Assign or license definition
Examples of assign or license in a sentence.
Mr. Moorefield further stated under the terms of the tri-party agreement, the county was led to believe that PWC did have a standard wholesale rate which would be offered to the county, but later learned from Steve Blanchard, PWC CEO/General Manager, that there was no published standard wholesale rate.
Related to Assign or license
Sub-License means the sub-licensing of any space in the Station Development Assets and Project Utilities in the Station Development Project, by the Station Facility Manager to any licensee, in accordance with the Station Facility Management Agreement;
License means any Copyright License, Patent License, Trademark License or other license of rights or interests now held or hereafter acquired by any Credit Party.
State license means a license issued by the department that allows a person to operate a marihuana establishment.
Liquor License means any license, permit, registration, qualification or other approval required to sell, dispense or distribute alcoholic beverages under the Liquor Laws.
Sublicense means: (a) any right granted, license given or agreement entered into by Licensee to or with any other person or entity, under or with respect to or permitting any use or exploitation of any of the Patent Rights or Know-How or otherwise permitting the development, manufacture, marketing, distribution, use and/or sale of Licensed Products; (b) any option or other right granted by Licensee to any other person or entity to negotiate for or receive any of the rights described under clause (a); or (c) any standstill or similar obligation undertaken by Licensee toward any other person or entity not to grant any of the rights described in clause (a) or (b) to any third party; in each case regardless of whether such grant of rights, license given or agreement entered into is referred to or is described as a sublicense.
Driver license means a license that is issued by a state to
Sub-Licensee means all person/ agency with whom Licensee has executed sub license agreement as per terms and conditions of license agreement executed between DMRC and the Licensee, for commercial utilization of the Bare Spaces.
Multistate license means a license to practice as a registered or a licensed practical/vocational nurse (LPN/VN) issued by a home state licensing board that authorizes the licensed nurse to practice in all party states under a multistate licensure privilege.
Patent License means any written agreement, now or hereafter in effect, granting to any third party any right to make, use or sell any invention on which a patent, now or hereafter owned by any Grantor or that any Grantor otherwise has the right to license, is in existence, or granting to any Grantor any right to make, use or sell any invention on which a patent, now or hereafter owned by any third party, is in existence, and all rights of any Grantor under any such agreement.
licence means one or more of the licences or the approvals granted to the HSP in respect of the Beds at the Home under Part VII or Part VIII of the Act.
Intellectual Property License means any license, permit, authorization, approval, contract or consent granted, issued by or with any Person relating to the use of Intellectual Property.
FCC License any community antenna relay service, broadcast auxiliary license, earth station registration, business radio, microwave or special safety radio service license issued by the FCC pursuant to the Communications Act of 1934, as amended.
Site License means for each product, the term “Site License” shall mean the license established upon acquisition of the applicable number of copies of such product and payment of the applicable license fees as set forth in the Statement of Work.
Copyleft License means any license that requires, as a condition of use, modification and/or distribution of software subject to such license, that such software subject to such license, or other software incorporated into, derived from, or used or distributed with such software subject to such license (i) in the case of software, be made available or distributed in a form other than binary (e.g., source code form), (ii) be licensed for the purpose of preparing derivative works, (iii) be licensed under terms that allow the Company’s or any Subsidiary of the Company’s products or portions thereof or interfaces therefor to be reverse engineered, reverse assembled or disassembled (other than by operation of Law) or (iv) be redistributable at no license fee. Copyleft Licenses include the GNU General Public License, the GNU Lesser General Public License, the Mozilla Public License, the Common Development and Distribution License, the Eclipse Public License and all Creative Commons “sharealike” licenses.
Trademark License means any written agreement, now or hereafter in effect, granting to any third party any right to use any trademark now or hereafter owned by any Grantor or that any Grantor otherwise has the right to license, or granting to any Grantor any right to use any trademark now or hereafter owned by any third party, and all rights of any Grantor under any such agreement.
Copyright License means any written agreement, now or hereafter in effect, granting any right to any third party under any Copyright now or hereafter owned by any Grantor or that such Grantor otherwise has the right to license, or granting any right to any Grantor under any Copyright now or hereafter owned by any third party, and all rights of such Grantor under any such agreement.
Single-state license means a nurse license issued by a party state that authorizes practice only within the issuing state and does not include a multistate licensure privilege to practice in any other party state.
