WHEREAS, __________________, a __________ ("Assignor"), has made the invention described in the United States patent application entitled ____________, executed by Assignor on the same date as, or on a date prior to, this Assignment, having Attorney Docket No. ___ ("Patent Application");
WHEREAS, Assignor may own certain additional rights in and to the intellectual property and invention(s) described in the Patent Application, including software, methods, and intellectual property protectable as copyrights, trade secrets, trademarks and/or other intellectual property rights, hereinafter described as "Works";
WHEREAS, ________, a corporation organized and existing under the laws of the State of ___________, having a place of business at ___________________________________, USA, hereinafter called the "Assignee", wishes to acquire all of Assignor's rights, title and interest in and to the Works and all intellectual property of the Works, including the copyrights therein and any and all renewals and extensions thereof, the entire right, title and interest in and to the invention and the Patent Application identified above, all patents which may be obtained for such invention, and any trade secrets or other intellectual property in the Works as set forth below;
NOW THEREFORE, in consideration of the sum of ______________________________, the receipt and sufficiency of which is hereby acknowledged, Assignor does hereby assign, transfer and set over to Assignee, its successors and assigns, free and clear of all liens, claims and encumbrances, all of Assignor's right, title and interest of any kind and nature for the entire world in and to the Works and to all intellectual property in the Works, including all copyrights therein, and any and all renewals and extensions thereof under applicable law, including derivative works thereof, which includes any modification, adaptation, enhancement, translation or combination of software source code that, in the absence of this Agreement or other authorization from Assignor or its licensors, would constitute infringement under applicable law, and including the entire right, title, and interest in and to said invention and all patent applications and patents defined above, and any patents that may issue for said invention in the United States, together with the entire right, title and interest in and to said invention and all patent applications and patents issuing therefrom in all countries foreign to the United States, including the full right for any such application all benefits and priority rights under any applicable convention, together with the entire right, title, and interest in and to all continuations, divisions, renewals, and extensions of any of the patent applications and patents defined above, and any patent application claiming priority to the patents and patent applications defined above, including all related non-provisional, international, and national phase applications, and the right, title, and interest to any other intellectual property in the Works, including any trade secrets, know-how, confidential information, trademarks, and goodwill in the Works; together with all causes of action for infringement and the right to sue therefor and the right to recover all damages, including, but not limited to, a reasonable royalty, by reason of past, present, or future infringement or misappropriation or any other violation of patent, patent application, copyright, or other intellectual property rights in the Works and invention described above; to have and to hold for the sole and exclusive use and benefit of the Assignee, its successors and assigns, to the full end of the term or terms for all such patents, copyrights, and all other intellectual property.
The Assignor is hereby assigned the right to create, or have created, derivative works of the Works, including any modifications, adaptation, enhancement, translation or combination of software source code that, in the absence of this Agreement or other authorization from Assignor or its licensors, would constitute infringement under applicable law, and Assignee is hereby assigned and transferred the ownership of any current or future derivative works of the Works.
The Assignor hereby covenants and agrees, for both the Assignor and the Assignor's legal representatives, that the Assignor will assist the Assignee in the prosecution of the patent application identified above; in the making and prosecution of any other patent applications or other intellectual property rights that the Assignee may elect to make covering the invention or intellectual property identified above; in vesting in the Assignee like exclusive title in and to all such other patent applications and patents; and in the prosecution of any interference which may arise involving said invention, or any such patent application or patent; and that the Assignor will execute and deliver to the Assignee any and all additional papers which may be requested by the Assignee to carry out the terms of this Assignment.
The Commissioner of Patents and Trademarks is hereby authorized and requested to issue patents to the Assignee in accordance with the terms of this Assignment.
IN WITNESS WHEREOF, the Parties hereto have caused this Agreement to be executed by their respective duly authorized officers, and have duly delivered and executed this Agreement under seal as of the date first set forth above.
This Assignment is made effective as of ______________, 20____.
"Assignor"
Signature:____________________________ Printed:____________________________
Title:_________________________________ Date:______________________________
STATE OF _________________)
___________________________) ss.
COUNTY OF ______________)
I, _____________________________________, a Notary Public in and for the County and State aforesaid, do hereby certify that [name of person signing], personally known to me to be the same person whose name is subscribed to the foregoing instrument, appeared before me this day in person and acknowledged that (s)he signed, sealed and delivered the said instrument as his/her free and voluntary act for the uses and purposes therein set forth.
IN WITNESS WHEREOF, I have hereunto set my hand and Notarial Seal, this
_______ day of ______________________, 2_______.
Notary Public: ____________________________
My Commission Expires: ___________________
"Assignee"
Signature:____________________________ Printed:____________________________
Title:_________________________________ Date:______________________________
STATE OF _________________)
___________________________) ss.
COUNTY OF ______________)
I, _____________________________________, a Notary Public in and for the County and State aforesaid, do hereby certify that [name of person signing], personally known to me to be the same person whose name is subscribed to the foregoing instrument, appeared before me this day in person and acknowledged that (s)he signed, sealed and delivered the said instrument as his/her free and voluntary act for the uses and purposes therein set forth.
IN WITNESS WHEREOF, I have hereunto set my hand and Notarial Seal, this
_______ day of ______________________, 2_______.
Notary Public: ____________________________
My Commission Expires: ___________________
