A purchaser may acquire a target that owns patents and/or trademarks, either applied for or registered. Those intellectual property assets are typically a valuable part of the acquisition. The description of the patent and/or trademark being assigned to the purchaser must be broad and complete. An identification of the patent and/or trademark by name and serial number, although required, is not sufficient. In addition to the identification of the specific patent/trademark being acquired, the assignment language should include the following:
- For patents, a reference to “continuations and continuations-in-part”;
- For trademarks, “common law rights” (those rights that are in addition to statutory rights);
- The right to all claims and causes of action to recover damages, royalties, profits and other relief; and
- The right to apply for and obtain the benefit of any international agreements between the United States and any foreign country governing patents and trademarks.
By making sure that the IP assignment clause is broad and complete, a purchaser can assure that it is acquiring all rights in the IP assets that the seller owns.
ABOUT GLENN D. SOLOMON
email@example.com | 443-738-1522
Glenn D. Solomon is a principal at Offit Kurman and has provided counsel to businesses and business owners for more than twenty-five years. He has extensive experience in the purchase and sale of businesses, structuring ownership agreements, and advising companies in financial distress.
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