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Assignment of Intellectual Property Rights

This article is intended to facilitate a basic understanding of intellectual property (which will be referred to as IP throughout this article) and some of the most pertinent aspects to look out for when drafting or reviewing an assignment agreement.

Intellectual property is created all the time, whether in business or your personal life, and can stem from Copyright, for example, which is the most frequent, and typically exists in original artistic work, from drawings and songs, to articles, like this one. Copyright exists automatically upon creation, and lasts for the lifetime of the author, plus 70 years from the end of the year of their death.

Trademarks are another form of IP, and are typically used to distinguish the names and logos of one business from another, but can extend to associated sounds, like jingles and tunes, and even a smell. Trademarks exist automatically, but need to be registered in the UK, and then internationally to offer the monopolistic protection needed worldwide.

Patents are something that protect the functionality of an invention, like a mechanism in a machine, but has strict registration requirements. For example, it must be new, inventive, and capable of industrial application. It must also not be excluded from protection, like a scientific theory, artistic work, a process of doing something, or a presentation of information.

Design Rights

Design Rights are something similar to Patents, but their registration requirements are far less stringent. In fact, like a lot of IP, they can exist automatically, and are more applicable to shape and configuration. Essentially, Design Rights are used when a Patent cannot be. Interestingly, it’s important to note that domain name registrations are not normally classed as IP, but are typically dealt with under assignment agreements.

Most common types of assignment

Now that we’ve covered the absolute basics of the different types of IP, let’s look at one of the most common scenarios of a transfer of IP for small businesses. This can exist when the assignee (the body receiving the IP) has instructed the assignor (the body who creates the IP) to create something capable of attracting IP rights, such as a graphic designer working on a logo, for a fee. As this is an artistic design, it would be classed as Copyright. Most transfers of IP should be embodied in a carefully worded contract, or a deed (we’ll get on to this later) and should expressly refer to the type of IP to be assigned on the face of it. Moreover, it should also be used to assign any IP associated with any asset purchased from another business, like a unique machine, which may carry a Patent, or a Design Right. The agreement must then expressly refer to that asset purchase agreement. 

What exactly are you assigning?

Be clear about exactly what different types of IP are being assigned, and make reference to the schedules that will set them out in full. These schedules will feature at the end of the agreement, so we’ll go over these in more detail later on. 

Who are the parties?

Ensure the agreement also clearly identifies all parties to the agreement who currently hold rights, and all those to which the rights will be transferred, so consider joint ownership in both instances. Also, the section under the heading ‘background’, whilst important for clarity, is only a prelude and not legally binding, so any fundamental aspects must be clearly set out in relevant clauses and subsections. 

What about Brexit?

Also, in lieu of Brexit, although the outcomes are generally uncertain, when it comes to IP, it is likely that statutory instruments will ensure that protection and enforcement between registered right holders in the UK and EU, and vice versa, remains unchanged. However, to avoid uncertainty, anything relating to the interpretation of definitions, and particularly statute, should be ‘as at the date’, instead of ‘from time to time’, to avoid unanticipated rights and obligations in the future. 

And the rest of the world..?

Whilst on the topic of Brexit, although many assignment agreements should cover IP rights worldwide, it’s important to look into the requirements of the jurisdiction of a particular country, should you or the other party intend using the IP outside of the UK, and particularly outside of the EU. 

Know what you’re dealing with

Beware of any trusts or other covenants attached to the IP rights on assignments. ‘Full title guarantee’ will ensure the IP rights are free of adverse encumbrances (to the assignor’s reasonable knowledge). On the other hand, ‘limited title guarantee’ will mean that, although the assignee is free to sell, the assignor can only guarantee that no encumbrances have been made within their period of ownership, but not before, even if they are aware of prior encumbrances. 

You got a licence for that..?

Following on, although this article primarily concerns assignments of IP, it’s also important to acknowledge licences, and how they relate to assignments, as it may be the case that the assignee or assignor to be, actually holds the IP rights under a licence, which excludes assignments. It is therefore important that when granting assignments or licences, close consideration is given to the extended rights to third parties that the ability to licence IP can create. 