Exclusive License means with respect to any drug or pharmaceutical product, any license granted to develop, commercialize, sell, market and promote such drug or pharmaceutical product with a term greater than five (5) years (unless terminable prior to such time without material penalty or premium by Irish Holdco or the applicable Restricted Subsidiary) and which provides the applicable licensee (and/or its assignees) the exclusive rights to develop, commercialize, sell, market and promote such drug or product within the United States; provided that an “Exclusive License” shall not include (a) any license to distribute any such drug or product on an exclusive basis within any particular geographic region or territory, (b) any licenses, which may be exclusive, to manufacture any such drug or product, and (c) any license to manufacture, use, offer for sale or sell any authorized generic version of such drug or product.
Research License means a nontransferable, nonexclusive license to make and to use Licensed Products or Licensed Processes as defined by the Licensed Patent Rights for purposes of research and not for purposes of commercial manufacture or distribution or in lieu of purchase.
Licensed Intellectual Property has the meaning set forth in Section 3.12(a).
Permitted License means any non-exclusive license of patent rights of Borrower or its Subsidiaries so long as all such Permitted Licenses are granted to third parties in the Ordinary Course of Business, do not result in a legal transfer of title to the licensed property, and have been granted in exchange for fair consideration.
exclusive licence means a licence from the proprietor of or applicant for a patent conferring on the licensee, or on him and persons authorised by him, to the exclusion of all other persons (including the proprietor or applicant), any right in respect of the invention to which the patent or application relates, and “exclusive licensee” and “non-exclusive licence” shall be construed accordingly;
Company Licensed Intellectual Property means all Intellectual Property that is licensed to the Company by any third party.
IP License means all Contractual Obligations (and all related IP Ancillary Rights), whether written or oral, granting any right, title and interest in or relating to any Intellectual Property.
End User License means any license terms imposed by any Third Party Vendor on Customers and End Users. “Force Majeure Event” means an event or occurrence:
Licensed Intellectual Property Rights means any and all Intellectual Property Rights owned by a Third Party and licensed or sublicensed to the Company or any of its Subsidiaries or for which the Company or any of its Subsidiaries has obtained a covenant not to be sued.
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Licence to Assign – what exactly is it and why do some leasehold properties require one?
What is a Licence to Assign?
Some leases, but by no means all, contain a provision that require an outgoing tenant (the Assignor) to obtain their landlord’s/freeholder’s consent to them selling their lease. This Licence to Assign is the consent document to assign the lease/flat to a new incoming tenant (the Assignee). It should be noted that the consent can have conditions attached for the Assignor and the Assignee and that it does not have to be by way of a formal deed.
When do you need a Licence Assign?
The tenant will need this Licence any time it wishes to assign the lease. By ‘assign’ this means sell or transfer a property. For example, even if the person just wants to transfer from their sole name into joint names or from a company name to individual director or shareholder names, this would trigger the requirement for a Licence to Assign under the lease.
Why do you need a Licence to Assign?
Many sellers view the Licence to Assign requirement adversely and just as an additional expense. Assignee’s can also view them in a negative light, particularly if they are asked to pay a deposit (See ‘conditions’ attached to Licence below). However, the reality is that these licences can be viewed as good practice and management by the landlord of a building. They are essentially vetting and approving the incoming owners of the flats in the building and want ensure they are of a suitable character and a certain calibre so as to (hopefully) avoid issues with non-payment of charges for the building (which can lead to expensive litigation and is ultimately payable by the other flat owners); and nuisances which can arise between neighbours etc. (the cost of abating the same is also to be borne by the other flat owners).
Who prepares the Licence to Assign?
This consent is almost always prepared by the Landlord’s solicitor or managing agent who will charge professional fees for producing the draft Licence, which is a pre-condition of the Licence being drafted and provided. The fees will need to be paid by either the Assignor or Assignee, but usual practice means it falls upon the Assignor, i.e. the seller of a flat.
What are the ‘conditions’ attached to the Licence to Assign?
