Designs form an important part of the intellectual property portfolios of many businesses, particularly those engaged in inventive or creative pursuits. In common with other assets, registered designs can be sold in their entirety (assigned) or licensed, subject to whatever terms and conditions the parties may wish to agree upon. Under Section 15B(3) of the
Registered Designs Act 1949, if a registered design is assigned, the assignment must be done in writing and must be signed by, or on behalf of the assignor.
This
Registered Design Assignment provides for the
transfer of registered design ownership. The terms of this
registered design assignment agreement allow for the assignment of a single design or multiple designs.
When
assigning a registered design, certain formalities in addition to the agreement itself must be observed. As soon as is reasonably possible after the
assignment of the registered design is complete, a Form DF12A must be completed and submitted to the Intellectual Property Office along with evidence of the transaction (this assignment agreement, for example). Form DF12A and all other
designs forms are available from the
Intellectual Property Office website.
A number of undertakings on the part of the assignor are provided for in this
assignment, including the obligation to assist the assignee in practical and legal matters relating to the assigned designs. Warranties are also provided, ensuring the validity of the assignment and providing reassurance for the assignee.
The registered designs are referenced in the document and must be defined in a schedule. Great care should be taken when completing the schedule. Full and complete details of the design(s) to be assigned should be included to the extent that it should be possible to obtain all information necessary concerning the design(s) relevant to the assignment from the schedule alone without further reference to additional documents.
Optional phrases / clauses are enclosed in square brackets. These should be read carefully and selected so as to be compatible with one another. Unused options should be removed from the document.
This
Registered Design Assignment contains the following clauses:
1. Definitions and Interpretation
2. Assignment
3. Fee and Payment
4. Proceedings
5. Further Assistance
6. Assignor’s Warranties
7. Assignee’s Warranties
8. Indemnity
9. Assignment of Agreement
10. Notices
11. Force Majeure
12. No Waiver
13. Severance
14. Law and Jurisdiction
And the following schedule:
1. The Design(s)
This
Registered Design Assignment is in open format. Either enter the requisite details in the highlighted fields or adjust the wording to suit your purposes.
Once you have purchased access to the appropriate document folder click on the “Download Document” button below. You will be asked what you want to do with the file. It is recommended that you save the document to a location of your choice prior to viewing.