Assignment (cession)

An assignment of intellectual property rights is the act by which the owner of a patent, a trade mark, a design, software or a work transfers ownership of its rights to a third party, in whole or in part. It differs from a licence, which leaves ownership with the licensor and grants only a right of exploitation. Assignments are subject to rules specific to each right, in addition to the general law of sale.

Formalities by type of right

The assignment of a patent or a trade mark must be recorded in writing on pain of nullity and entered in the corresponding national register to be enforceable against third parties. The assignment of a design is subject to the same recordal requirement. The assignment of copyright follows formalities protective of the author: each assigned right must be mentioned separately, with its scope, purpose, territory and duration, and a blanket assignment of future works is void. Finally, the economic rights in software created by employees vest in the employer by operation of law, without any assignment.

Essential clauses

The contract precisely identifies the assigned rights, their territory and duration, sets the price and organises the assignor’s warranties: existence and ownership of the rights, absence of undisclosed encumbrances, licences or disputes, absence of infringement of third party rights. A warranty of validity of the title must be expressly stipulated. The contract also settles the conduct of pending infringement actions, the assignor’s cooperation in later proceedings and, for creative works, respect for moral rights, which are inalienable.

Key points

In practice, assignments of intellectual property rights occur in asset transfers, restructurings, mergers and acquisitions and supplier-client relationships. A prior audit of ownership and validity avoids unpleasant surprises. The firm drafts such contracts and handles the resulting disputes, as presented on its contracts page and in the entries on the patent assignment contract and the trade mark assignment contract.