Besides payment of the Landlord’s professional fees (which range to between £750 to £2,000 plus VAT), the Assignee will be asked sometimes to provide references (usually character, professional and financial) if they are individuals to prove that they are reliable and trustworthy and can afford the annual outgoings on the property. Furthermore, non-UK residents and corporate entities, such as companies and trusts, may be asked to pay x2 or x3 years’ service charge and ground rent up front and to enter into an additional deed known as a ‘Rent Deposit Deed’ or ‘Maintenance/Service Charge Deposit Deed’, which is a form of guarantee for the Landlord.
How long does a Licence to Assign take?
This really depends on how fast and responsive the Landlord’s solicitor or managing agent is in a) providing the conditions and then b) getting the Licence signed by the Landlord. Equally, the Assignee would need to satisfy the conditions (i.e. obtain references or agree the deposit deed) and sign up. Typically, a Licence can be completed within 3-4 weeks, but this can be shorter if the parties are motivated and proactive and quick to liaise with one another to deal with the conditions and sign up, however it can also take longer if the parties involved are slow. By parties, this is not just in reference to Assignor and Assignee, but also third parties such as banks providing financial reference or employers providing professional references for the Assignee.
Furthermore, the professional fees are usually required to be paid “whether or not the matter proceeds to completion” meaning that the fee is payable whether or not the assignment proceeds and even if it becomes abortive, the whole fee is payable. Sometimes, then, the party paying the fees will want to have some certainty that the assignment transaction (to that particular party /entity) is going to proceed before it will submit the request for consent, which can delay things also.
Can consent be refused?
The request for consent by the Assignor to the Landlord is usually qualified by stating that the Landlord cannot withhold or delay their consent unreasonably. The Landlord and Tenant Act 1988 also requires Landlords give consent within a reasonable time (except where it is unreasonable to do so).
What is ‘reasonable’ was considered in the case No. 1 West India Quay (Residential) Ltd vs East Tower Apartments Ltd, 2018 . The Landlord was No.1 West India Quay, and the Tenant was East Tower Apartments.
The Tenant had 42 apartments on underleases, which it was selling, with the (superior) Landlord’s consent required for these to be sold.
The Landlord in this case imposed three conditions upon its consent:
- That bank references be provided for the proposed assignee
- That the property be inspected by a surveyor, with the Tenant to cover the costs (£350 + VAT per property)
- That the Tenant covered the Landlord’s legal costs of £1,250 + VAT per property.
The Tenant started proceedings against the Landlord, claiming these conditions were unreasonable and that consent had therefore been unreasonably withheld.
The courts in the first instance found all three conditions to be unreasonable. However, on appeal, the High Court found only condition 3 was unreasonable. Yet they decided that that this single unreasonable condition made the Landlord’s overall refusal of consent unreasonable, even though the other two conditions were reasonable conditions.
Finally, the Court of Appeal concluded that Landlord’s decision to refuse consent was reasonable. The fact one of the conditions was bad, did not outweigh the two good conditions in the overall context.
The case highlighted the difficulties facing Landlords, but showed a rational approach from the courts, whereby when multiple reasons are given for withheld consent, the overall decision will be considered, even where some individual reasons may be invalid.
14 March 2022
The Difference Between Copyright Assignments and Licenses
The Difference Between Copyright Assignments And Licenses
There are two ways that a copyright owner can transfer some or all of his or her copyright rights: through a license or an assignment.
In an assignment of copyright rights, the owner sells his or her ownership rights to another party and has no control over how the third party uses those rights. A copyright assignment is sometimes referred to as a sales agreement for copyright.
The buyer (assignee) can then use the copyrighted work or do whatever he or she wants with it. He or she all of the assigned rights that the original owner had.
A valid assignment of copyright must be in writing and signed by, or on behalf of, the copyright owner/assignor. The subject of the assignment must be clear as to what copyright is being assigned in which work(s).
In a license of copyright rights, the owner maintains his or her copyright ownership rights, but allows another party (the licensee) to exercise some of those rights without the licensee’s actions being considered copyright infringement. A license is often preferred over an assignment when the copyright holder wishes to maintain and exercise some ownership control over the rights and how the licensee uses the copyright holder’s rights.
For example, a typical software license agreement is a copyright license agreement. The software copyright owner grants the user/licensee the right to use the software in a specified, restricted manner. In return, the user/licensee may agree to limit his or her use of the software in various ways and to pay the copyright owner a license fee.
Unlike a copyright assignment, a copyright license does not have to be in a signed writing. A license can be oral or arise by implication when considering all of the facts and circumstances surrounding the transaction between the copyright owner and the purported licensee.
