Patent Assignment

Patents can be valuable business assets and may be sold outright by assignment or licensed on agreed terms. Under Section 30(6)(a) of the Patents Act 1977, a patent assignment must be in writing and signed by, or on behalf of, the assignor.

This Patent Assignment is designed to transfer ownership of one or more patents. It can also be used to assign other intellectual property rights where required.

Patent assignment formalities and IPO registration

The agreement records the transfer between the assignor and assignee, but further registration formalities are also required.

• Patents Form 21 should be submitted to the Intellectual Property Office as soon as reasonably possible after completion.
• The form must be submitted no later than six months after the assignment is completed.
• The applicable IPO fee should be submitted with the form.

Form 21 and related patent forms are available from the Intellectual Property Office website.

Single or multiple patent transfers

The assignment can cover a single patent or multiple patents. The patents being assigned are identified in a schedule, so the schedule must be completed with care.

Full and complete details should be included so that the assigned patent or patents can be identified from the schedule alone, without needing to rely on separate documents.

Key protections in the Patent Assignment

The template includes practical protections for the assignee, including:

• undertakings from the assignor to assist with practical and legal matters relating to the assigned patents;
• warranties addressing the validity of the assignment;
• provisions dealing with payment, proceedings and indemnity; and
• standard contractual provisions covering notices, force majeure, and law and jurisdiction.

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