What about tech?

Coming back to an assignment of Copyright, which, if not the sole purpose of the agreement, will likely form a large part of it, it is important to note that in this growing age of technology, Copyright is the primary category of computer software and databases. Also, if databases include personal data, it is also important to include warranties that best practice for data protection is observed. 

All together now

Moving on to Design Rights, it’s important to note that these, whether registered, unregistered, or partial, if they relate to the same material, they cannot be assigned separately. 

Registered or unregistered?

When it comes to Trademarks, do not underestimate the distinction between registered and unregistered Trademarks, as one of the main purposes of registration is to deter passing-off (the act of a third party using the Trademark, typically to benefit from the associated goodwill without the authority of the rights holder) and to make the process of achieving a remedy against the third party simple and inexpensive, as the opposite can be said for remedies under unregistered Design Rights, as goodwill is more intangible and abstract. It is therefore important to note that all IP capable of subsisting unregistered, should ideally be registered prior to assignment, or that the assignment at least includes the goodwill, as this is the only value in an unregistered Trademark. Whilst this article does not cover registration processes, these can be found on the relevant government website pages – links to which can be found below:

Patenting Your Invention (UK Government Website)

Registering Design Rights (UK Government Website)

Apply to Register a Trademark (UK Government Website)

Automatic right to sue..?

Once the assignee is the rights holder, they of course have the right to sue for infringement. However, the right to sue for infringements prior to their assignment must be expressly provided for in the agreement. 

Contract or deed?

In establishing whether the assignment document should be a contract or a deed, whilst a simple contract will suffice in any instance where the assignment is for consideration (i.e. a fee is paid), if no consideration is given, or there is a power of attorney granted by the assignor for the assignee to deal with an element of the IP rights on the assignor’s behalf (such as executing registration documents to give full effect to the agreement), then the agreement must be a deed, meaning that it must clearly be stated as such, and be signed in the presence of witnesses, who attest the signatures. 

Consideration

If the agreement is to be a contract, and the assignment attracts a fee, then firstly, any VAT must be clearly set out as being separate from the amount payable for the IP rights. Secondly, even if there is an element of consideration, to avoid any future disputes over proportionality, a deed would be highly advisable – not least for this purpose, but also because adding a power of attorney would prevent the need for enforcement action against the assignor for any further assistance required from them. If, however, further assistance is nevertheless needed, or document execution is anticipated to be an expense the assignee cannot justify, then a clause must be added to bind the assignor to provide future assistance at their expense.

Unlike many contractual arrangements, the furthest extent liability can be excluded for the assignor includes death and personal injury, which can be applied generally to IP, but is especially applicable for patents for machinery, for example. 

The importance of schedules

Returning to the need for schedules at the end of the agreement, Patents, Trademarks, and Design Rights, would each be listed in separate schedules. Assignment of particular materials, like specific documents and physical items, would be classed as Copyright and unregistered Design Rights, and require their own schedule. There may also be other unregistered rights, like domain names, which, as touched on earlier, are not classed as IP, but can be just as important to expressly assign, and can include confidential information, like trade secrets and financials, or rights in get-up (the whole appearance), goodwill (reputation), and know-how (which is especially important to be transferred under a written document, as both equitable and statutory requirements necessitate this) and should be listed in a separate schedule. 

You’re almost there…

Once the agreement has been executed, it is imperative that the assignee registers as the new rights holder. 

If you’re in need of some additional guidance with drafting or reviewing an assignment agreement, or you need some IP advice generally, then we’d be happy to help, so feel free to contact us for a free 30 minute consultation . Alternatively, you can submit your queries to us by commenting on our Topic of the Week post on LinkedIn.

