Patent Assignment Agreement

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Introduction

A patent is an intangible asset that is transferable pursuant to Section 50 (1) of the Patent Act. This contract is governed by Sections 49 to 52 of the Patent Act. As these sections are of limited use, the parties to such transfer should enter into a detailed written agreement. The supplementary rules applicable to said agreement are those provided in the Civil code of Quebec, even though the Patent Act is federal legislation.

The patent license agreement and the patent assignment agreement are similar. The main difference between the two agreement, which can create significant legal consequences, is that in the case of a license agreement, the patent holder remains the owner of the invention and only grants a right to use the patent . In practice, the distinction means that the assignee is entitled to sue a third party for patent infringement, whereas a licensee cannot.

Description

The Patent Assignment Agreement is the legal instrument by which a person called the ASSIGNOR, who holds a patent, contracts with another person, referred to as the ASSIGNEE in order to assign the patent and all rights thereto.

Use

When a party wishes to obtain all the rights granted to an invention pursuant to a patent, the patent holder can accommodate him in two ways. It can either grant an exclusive license to its future operator (See documents H04.200 and H04.300 of the Business Precedents), or simply sell the patent to him.

As the exclusive license does not give the right of ownership on the patent to the operator who only enjoys, according to the prevailing legal trend, a personal right on the property in question, it results in certain disadvantages which may prevent the execution of an agreement between the parties.

When appropriate, we recommend, as an alternative to a breakdown in negotiations, the use of this agreement to transfer all rights of the assignor to its future assignee.

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