Legal Blog

M&A Nugget: IP Assignment- Make Them Complete

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:

  1. For patents, a reference to “continuations and continuations-in-part”;
  2. For trademarks, “common law rights” (those rights that are in addition to statutory rights);
  3. The right to all claims and causes of action to recover damages, royalties, profits and other relief; and
  4. 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.

 

 

 

If you have any questions about this or any other M&A issue,
please contact Glenn Solomon at gsolomon@offitkurman.com or 443-738-1522.

 

ABOUT GLENN D. SOLOMON

gsolomon@offitkurman.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.

 

 

 

 

 

 

 

ABOUT OFFIT KURMAN

Offit Kurman is one of the fastest-growing, full-service law firms in the Mid-Atlantic region. With over 130 attorneys offering a comprehensive range of services in virtually every legal category, the firm is well positioned to meet the needs of dynamic businesses and the people who own and operate them. Our ten offices serve individual and corporate clients in the Maryland, Delaware, New Jersey, and Northern Virginia markets, as well as the Washington DC, Baltimore, Philadelphia, and New York City metropolitan areas. At Offit Kurman, we are our clients’ most trusted legal advisors, professionals who help maximize and protect business value and personal wealth. In every interaction, we consistently maintain our clients’ confidence by remaining focused on furthering their objectives and achieving their goals in an efficient manner. Trust, knowledge, confidence—in a partner, that’s perfect.

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