the software license agreement to BigCo in an asset sale scenario. An asset sale would require BigCo to become the other party to the software license agreement by SmallCo assigning the agreement to BigCo, but the software license agreement expressly says that SmallCo does not have the right to do that. Moreover, the “null and void” language says that SmallCo does not have the legal power to do that. So, if SmallCo purported to assign the software license agreement in violation of the assignment provision, the purported assignment would not be effective – BigCo would not be a party to the software license agreement and would not have new rights under the software license agreement. Also, many software license agreements would provide a termination right to the licensor if the customer purports to assign the software license agreement in violation of its terms.
In the stock sale example, it is unlikely that SmallCo would need to assign or transfer the software license agreement in any way. Rather, the ownership of SmallCo changes. The parties to the software license agreement remain unchanged in the stock sale example, meaning the parties to the agreement remain licensor and SmallCo. As a result, the standard assignment provision would likely not protect the licensor from a situation where SmallCo is acquired by BigCo in a stock sale. That language says SmallCo has no right or power to transfer the software license agreement to another party, and SmallCo has not done that in this stock sale example.
The stock sale scenario may be less concerning for the licensor because the other party to the software license agreement is still SmallCo (not BigCo). So, depending on how the enterprise license is precisely worded, expanded software usage rights to all of BigCo may, or may not, be a concern. However, whether or not the acquisition was an asset sale or stock sale, the licensor may be uncomfortable with a competitor or potential competitor owning SmallCo.
If the licensor wants to protect itself from the stock sale example where SmallCo remains the contracting party but is now owned by BigCo, the licensor should expressly state in its form software license agreement that changes of control are deemed assignments under the assignment clause, insert a “change of control” provision, or both. Change of control provisions, in essence, say that the licensor has a right to terminate the software license agreement if a certain percentage of ownership of the customer changes hands. Then, in our example, the licensor would have the option to terminate the software license agreement if SmallCo was acquired by BigCo via a stock sale.
Finally, in the merger example, SmallCo may or may not need to assign the software license agreement to BigCo or another entity. Mergers can take many different forms, and various different statutes set forth different rules on whether or not a merger involves an assignment of a contract “by operation of law.” If drafted properly, the “change of control” provision set forth in the preceding sentence that provides the licensor a termination right would likely protect the licensor in the merger example. Also, the licensor should ensure that its assignment provision specifically says that SmallCo may not assign the agreement “whether voluntarily or involuntarily, directly or indirectly, or by operation of law, merger, consolidation or otherwise.” This language would likely be interpreted by a court to prohibit the assignment or transfer of the software license agreement to BigCo (or any other entity) in connection with a merger of BigCo and SmallCo.
You May Also Be Interested In
- How to Improve Your Company’s Form Software License Agreement — A 10 Part Series 2023
- David Goeschel
- Jack Horgan
Practice Areas
- Commercial and Technology Contracts
We use cookies on our website to improve functionality and performance, analyze website traffic and enable social media features. By continuing to use our website, you agree to our use of cookies.
Assignment of rights in software
Using this assignment document, you can transfer the copyright in a computer program or piece of software from the existing owner to a new owner. in addition, the document can also be used to transfer other unregistered intellectual property rights subsisting in the computer program (for example, database rights) alongside the copyright..
Although software itself is not usually protected by moral rights, other works incorporated into software such as graphical works may be so protected. For this reason, the assignment includes an optional waiver of moral rights.
The document allows for specified rights to be excluded from the transfer. For example, if a software program incorporates third party / open source libraries, they would need to be excluded from the assignment: the assignor cannot assign what he or she does not own.
This assignment should not be used in relation to the transfer of patent rights or other registered intellectual property rights.
- Editor preview
- Document preview
Assignment of rights in software contents
- Definitions: definitions.
- Consideration: consideration benefiting Assignor .
- Assignment: assignment of intellectual property rights with full title guarantee option; assignment of owned intellectual property rights in works; assignment for full term of rights; assignment includes right to claim for past infringements.