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Equitable Assignment: Everything You Need to Know

An equitable assignment is one that does not fulfill the statutory criteria for a legal assignment, but is binding and upheld by the courts in the interest of equability, justice, and fairness. 3 min read updated on February 01, 2023

An equitable assignment is one that does not fulfill the statutory criteria for a legal assignment, but is binding and upheld by the courts in the interest of equability, justice, and fairness.

Equitable Assignment

An equitable assignment may not appear to be self-evident by the law's standard, but it presents the assignee with a title that is protected and recognized in equity. It's based on the essence of a declaration of trust; specifically, essential fairness and natural justice. As long as there is valuable consideration involved, it does not matter if a formal agreement is signed. There needs to be some sort of intent displayed from one party to assign and the other party to receive.

The evaluation of a righteous equitable assignment is completed by determining if a debtor would rationally pay the debt to another party alleging to be the assignee. Equitable assignments can be created by:

• The assignor informing the assignee that they transferred a right to them
• The assignor instructing the other party to release their obligation from the assignee and place it instead on the assignor

The only part of an agreement that can be assigned is the benefit. Generally speaking, there is no prerequisite for the written notice to be received or given. The significant characteristic that separates an equitable assignment from a legal assignment is that most of the time, an equitable assignee may not take action against a third party. Instead, it must rely on the guidelines governing equitable assignments. In other words, the equitable assignee must team up with the assignor to take action.

The Doctrine of Equitable Assignment in Wisconsin

In Dow Family LLC v. PHH Mortgage Corp ., the Wisconsin Supreme Court issued in favor of the doctrine of equitable assignment. The case was similar to many other foreclosure cases, except this one came with a twist. Essentially, Dow Family LLC purchased a property and the property owner insisted the mortgage on the property had been paid off. However, in actuality, it wasn't. 

Prior to the sale, the mortgage on the property was with PHH Mortgage Corp. When PHH went to foreclose on the mortgage, Dow Family LLC contested it. There was one specific rebuttal that caught the attention of the Wisconsin Supreme Court. The official mortgage on record was with MERS, an appointee for the original lender, U.S. Bank.

Dow argued that PHH couldn't foreclose on the property because the true owner was MERS. Essentially, Dow was stating that the mortgage was never assigned to PHH. Based on this argument, PHH utilized the doctrine of equitable assignment.

Based on a case from 1859, Croft v. Bunster, the court determined that the security for a note is equitably assigned when the note is assigned without a need for an independent, written assignment. Additionally, Dow contended that the statute of frauds prohibits the utilization of the doctrine, mainly because it claimed every assignment on a property must be formally recorded.

During the case, Dow argued that the MERS system, which stored the data regarding the mortgage, was fundamentally flawed. According to the court, the statute of frauds was satisfied because the equitable assignment was in accordance with the operation of law. Most importantly, the court avoided all consideration regarding the MERS system, concluding it was not significant in their decision. 

The outcome was a major win for lenders, as they were relying on the doctrine specifically for these types of circumstances.

Most experts agree that this outcome makes sense in the current mortgage-lending environment. This is due to the fact that it is still quite common for mortgages to be bundled up into mortgage-backed securities and sold on the secondary market.

Many economists claim that by not requiring mortgages to be recorded each time a transfer is completed, the loans are more easily marketed to investors. Additionally, debtors know who their current mortgage company is because the new lender must always notify the current borrower in order to receive payment. It was determined that recording and documenting the mortgage merely provides a signal to the rest of the world that the property owner secures a debt.

If you need help with an equitable assignment, you can  post your job  on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.

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Content Approved by UpCounsel

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• The Murky World of the IP Assignment

3 comments:

Under IP laws the assignment has not taken place. The equitable assignment has value under contract law and may give valid claims to royalties for example. There have been a few cases covering these issues, though I can't think of specifics right now, partly because it has been a long day. Such contracts MUST be avoided and usually exist because patent attorneys have not been involved in the writing of the contract. IP rights are frequently a vague add-on rather than being covered by the essential clear and well-defined clauses. Not only must all assignments of existing IP be clear (as to their scope) and specifically made, but so too must all future IP. I have had to deal with vague open-ended assignments of future IP, which leave one side in a very difficult position.

