Confirmatory assignment playbook

The definitions in this agreement are specifically drafted to assign legal entitlement to certain IP rights. They should not be amended without expert legal advice.

Assigned IP section (detailed in the Schedule) should be carefully and accurately drafted to give absolute clarity on the rights being assigned.

Ideally, TTOs should ensure that these match (or are broader than) the rights granted in any commercialisation agreement.

Patent / patent application details should be added in the Schedule if patent rights are being assigned.

See separate section on drafting Schedules.

This clause starts off with the consideration which is required to make this a legally binding contract. This is drafted at a nominal consideration of £1, which by completing the agreement, is deemed to have been received by the Researcher.

The second part of the Assignment clause is where the researcher assigns all their rights, title and interest in the IP to the University, which the University accepts.

The assignment being made with “full title guarantee” means that the person assigning the IP to University legally promises:

• That they have the right to dispose of the IP being assigned
• That they will do all they reasonably can do, at their own cost, to give the University the title to the IP

That the IP is free from all charges, encumbrances and third-party rights (other than those which they do not and could not reasonably be expected to know about).

This clause sets out in some detail and specifies certain rights that are being assigned, many of which are particular to the type(s) of intellectual property being assigned.

Sub-clauses (a)-(c) relate specifically to rights associated with patents or patent applications. They cover future patents that might be granted based on the assigned rights, which will usually be a patent application (i.e. not granted) and other patents granted in other territories based on the assigned rights. This is important to ensure that the whole potential future patent family based on the assigned rights is covered and may prevent additional agreements to properly effect the assignment being needed in future. It also includes subsequent extensions and continuations.

Sub-clause b) ensures the University has the authority to apply for any such future filings

Sub-clauses b) and c) cover the assignment of priority rights.

Sub-clause (d) sweeps up any unregistered intellectual property that might be listed in the Schedule.

Sub-clause (e) relates to any copyright which might be assigned, it covers future copyrights and any similar rights that might exist elsewhere in the world (copyright laws vary by territory).

Sub-clauses e) and f) pertain to know-how and materials, respectively.

The researcher is agreeing to execute future documents or give future assistance that might be needed by the University to do a number of things, many of which may be important in future to uphold or maintain the rights being assigned. This in turn will be important to the licensee/assignee who may benefit from this assignment. The University agrees to meet the costs of any expenses incurred in doing so.

The sub-clauses then specify the types of documents that might need signing, or support that might be needed.

1. Various documents, in particular formal patent assignments, declarations or powers of attorney that might be required by overseas patent offices. US is a very common territory, and these documents are routinely required.
2. Any document that may be required to uphold the University’s (or it’s assignee’s) rights to the IP.

It is important that inventors or originators are able to answer questions that relate to IP. For example, if there are questions about the IP and how it arose. Universities may well have records to answer some of these, but being able to ask the originator is important. This could come about during investor or licensee due diligence, or during a formal challenge to the validity of the IPR. This support could also be needed to help the University navigate examination procedures and responses, where their technical expertise is often crucial

This is an optional clause and, if used, will require the Assignment to be executed as a deed. The Confirmatory Assignment template does not provide for execution as a deed and further advice should be sought.

Power of attorney provision will grant the University the authority to act on behalf of the researcher in legal matters to enable the University to obtain the full benefit of the Assignment. This can be useful if it will be difficult to contact the researcher in the future.

The University or its licensee/assignee may be required to register for this assignment to demonstrate entitlement at the various national IP registers. Often this is done via specifically drafted assignments.

There are specific rights associated with copyright that need to be considered when entering into a confirmatory assignment of certain copyright materials. Copyright commercialisation involves exercising economic rights, such as to permit third party to copy, distribute copies, adapt, perform, etc.  When assigning copyright, it is essential to consider two related rights – neighbouring rights and moral rights.

