IP Tech Knowledgy

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Look Closely at Patent Assignments

Form patent assignments may seem complete and standard, but be sure they provide all of the necessary rights and assurances. If the patent being assigned has existed for a while, it likely has been incorporated into a product or device, and the seller should indemnify the buyer against any liability arising from products manufactured or licensed prior to the transfer date that relate to the patent. If royalties and payments are due from third parties based on the patents, the buyer should be sure to assign rights in the underlying licenses, and confirm that the licensees do not have a way to get out of the license or avoid payments. A buyer should also obtain representations and warranties that there are no liens or encumbrances on the patents, and there are no known infringements by or on the transferring patents. If the warranties are qualified as being made “to the knowledge” of the company or a particular officer, be sure it is someone who should know all aspects of the business. Do not accept standard assignments without thinking of the particulars of your transaction.

Ned T. Himmelrich
410-576-4171 • nhimmelrich@gfrlaw.com