If you own a copyright in a work that you are thinking about assigning, you should consider whether to license your copyright instead, thus allowing you to retain ownership, and license only certain rights to the other party.
For additional information about the difference between copyright assignments and license, please contact us .
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Assignments and Licensing of Intellectual Property
Intellectual property rights such as patents and copyrights are often transferred in whole or part so that a third party can make use of them. Some common examples of assignments and licensing of intellectual property include an author who licenses her copyrighted novel to a publisher for a time or a software developer that purchases the right to incorporate code created and owned by another into one of its products.
Licenses and Assignments as Options
Licenses and assignments are both ways of granting rights in intellectual property to a third party, but the two alternatives are quite a bit different, and it is important that a person or organization transferring intellectual property rights understand the difference and the ramifications of each. It is equally important that a party seeking to purchase intellectual property rights enters into the type of agreement that will allow the intended use on the intended terms.
Working with an experienced intellectual property lawyer when you are considering entering into a licensing or assignment agreement will ensure that you have the information you need to make the best decision. The attorney can also draft or review the agreement to ensure that the language accurately reflects your intentions and there are no unanticipated obligations or limitations.
Intellectual Property Licensing
Licensing a patent or copyright to a third party means granting that person or organization permission to exercise some or all of your rights. When you grant a license, you still own the intellectual property rights, although the terms of the license may place some limitations on your use of those rights. A license may be exclusive or non-exclusive.
A non-exclusive license grants a third party the right to use your intellectual property but does not prohibit you from using those rights yourself, or from granting licenses to others. A simple example would be a software platform provider such as Salesforce. Salesforce licenses a customer the right to use its protected intellectual property to manage customer contacts and prospects–the software can even be integrated with other platforms or tweaked to serve the customer’s needs. However, the company’s business model requires that it have the freedom to license that software again and again, to thousands of clients at a time. Thus, the licenses it grants are non-exclusive.
An exclusive license grants the purchaser the sole right to use the intellectual property, or some portion of it, for either the duration of the licensing period or a portion of the licensing period. For example, when a magazine or other publication purchases an article from a writer, the publication typically takes an exclusive license for a specified period of time, such as 90 days. That short period of exclusivity allows the publication the benefit of being the first to publish and the only source for a period of time. The agreement may also include a non-exclusive license that lasts longer so that the publication can include the piece in anthologies or keep it in an online archive.
A license, whether exclusive or non-exclusive, may be limited in various ways. One of the most common is that the license may be time-limited: a license may be granted for a specific time period or in perpetuity. Another is that the license may apply to fewer than all the rights associated with the copyright or patent. For example, a novelist may license book rights to a publisher, but retain movie rights for herself or to license to another party.
Assignment of Intellectual Property Rights
The key difference between a license and an assignment is that an assignment transfers rights away from the original copyright or patent holder. Whereas the licensor retains ownership of the intellectual property rights, the assignor gives up the rights entirely. In simplest terms, licensing is akin to rental, whereas an assignment operates as an outright sale. A copyright or patent holder who has assigned his rights retains no interest in the intellectual property, just as a person who sells a car no longer has a legal interest in that vehicle.
Obviously, a patent or copyright holder who is considering an assignment must think carefully about the legal ramifications and the impact on existing products and systems, and must ensure that the compensation is commensurate with the rights transferred.
Talk to an Intellectual Property Lawyer Before Licensing or Assigning Your Rights
The decision as to whether to license or assign your rights as the holder of intellectual property rights or to pursue a license or assignment as a purchaser, can be a complex one. A miscalculation could mean serious complications and costs. Protect yourself before you start by getting knowledgeable guidance from an experienced attorney at KPPB LAW who can ensure that your agreement protects your interests.
Intellectual Property Attorneys at KPPB LAW
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WHAT IS THE DIFFERENCE BETWEEN ASSIGNMENT AND A LICENSE?
The main difference between the two is that in a license the person granting permission (Licensor) retains an interest in the property being licensed, whereas in an assignment the assignor transfers his rights in the property being assigned.