Let's hear it for more IP lawyer involvement in transactional work -- I would say that the main agreement is the assignment of the rights. Without the exhibits I don't think that there's any argument, under U.S. law anyway, that there was not a present assignment of rights with your sample language. The scope of the rights would be construed based on the four corners of the main agreement, although it then gets sticky when, as you point out happens, the IP assignments, which are exhibits, aren't consistent with the main agreement. I find it happens most often with unregistered trademarks - the main agreement may say just "trademarks," or perhaps even mention unregistered trademarks specifically, but those are NEVER listed on the schedules or assignment exhibits. Perhaps the answer is not to have exhibits? Or to state that the exhibits are sample agreements only?

The following arrangement works well for registered IP rights. Draft the main agreement so that it is clearly just an agreement to assign and clearly not an assignment. Then draw up one short form assignment for each right type (patents/trademarks/design) for each official register. The latter usually means per country but, for example EP patent applications go on the EPO assignment whereas the national parts of a granted EP go on the assignments for the DE,FR,GB,IT... national registers. If you have time ahead of execution send the wording of the short form assignments to local patent attorneys, who as necessary will suggest that both parties should sign, make remarks about stamp duty, notarisation, legalisation, translations requirements (or even translate your text so that the signed assignment will be in the local language) and so on. This arrangement avoids having to provide to the patent office extracts of the main agreement having to be provided to the local offices (which costs since the whole agreement may have to be read to do that in a non-distoring way and sensitivities of the parties to clauses appearing on the register may have to be discovered), some costs of translation, and allows the separate short form assignments to proceed along their sometimes tortuous paths (e.g. notarisation, legalisation, making certified copies subission and return from the patent office) in parallel rather than in series. When there is the chance I always suggest this approach, but it is not as common as it might be given its efficiency - so is there anything wrong with it apart from not being familiar?

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• Foreword to The Third Edition
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Treaty Establishing the European Community (as amended by other Treaties) (European Union) [2006] OJ 321 E/37 (Date signed: 25th March 1957)

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Part II The Transfer of Intangible Property, 13 Equitable Assignment of Choses in Action

From: the law of assignment (3rd edition), marcus smith, nico leslie.

This chapter studies the requirements that are necessary for an effective assignment of choses in action. In order to effect the assignment or a chose in action: the assignor must have manifested an intention to transfer the chose; the thing being assigned must be a chose in action, in present existence, certain or capable of being ascertained; the identity of the assignee must be clear; and the appropriate forms and formalities must have been satisfied. These requirements apply both to legal and equitable assignments. However, since legal assignments can only be affected by statute, the forms and formalities required for a legal assignment are those set out in the relevant legislation, and addressed elsewhere.

• [66.249.64.20|185.126.86.119]
• 185.126.86.119

Equitable assignment

Practical law uk glossary 2-107-6540  (approx. 3 pages).

• The assignor can inform the assignee that he transfers a right or rights to him.
• The assignor can instruct the other party or parties to the agreement to discharge their obligation to the assignee instead of the assignor.

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Assigning ip after frischmann – powerless attorneys.

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Peter Hopton , Senior Associate

In a recent judgment, Frischmann v Vaxeal Holdings SA [2023] EWHC 2698 , the High Court considered whether an individual can legally assign rights by way of a power of attorney under section 136 of the Law of Property Act 1925 ( LPA ).

No legal assignment

Section 136 of the LPA requires assignment to be " by writing under the hand of the assignor ". In this case, whilst the assignment in question was written, it was signed on behalf of the assignor by an attorney acting under a power of attorney. The Court found that this did not satisfy the requirement for assignment " under the hand of the assignor ", and therefore there was no valid legal assignment. There had been, however, an equitable assignment.