- Moral rights: warranty that rights of paternity in works have been waived; acknowledgement of assertion of right of paternity in works; assertion of moral right of paternity in works; warranty that right of integrity in works has been waived.
- Warranties: first party warranty of authority; first party warranties relating to unregistered assignment IP; exclusion of implied warranties and representations.
- Indemnity: Assignor indemnifies Assignee upon breach.
- Limits upon exclusions of liability: caveats to limits of liability.
- Further assurance: further assurance (intellectual property); assistance with registration of intellectual property rights; assistance with proceedings relating to assigned intellectual property.
- General: no waiver; severability; variation written and signed; no assignment without written consent; no third party rights; entire agreement; governing law; exclusive jurisdiction.
- Interpretation: statutory references; section headings not affecting interpretation; calendar month meaning; no ejusdem generis.
SCHEDULE 1 (RIGHTS IN SOFTWARE: IDENTIFICATION)
- Assignment IP : software: identification of rights in software to be assigned.
- Excluded IP : identification of intellectual property rights to be excluded from assignment.
Related documents
- Assignment of copyright
- Assignment of rights in a website
- Software development agreement (standard)
Which licence should I choose?
We do not limit the number of copies of a template you can make on your own computer. Nor do they limit the number of times you can print and sign a document. We do however limit the number of copies of a template you can create in the Docular editor, and also the number of websites / digital products with respect to which a template may be used.
There are four different licences under which you can access a Docular template.
Number of document instances
Document templates are the products available for sale on this website; whereas document instances are "clones" of the templates, which you can edit using Docular's online editor and export from the website.
We will update our document templates from time to time, but this will not affect your document instances. When you create a document instance, it will be based upon the latest version of the underlying document template at the time of creation of the instance, irrespective of your date of purchase.
You can save your document instance to our servers at any time, and return to editing later. Once you are happy with your editing, you can export the document and save it to your computer.
Number of websites or digital products
The licences include numerical limits upon: (a) the number of websites (including cloud services) on which documents may be published; and (b) the number of digital products (such as software programs) with which documents may be distributed.
Sub-licences permitted
All of our paid licences allow you to sub-license to a client of yours the right to use a document created using Docular.
When you sub-license that right, it becomes attached to the particular client. The number of sub-licences you may grant is numerically limited and, again, the limitation corresponds to the document instance limitation.
Document licence period
This is the period of the licence to use documents created using and exported from the Docular online editor. In short, the licences do not expire. There are no ongoing licence fees.
Credit for Docular
Each free template includes a textual credit for Docular (eg "this document was created using Docular") and you must retain that credit in all versions of the document.
Legal T&Cs
For full details of the licensing rules governing the use of Docular templates, instances and exports, see our terms and conditions .
Logout warning
You will be logged out soon.
IMAGES
VIDEO
COMMENTS
Assignor shall have the right to approve the settlement of any such infringement action, or any other agreement between Assignee and such person or entity
Assignment of IP Rights · the assignor has granted or received any rights, licenses or other interests in the software; and · the software is
Assignment of Software Licenses. At the Closing the Seller shall assign to the Buyer the Software Licenses which are assignable. Where any Software License by
Software Assignment and License Agreement. At the Closing, Praesideo and the Company shall enter into the SALA and Praesideo shall deliver to the Company
An agreement for the assignment of all intellectual property rights in fully-developed software. ... To access this resource and thousands more, register for a
Basically, a Software Rights Assignment is an agreement to transfer the intellectual property rights of software from a software developer to another company.
In order properly to transfer all rights to that asset to a purchaser, the developer must assign all of his original rights (his intellectual property
It is an agreement between two parties (individuals, startups or companies), by which the exploitation rights of a software or computer program
Assignment provisions govern a party's ability to transfer some or all of its rights, obligations, and liabilities under a contract to a third
The document allows for specified rights to be excluded from the transfer. For example, if a software program incorporates third party