The Assignment Of Invention Agreement is a crucial legal document used in New Zealand when transferring ownership rights in an invention from one party to another. This document is particularly important in commercial, research, and employment contexts where inventions need to be legally transferred to companies, institutions, or other entities. It ensures compliance with New Zealand's Patents Act 2013 and other relevant legislation while providing comprehensive protection for both assignor and assignee. The agreement typically includes detailed descriptions of the invention, terms of transfer, warranties about ownership and non-infringement, and provisions for future cooperation in patent prosecution or enforcement. It's commonly used in situations involving employee inventions, commercial transfers, or research collaboration outcomes.
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1. Parties: Identifies and provides full details of the Assignor and Assignee
2. Background: Establishes context, including the Assignor's ownership of the invention and the parties' intention to transfer rights
3. Definitions: Defines key terms used throughout the agreement, including 'Invention', 'Intellectual Property Rights', and 'Assignment Date'
4. Assignment: Core provision transferring all rights, title, and interest in the invention from Assignor to Assignee
5. Consideration: Specifies the payment or other consideration for the assignment
6. Representations and Warranties: Assignor's warranties regarding ownership, right to assign, and non-infringement
7. Further Assurance: Obligations to execute additional documents and assist with patent applications or proceedings
8. Confidentiality: Obligations to maintain confidentiality of invention details and agreement terms
9. Governing Law and Jurisdiction: Specifies New Zealand law as governing law and jurisdiction for disputes
1. Moral Rights: Required when the invention includes copyrightable elements, addressing waiver or assertion of moral rights
2. Third Party Rights: Include when other parties may have rights or interests in the invention
3. Tax Provisions: Include when the assignment has significant tax implications or requires specific tax treatment
4. Security Interest: Include when payment is in installments or there are security arrangements
5. Employee Obligations: Include when the inventor is an employee and continuing obligations need to be addressed
6. Improvements: Include when future improvements to the invention should also be covered by the assignment
1. Schedule 1 - Invention Description: Detailed technical description of the invention, including any patent applications or grants
2. Schedule 2 - Payment Terms: Detailed breakdown of consideration and payment schedule, if applicable
3. Schedule 3 - Related Rights: List of related intellectual property rights, such as designs or copyright works
4. Appendix A - Patent Documentation: Copies of patent applications, grants, or other relevant patent office documentation
5. Appendix B - Technical Documentation: Technical drawings, specifications, and other supporting documentation
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