Assignment of intellectual property rights

The rights assigned in this case were under loan agreements and a guarantee; intellectual property rights were not the subject matter. It is worth noting that under intellectual property laws like the Copyright, Designs and Patents Act 1988 ( CDPA ) and the Trade Marks Act 1994 ( TMA ) the statutes contain specific language regarding the assignment of rights that contemplate assignment via powers of attorney, i.e. assignments are to be signed " by or on behalf of the assignor ". On the face of it, Frischmann v Vaxeal Holdings SA would therefore not prevent the assignment of trade marks and copyright by way of power to attorney because the rules of assignment for these rights are not derived from section 136 of the LPA.

While this decision may not directly apply to the assignment of rights like trade marks and copyright because of the different wording in the relevant laws (TMA and CDPA  respectively), assigning intellectual property rights often includes assigning the right to take action in relation to past infringements. This amounts to the assignment of a 'chose in action', which is governed by section 136 of the LPA.

As such, whilst the decision might not prevent the assignment of intellectual property rights themselves via power of attorney, it will prevent assignment via power of attorney of certain ancillary rights that commonly accompany the assignment of intellectual property rights.

For various businesses, particularly certain creative industries, it has sometimes been customary for attorneys appointed under powers of attorney to sign documents on behalf of assignors. Such business practices may need to be revisited in light of Frischmann v Vaxeal Holdings SA . Where the reason for that has been to drive efficiency and/or streamline operations, particularly for documents that need to be signed as deeds, businesses may now need to consider if there are other options available to them.   

Quote mark icon ...an effective assignment under section 136 requires that it be in writing and under the hand of the assignor and that the Assignment here signed by Mr Frischmann as the assignor's attorney does not satisfy that requirement. https://www.bailii.org/ew/cases/EWHC/Ch/2023/2698.html

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What is the significance of an equitable assignment in the context of the assignment of future rights under a contract (or a chose in action)?

An assignment is the transfer of a right or an interest vested in one party (assignor) to another party (assignee). The effect of a valid assignment is to entitle the assignee to demand performance of a contractual obligation.

Assignments may be legal or equitable.

A legal assignment is one which meets the requirements set out in section 136(1) of the Law of Property Act 1925 (LPA 1925). It must be:

absolute and unconditional and not purport to be by way of charge only

made in writing and signed by the assignor

expressly notified in writing to the obligor

Equitable assignments may arise in the following circumstances:

where there is an intention to assign, but not all of the formalities of a legal assignment are met under LPA 1925, s 136(1), the assignment may still be valid as an equitable assignment . The formalities for an equitable assignment to be effective are far less stringent

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Related legal acts:

• Law of Property Act 1925 (1925 c 20)

Key definition:

Equitable assignment definition, what does equitable assignment mean.

Assignments can occur in equity when any of the requirements of legal assignment are not satisfied.

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Assignments: why you need to serve a notice of assignment

It's the day of completion; security is taken, assignments are completed and funds move. Everyone breathes a sigh of relief. At this point, no-one wants to create unnecessary paperwork - not even the lawyers! Notices of assignment are, in some circumstances, optional. However, in other transactions they could be crucial to a lender's enforcement strategy. In the article below, we have given you the facts you need to consider when deciding whether or not you need to serve notice of assignment.

What issues are there with serving notice of assignment?

Assignments are useful tools for adding flexibility to banking transactions. They enable the transfer of one party's rights under a contract to a new party (for example, the right to receive an income stream or a debt) and allow security to be taken over intangible assets which might be unsuitable targets for a fixed charge. A lender's security net will often include assignments over contracts (such as insurance or material contracts), intellectual property rights, investments or receivables.

An assignment can be a legal assignment or an equitable assignment. If a legal assignment is required, the assignment must comply with a set of formalities set out in s136 of the Law of Property Act 1925, which include the requirement to give notice to the contract counterparty.

The main difference between legal and equitable assignments (other than the formalities required to create them) is that with a legal assignment, the assignee can usually bring an action against the contract counterparty in its own name following assignment. However, with an equitable assignment, the assignee will usually be required to join in proceedings with the assignor (unless the assignee has been granted specific powers to circumvent that). That may be problematic if the assignor is no longer available or interested in participating.