In intellectual property, a license may grant a licensee to use a patent, trademark, software, etc. without being sued. Licenses come in many different flavors and pretty much any type of provision can be worked into a license such as the length of the license, the territory where a license may apply, the nature of the license (exclusive vs. non-exclusive), etc. If an inventor/start-up company obtains a patent, they may license their patent to another person or company in exchange for royalties. As previously discussed, the rights given in different licensees may vary and overlap. For example, if company A obtained a patent, they can have a non-exclusive license to company B for 10 years in North America, and have a non-exclusive license to company C for 5 years without territorial exclusions. As such, different terms for licensees may be contracted with different companies. If company A granted an exclusive license to company B for the full length of the patent along with derivative works, then the license will essentially work as an assignment.
A major difference between licenses and assignments is that assignments are required to be in writing whereas licenses may be applied without writing. Specifically, patents may be licenses orally (in some circumstances) whereas assignments for patents must be in writing and filed with the USPTO. One such example of an implied license is if a user purchases a product at a retail store. It is implied that they are able to use the product or display it in pictures, etc. As such there is an implied license that grants the user limited rights without any writing.
Because assignments grant an assignee full ownership of a piece of property, typically to acquire an assignment will cost more than to acquire a license.
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- Thu. Mar 16th, 2023
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Difference between Assignment and License
By Sanjay Rawat
Assignment of copyright and copyright license are two forms of contract involved in the exploitation of copyright work by a third party. Each has its own distinct characteristics.
A license is an authorization of an act without which authorization would be an infringement. Licensing usually involves licensing of some of the rights and not the whole. Licenses can be exclusive or non-exclusive WHEREAS An assignment involves the disposal of the copyright: the author (assignor) assigns the copyright to another person (assignee) or transfers ownership of the copyright.
However, In the case of license only specified interest in IP is transferred not the ownership is transferred to the licensee.
A license normally does not confer any right to licensee against licensor or third party but exclusive licensee has substantial rights against the licensor, even to sue the licensor. And by Section 30 if the licensee in the case of future work dies before the work comes into existence his legal representatives shall be entitled to such works, in the absence of any provision to the contrary.
A licensee has a right to make alterations except in so far as his license expressly or impliedly restricts the right. A failure to pay royalties enables the licensor to revoke the license whereas in the case of assignment it is not possible. But if there is any harsh terms that affect the author can lead to revocation if a complaint is made to the copyright Board.
The expression “assignee” as respects the assignment of the copyright in any future work includes the legal representatives of the assignee, if the assignee dies before the work comes into existence.
The owner of the copyright has the power to assign his entire rights or assign only some of the rights. In case the rights are split up there is only partial assignment. Assignee will be the owner of the copyright as regard rights so assigned, the owner will be the owner of the copyright of the remaining rights. The assignment could be for the whole duration of the copyright or for a short duration
What is the difference between copyright patent and trademark, intellectual property rights & covid-19, incorporation of company.
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Insights // 24 October 2022
What is a Licence to Assign? A Summary
Partner katja wigham, in our commercial property team , explains what a licence to assign is..
A licence to assign is a landlord’s permission for a tenant (the assignor) in occupation under a lease to assign the lease to a new incoming tenant (the Assignee). It should be noted that this permission does not necessarily need to be in a formal deed. Therefore, landlords and agents should be mindful of falling into the trap of granting permission through correspondence, thereby inadvertently granting consent without the assignor and assignee having to comply with the required conditions such as providing a guarantee or rent deposit. In Aubergine Enterprises Ltd v Lakewood International Ltd (2002) it was held that consent to assignment was contained in correspondence even if was stated to be “subject to licence”.
Landlords are provided with some comfort in that if the lease contains a provision that consent must be given by deed, then this is the only way in which permission to assign can be granted. In this instance, the landlord, assignor and assignee (and guarantor if required) will be a party to the licence, which will usually be prepared in triplicate and a copy provided to each party on completion.
The licence will contain several covenants, for example a covenant between the Assignee and Landlord to observe and perform the covenants contained in the lease. The assignor may covenant to pay the landlord’s legal costs in connection with the licence and covenant not to allow the Assignee to take occupation of the premises until completion of the assignment.
Under Section 19(A) of the Landlord and Tenant Act 1927, the landlord should not unreasonably withhold consent to the assignment of the lease. If however, the lease contains provisions such as that the Assignor must not be in arrears and/or in breach of any covenants of the lease then the Landlord is entitled to withhold consent until these obligations have been complied with. The licence should incorporate a right of re-entry clause allowing the landlord to forfeit the lease owing to a tenant’s breach of covenants in the licence.
