Registered Design Assignment

Registered designs can be important business assets, particularly for businesses involved in inventive or creative work. Like other assets, they can be sold outright by assignment or licensed on agreed terms.

Under Section 15B(3) of the Registered Designs Act 1949, a registered design assignment must be in writing and signed by, or on behalf of, the assignor.

This Registered Design Assignment is designed to transfer ownership of one or more registered designs.

Registered design assignment formalities

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

• Form DF12A should be submitted to the Intellectual Property Office as soon as reasonably possible after the assignment is completed;
• evidence of the transaction, such as the assignment agreement, should be submitted with the form; and
• Form DF12A and related design forms are available from the Intellectual Property Office website.

Single or multiple registered design transfers

The assignment can cover a single registered design or multiple registered designs. The design or designs 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 registered design or designs can be identified from the schedule alone, without needing to rely on separate documents.

Assignor undertakings and warranties

The template includes undertakings from the assignor, including assistance with practical and legal matters relating to the assigned designs.

It also includes warranties addressing the validity of the assignment and providing reassurance for the assignee.

Key commercial protections in the assignment

The assignment also covers related commercial and contractual points, including:

• payment for the assignment;
• proceedings relating to the registered designs;
• indemnity protection;
• assignment of the agreement; and
• notices, force majeure, severance, and law and jurisdiction.

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