Why should we serve a notice of assignment?

The legal status of the assignment may affect the credit scoring that can be given to a particular class of assets. It may also affect a lender's ability to effect part of its exit strategy if that strategy requires the lender to be able to deal directly with the contract counterparty.

The case of General Nutrition Investment Company (GNIC) v Holland and Barrett International Ltd and another (H&B) provides an example of an equitable assignee being unable to deal directly with a contract counterparty as a result of a failure to provide a notice of assignment.

The case concerned the assignment of a trade mark licence to GNIC . The other party to the licence agreement was H&B. H&B had not received notice of the assignment. GNIC tried to terminate the licence agreement for breach by serving a notice of termination. H&B disputed the termination. By this point in time the original licensor had been dissolved and so was unable to assist.

At a hearing of preliminary issues, the High Court held that the notices of termination served by GNIC , as an equitable assignee, were invalid, because no notice of the assignment had been given to the licensee. Although only a High Court decision, this follows a Court of Appeal decision in the Warner Bros Records Inc v Rollgreen Ltd case, which was decided in the context of the attempt to exercise an option.

In both cases, an equitable assignee attempted to exercise a contractual right that would change the contractual relationship between the parties (i.e. by terminating the contractual relationship or exercising an option to extend the term of a licence). The judge in GNIC felt that "in each case, the counterparty (the recipient of the relevant notice) is entitled to see that the potential change in his contractual position is brought about by a person who is entitled, and whom he can see to be entitled, to bring about that change".

In a security context, this could hamper the ability of a lender to maximise the value of the secured assets but yet is a constraint that, in most transactions, could be easily avoided.

Why not serve notice?

Sometimes it's just not necessary or desirable. For example:

• If security is being taken over a large number of low value receivables or contracts, the time and cost involved in giving notice may be disproportionate to the additional value gained by obtaining a legal rather than an equitable assignment.
• If enforcement action were required, the equitable assignee typically has the option to join in the assignor to any proceedings (if it could not be waived by the court) and provision could be made in the assignment deed for the assignor to assist in such situations. Powers of attorney are also typically granted so that a lender can bring an action in the assignor's name.
• Enforcement is often not considered to be a significant issue given that the vast majority of assignees will never need to bring claims against the contract counterparty.

Care should however, be taken in all circumstances where the underlying contract contains a ban on assignment, as the contract counterparty would not have to recognise an assignment that is made in contravention of that ban. Furthermore, that contravention in itself may trigger termination and/or other rights in the assigned contract, that could affect the value of any underlying security.

What about acknowledgements of notices?

A simple acknowledgement of service of notice is simply evidence of the notice having been received. However, these documents often contain commitments or assurances by the contract counterparty which increase their value to the assignee.

Best practice for serving notice of assignment

Each transaction is different and the weighting given to each element of the security package will depend upon the nature of the debt and the borrower's business. The service of a notice of assignment may be a necessity or an optional extra. In each case, the question of whether to serve notice is best considered with your advisers at the start of a transaction to allow time for the lender's priorities to be highlighted to the borrowers and captured within the documents.

For further advice on serving notice of assignment please contact Kirsty Barnes or Catherine Phillips  from our Banking & Finance team.

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• Intellectual Property

Assignment Agreements and Indian IP laws

Assignment can be defined as transferring the title and rights associated with a particular property from one person to another. The individual who transfers the title is called the transferor/assignor, and the person who receives the title is called the transferee/assignee. The result of an assignment is the transfer of all interest present in a particular property to the transferee.

Assignment in the context of intellectual property is the transfer of all the intellectual property rights held by a registered user (or creator, only in cases of copyrightable works) to another party. Assignment agreements are usually in writing and are duly signed by the assignee and the assignor.