A landlord will often want the licence to include an indemnity clause whereby the assignor and the assignee will indemnify the landlord against all liabilities, losses, costs incurred and damages arising out of the licence. An assignor however is likely to want to limit the indemnity to reasonable costs and expenses, properly incurred and to their own breaches.
Finally, the permission under a licence to assign typically remains valid for three months following completion of the licence, during which time the assignor and assignee will assign the lease. If assignment does not take place within the specified time then the licence will cease to be valid and the assignor will have to start over again.
For further information or legal advice, please contact [email protected] or call 0118 951 6800.
This article is intended for the use of clients and other interested parties. The information contained in it is believed to be correct at the date of publication, but it is necessarily of a brief and general nature and should not be relied upon as a substitute for specific professional advice.
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Difference Between Licensing and Assignment Agreements
An agreement can be defined as a meeting of the mind with the understanding and recognition of shared legal rights and responsibilities as to the precise acts or obligations which the parties agree to exchange; a mutual consent to do or refrain from doing anything; a deal. The arrangement is not necessarily compatible with the contract, since it can neglect the basic aspect of the contract, such as concern. Under Section 2(e) of the Indian Contract Act, 1872, the word “Agreement” is specified as every promise and every set of promises to be considered for each other is an agreement.” And an agreement enforceable by statute is a contract. The term “lease” is defined in accordance with Section 52 of the Indian Easement Act, 1882 as “Where a person grants to another person, or to a certain number of other persons, the right to do or to continue to do, in or on the immovable property of the grantor, anything which in the absence of that right, would be unlawful and that right does not amount to servitude or interest in the property, right i. Thus a Licensing Arrangement is a formal document between two parties, the Licensor and the Licensee, where one party (the Licensor) grants permission or authorization to use its property/intellectual property/brand name or trademark/patent technology to another party (the Licensee) under a specified set of terms and conditions.
A licence arrangement is a written agreement between two parties in which the owner of the land allows another party to use the property in compliance with a particular set of conditions. Licensing arrangements or licensing agreements normally include the licensor and the licensee. Licensing agreements set out the conditions by which one party can use land owned by another party. Although the assets in question which include a variety of products, including land interests and personal belongings, licence arrangements are most commonly used for intellectual property purposes, such as patents and trademarks, as well as copyrights for printed materials and graphic arts. For eg, Nestle and Starbucks entered into a $7.15 billion coffee licencing agreement in May 2018. Nestle (the licensee) agreed to pay $7.15 billion in cash to Starbucks (the licensor) for exclusive rights to market Starbucks products (single-serve coffee, teas, bagged beans, etc.) around the world through Nestle’s worldwide distribution network. In addition, Starbucks can earn revenue from bottled coffees and teas offered by Nestle. The licence arrangement provided Starbucks with the opportunity to push brand awareness beyond its North American operations via Nestle’s distribution networks. For Nestle, the company acquired access to Starbucks products and a good brand reputation.
Types of Licensing Agreements
1. Exclusive Licensing Agreement – This form of arrangement establishes a special partnership between the licensor and the licensor. In such arrangements, no one except the designated licensee is entitled to exploit or use the licensed property within the duration of the agreement. The special characteristic of this form of arrangement is that even the licensor is exempt from the use or misuse of the approved property within the duration of the agreement. Copyright, patents and patent licences are the best examples of an exclusive licensing arrangement.
2. Non- Exclusive Licensing Agreement – In this form of arrangement, the licensor may issue a licence for the licensed property to any number of licensees and may also use the licensed property within the duration of the agreement.
3. Co- Exclusive Licensing Agreement – This form of arrangement requires more than one licensee to use and manage the licensed property, except this time the number of licensees is limited and their number is set at the time of entering into the agreement.
4. Sole Licensing Agreement – This form of the arrangement is somewhat similar to an exclusive licensing agreement, but the only exception is that the licensor retains the right to use the licensed property for the duration of the agreement.