Neighbouring rights, whilst similar to economic rights, apply specifically to contributors of certain kinds of works, such as performer of a show or producer of a film.  When preparing a confirmatory assignment, it is important to ensure that the original assignment covers those rights, particularly if the intended commercial exploitation includes activities like streaming or broadcasting films or on-stage shows. Further advice may be prudent in these cases.

Moral rights cannot be transferred in any way but may be waived. Moral rights include rights to:

1. be identified: the originator / author can require his / her / their name be mentioned when exploiting the copyright;
2. object derogatory treatment by third parties (including assignees and licensees): for example, a painting is commercially printed on paper or with ink quality of which is unsatisfactory to the author, who then can object treating the copyrighted work in such way, halting the commercial activities; and
3. privacy in certain films and pictures: people who are captured in films, pictures or similar media can request to remove his / her / their image from such media.

In order for the University to freely deal with the IP in question, it will expect that moral rights in the same will be waived – this prevents the possibility of any legal challenges on the grounds above.

This is an optional clause to refer to the University’s relevant policies on distribution of revenues attributable to exploitation of the IP being assigned.

The Researcher warrants that he / she has every right to assign, clarifying the assigned IP is not encumbered (e.g., already licensed to third party).

Assignor also to warrant he / she has made full disclosure to the University, including all creators or inventors of the IP that he / she is aware of.

The University is confirming acknowledgement that the assignee is not warranting or guaranteeing that the IP being assigned is valid or that is not infringing anyone else’s IP.

This is a reasonable position to take as the assignor is unlikely to be in a position to undertake freedom to operate searches. It also acknowledges that the researcher hasn’t undertaken any searches.

General: this section deals with provisions that are found in most  agreements:

Interpretation: this clause sets out the context of the agreement and defines the meaning of certain words or provisions in the agreement. This is to establish a common understanding of the agreement by all parties entering into it.

No time limit: this clause establishes that obligations contained in the assignment will continue without any time limit.

Exclusion of third-party rights: this means that the terms of this assignment are only between the contractual parties. No other third parties, unless specified, have the right to enforce the agreement, e.g. for damages or claims on performance of the agreement.

Notices: This clause covers how the parties, in this case the university and the inventor(s)/originator(s), will inform each other when exercising any rights under the assignment. For example, this could be when any issues arise, such as potential breach of the agreement. The notice provision will provide relevant contact details for each side, which can include any legal representatives, as well as how the notices will be delivered, for example in written form delivered by post or by email.

In some instances, there may be consequences for failure to provide up to date contact information or to respond to correspondence, for example, revenue sharing schemes may be forfeited in such instances depending on the conditions of the Notices clause.

TTOs should work with originators/inventors to make sure that all Schedules are correctly completed and to the best of their knowledge.

For patents and patent applications, provide complete details of: title of the patent; full names of the inventors; patent application number (if any); date filed; publication number (if any); date granted (if any). It can also be useful to include the relevant TTO project reference number.

For copyrights, designs and database rights insert detailed description of these works. Also, insert the date of creation of these works, version number (if appropriate), and the location of the master copy.

For know-how, insert a reasonably detailed description of any specific know-how to be included so that it clear what is subject to the assignment, and explain where a master copy can be found. If you intend to include know-how in the commercialisation deal then the assignment should ideally match, or be broader, than the licensed know-how.

The legal assignment of know-how can be a complicated area – if the items being assigned contain either a significant amount or a particularly pivotal piece of know-how, it is advisable to speak to your TTO or legal team to ensure that provisions specific to your situation are in place.

For materials, insert precise and detailed description of any materials to be included in the Assignment Document. If these have been published then you could name the materials and provide a reference to the journal article.

Materials will be any physical property that is being assigned, as opposed to the intellectual property rights contained in the Materials. For example, where a set of physically printed scholarly works is being assigned, and they are not available elsewhere in electronic format, it would be important to assign not only the copyright and other IP in those works, but the physical materials themselves.