The Indian Contracts Act of 1872 provides the general essentials that make a contract valid. These apply to assignment agreements as well. These essentials include the competency of parties to enter into a contract, legal consideration, promise and acceptance, and a lawful object. In addition to those mandates, assignment agreements about Intellectual Property have several other requirements to be fulfilled. Those requirements vary according to the type of intellectual property , i.e., artistic work, trademark, invention, design, etc.

Assignment of Copyrights

The bundle of economic and moral rights is called copyright . Economic rights consist of the right to distribute, reproduce, transform, translate, perform, private copying, etc. These rights can either be wholly or partially assigned according to the parties will. Section 18 and 19 of the Copyrights Act, 1957 refers to the assignment. The work that is to be assigned has to be in existence. The authors of musical/literary work cannot assign their right to receive a royalty to any other party except their legal heirs. The Copyrights Act 1957 mandates the assignment to be made through a written and signed document.

These agreements should consist of the work and the rights assigned, the duration and territorial extent of assignment, the amount of royalty payable to the party or their legal heir, and revision/extension/termination on mutually agreed upon terms. In the absence of details present in the agreement, the default term of the contract will be five years, and the default territorial extent will be limited to India.

The assignment must be recorded in the register in case of registered work.

Assignment of Trademark

Assignment of the trademark could concern certain goods/services or fully, with/without goodwill or any combination thereof. Assignment of trademarks is specified in Section 37-43 of the Trademarks Act, 1999. The agreement has to be in written form and duly signed by the parties involved, and the agreement should specify whether the goodwill is to be transferred along with the trademark.

An application to register the change in ownership of the title of trademark has to be made through From TM-P along with a duly certified copy of the original document and the instrument or deed used for the transfer of rights.

Assignment of Geographical Indications

Geographical indications (GI) are different from trademarks; they belong to a particular association or group of people who produce certain goods in a specific geographical area with special characteristics or quality. The usage of such a mark indicates the presence of such quality or characteristic that is a specialty to that territory. As GIs are public property, they cannot be subject to assignment, transmission, licensing, pledging, mortgaging, or any such types of agreements as mentioned in Section 24 of the Geographical Indications of Goods Act, 1999. The GI could be subject to succession, but it is possible only when the production of such a product remains within the territory mentioned.

Assignment of Patent rights

Assignment of patents has to be done through a written instrument. Section 68-70 of the Patents Act 1970 covers the assignment of patents. This instrument should specify all the terms and conditions governing the rights transferred and obligations imposed. Assignment of patents can be informed of legal assignment, equitable assignment, or mortgages. This ownership transfer must be registered in the register through a Form 16 application made to the Controller, along with two copies of the deed agreement document duly certified.

Assignment of Designs

The assignment of designs is regulated by the Manual of Designs Practice and Procedure. Sec 30 of the Designs Act, 2000 provides the information related to the assignment of Designs and the procedure of doing the same. This agreement must be in writing and contain all details regarding the transferred rights and the obligation imposed. This assignment has to be duly signed by both parties involved. It has to be registered on the application filing through Form 10 within six months from the date of execution of the assignment/instrument. Further extension of 6 months is also available. It has to accompany copies of the original transfer deed/instrument or copies duly certified.

For more information, please get in touch with Intepat .

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Equitable assignment

Practical law uk glossary 2-107-6540  (approx. 3 pages).

• The assignor can inform the assignee that he transfers a right or rights to him.
• The assignor can instruct the other party or parties to the agreement to discharge their obligation to the assignee instead of the assignor.
• General Contract and Boilerplate

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equitable assignment

• A transfer of property or rights, particularly those in which the transferor has a future interest, that may not technically be legal, but would be considered fair and just by a court focusing on justice and fairness
• Despite the lack of a written contract, the judge recognized the equitable assignment of the store's future profits to the plaintiff.
• The attorney argued that even though there was no formal agreement, the bank's actions reflected an equitable assignment of the debts.
• While there was no formal deed of transfer, the court acknowledged the equitable assignment of the property based on the circumstances.
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