Contract assignment means that the contract and the property rights or responsibilities within the contract can be delegated to another party. As a general concept, a contract assignment may be included in a business contract. This form of provision is typical in negotiations with manufacturers or suppliers and in deals on intellectual property. Contract assignment is also used in contracts that give either side the option to pass its share of the contract to someone else in the future. Many assignment clauses enable all sides to commit to the assignment. An assignment can be made to anyone but is normally made to a subsidiary or a successor. A division is a company that is purchased by another business, while a descendant is a business that accompanies a transaction, takeover or merger.
Specifications in IP Assignment Agreement
1. Identification of the Parties -identifies the contract as an arrangement for the assignment of intellectual property and identifies the Assignor and the Assignor. The party transferring (‘assigning’) ownership interest shall be referred to as the Assignor, while the party obtaining it shall be referred to as the Delegated.
2. Obligations of the Parties -It is necessary to explicitly specify the obligations of the Parties in order to prevent any subsequent dispute as to the nature of those obligations; the precise meaning and extent of the obligations of the Parties depends on the form of intellectual property transferred; however, the principal duty of the Assignor is to transfer the rights of intellectual property.
3. Liability and warranty provisions -refers to the right of the assignor and the authority to enter into such an agreement; for example, to promise that he is the sole owner of all rights, title and equity in the IP and that the IP is legitimate and valid; that the transferred IP does not infringe the rights of third parties.
4. Compensation -A summary of the potential duties of each party if intellectual property is found to infringe the interests of a third party.
5. Applicable law and jurisdiction -The national law may prevail in the case of a conflict; it is also necessary to specify the appropriate court or the arbitration/mediation process to which the issue can be referred.
Licensing and Assignment Agreements
1. Interest Vested : One can licence the IP to another person or business to use as the owner of the IP. One and the other party negotiate on the terms of this usage. This is known as a licensing arrangement, and in this case, one is the licensor and the other party is the licensor. The terms of usage outlined in this Document should be agreed between oneself and the other party in order to protect the best interests. These terms govern the arrangement which includes: the limitation of the licensee’s usage to a single geographical location; and the payment of rights in the form of royalty.
In relation to a licence, an assignment agreement is a permanent transition of the IP. This transition is irrevocable and usually takes place as a sale or transfer from the owner (assignor) to the purchaser (assignee). If one is trying to pass control of the IP, he can ensure that this transfer is made in writing by means of an act or other formal agreement. These documents can pass current or potential IP rights in exchange for a lump-sum payment.
2. Method of Assignment : There is no requirement to do so in writing in licencing IP. Involved licences can often be invoked by the application of the rule. Example commissioned to produce patent content, and no formal arrangement is in effect. In this case, it is generally presumed that a tacit licence has been issued to the person who commissioned the material to be produced. There is a tacit licence on the payment that the commissioned party has an implicit licence for the copyrighted piece. It would then be implied that they will use it for the purposes of an unwritten arrangement.
The designation to an IP shall be permanent and irrevocable in the assignment agreement. Therefore in order to do this correctly, the task must be in writing.
3 . Notification: There is no notification mechanism for one IP licence. It is actually a private arrangement between the licensor and the licensee.
When the IP owner transfers an IP to the assignee, the assignee would have to file an application for transfer of ownership. If the Registrar collects the form with the assignment information, the assignee is legally the owner of the IP. Once this phase has been finished. The Registrar is then obligated to inform any other person involved.
4. Cost: Although the assignment gives the assignee sole ownership of the piece of land, the purchase of the assignment would normally cost more than the acquisition of the licence.
5. Enforceability – Another significant difference between the two of them is in the requirement to make them enforceable. It is a signatory that the assignment agreement is required to be recorded and filed in The United States Patent and trademark office assignment recordation branch. It is observed that the license is less stringent and thus it can be granted orally. The best-suited method is to have a negotiated and signed licensed, unlike assignment a record of the agreement is not mandatory.
1. Ashley Duggar, study: Contract Agreement, study.com, available at https://study.com/academy/lesson/assignment-of-rights-definition-and-involved-parties.html
2. Richard Sim, study: What is the assignment of Contracts, Nolo, available at https://www.nolo.com/legal-encyclopedia/assignment-of-contract-basics-32643.html
3. Gene Pierson, study: the difference between assignment and a license, Pierson Intellectual Property, available at http://piersonpatentlaw.com/what-is-the-difference-between-assignment-and-a-license/
4. Study: Assignment Agreement, Thrive IP, (31 st October 2017), available at https://thrive-ip.com/assignment-agreement-vs-license-agreement-ip-tool-box-series/
5. Gordon Haris, study: Basics of Patent Law, Lexology, (19 th April 2017), available at https://www.lexology.com/library/detail.aspx?g=c4f8c628-3d98-4bb9-966c-c9cf96679957
6. David Szostek, study: Difference between Assignments and licenses, Edward Allen Attorney of law, (8 th April , 2015), available at https://www.edwardallenlaw.com/difference-between-copyright-assignments-and-licenses/
7. Andrew Bloomenthal, study: Licensing Agreements, Investopedia,(3 rd September 2019), available at https://www.investopedia.com/terms/l/licensing-agreement.asp
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The Difference between Assignment and License of IP Rights
Intellectual property (IP) - whether in the form of a patent, copyright or trademark – grants the owner control over how the property is used and by whom. The owner may choose to commercialise the IP by granting licenses to other companies giving them the right of usage. Alternatively, they may decide to assign – or effectively sell - the IP to another company in exchange for a large sum.
The primary difference between assignment and license in IP rights is in the transference of ownership. An assignment transfers ownership and title to the assignee, whereas a licence grants the licensee permission to use the IP – usually for a limited time period - whilst ownership of the patent remains with the licensor.
One other significant difference between assignment and license in IP rights is that while an assignment must be in writing, a license is not legally required to be.
What is an IP Licence ?
Obtaining a patent or copyright over a piece of IP gives the holder exclusive ownership over that property. This could be a song, piece of software, an invention or a physical object. Without obtaining a license, it would be unlawful for any third party to use that property. However, the owner of the property is entitled to license out its use to third parties as they choose.
For example, if a software developer designs a new app, they may allow certain companies to integrate the app into their software for an ongoing fee. However, the developer still holds the controlling interest in the app and can choose to grant licenses to other companies too, depending on the conditions agreed in the license.
The exact terms of the license are at the owner’s discretion. It may for example include territorial restrictions, a time frame, or particular restrictions on how the property can be used. The license will typically outline confidentiality agreements as well as the terms of termination of the license. Although licenses are not required to be in writing in order to be valid, all parties may well prefer to have a written agreement for clarity.
What is an IP Assignment?
In the case of an assignment, the assignor transfers the full title and ownership of the copyright or trademark to the assignee. Assignment is comparable to the sale of real estate in that the sale - once made - is final and cannot be revoked. The assignor loses all their previous rights to the IP since they are no longer the legal owners. For this reason an assignment would generally be a lot more expensive than the acquisition of a licence.
Assignments are commonly used to purchase the IP of commissioned creative work, such as a logo designed by a graphic designer, or a piece of software designed by a software developer for a client. Whilst most assignments will cover international IP rights, some IP may have territorial restrictions which are worth considering before entering into the contract.
Under UK IP law, an assignment is always required to be in writing and signed by the assignor. The assignment is usually written in the form of a deed and will need to precisely detail the IP being assigned.
Registering an Assignment or License
Not all IP requires registration, although some types do. Copyright exists automatically upon the creation of the work and lasts for the lifetime of the owner, whether or not registered. Trademarks, on the other hand, must be registered. Patents also have strict registration requirements, whilst design rights are more flexible.
Neither assignments nor licences are required to be registered, although it is advisable to do so. The assignment or licence will still be legally binding without registration, but if there is a later dispute, the original licence or assignment will not necessarily protect the assignee if it remains unregistered. Before purchasing a license or assignment, it is also important to ensure that the IP itself has been properly registered, to ensure your rights are properly covered.
Effect of Brexit
Prior to Brexit – and for the remainder of the implementation period – the UK is subject to European IP law. It is as yet unconfirmed how IP rights may be affected in the future, although it is likely that protection and enforcement for registered IP owners will remain largely unchanged. Due to the uncertainty of the situation, ensuring your rights are clarified and that any transactions are properly registered now could help to avoid any potential doubt post-Brexit.
Get in touch for help with your assignment or licence
Although the fundamental difference between Assignment and License of IP Rights is a clear cut one, each process can be highly technical and vary widely, depending on the requirements of both parties. If you would like help or advice on either an assignment or licence of IP rights, please do get in touch with one of our lawyers for expert, affordable legal advice .
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