Assignment Agreement

An assignment agreement is a contract through which one party, known as the assignor, transfers its intellectual property rights to another party, known as the assignee. This transfer may involve patents, trademarks, designs, or copyrights and is typically permanent, unlike a license, which only grants a right to use the IP.

Definition and Fundamental Principles

The purpose of an assignment agreement is to allow the legal transfer of intellectual property rights from one party to another. Once assigned, the assignee becomes the new owner of the rights, while the assignor loses all ownership, unless specific clauses provide otherwise.

Consequences of an Assignment

• The assignee gains full ownership and control over the IP.

• The assignor relinquishes all rights, unless stated otherwise in the contract.

• The agreement may include restrictions, such as territorial or usage limitations.

• For the assignment to be legally binding, it must comply with legal requirements, such as written form and registration.

 Legal Foundations

Intellectual property assignments are governed by laws and regulations that ensure the validity and enforceability of the transfer.

Patent Assignment

A patent can be assigned through a contract, provided specific formalities are met.

• Legal reference: Article L.613-8 of the French Intellectual Property Code (CPI).

• Requirement: The agreement must be in writing and registered with the INPI (French Patent Office) to be enforceable against third parties.

Trademark Assignment

A trademark can be assigned with or without the associated business.

• Legal reference: Article L.714-1 of the CPI.

• Conditions: The assignment must be written and recorded in the National Trademark Register.

Design Assignment

A design can be assigned independently of the business that exploits it.

• Legal reference: Article L.513-3 of the CPI.

• Requirement: The assignment must be in written form to be valid.

Copyright Assignment

Authors can transfer their economic rights under strict conditions.

• Legal reference: Article L.131-3 of the CPI.

• Specificity: The assignment must be explicit, limited in duration, scope, and rights transferred.

Conditions and Time Limits

Who Can Assign a Right?

• The legal owner of the intellectual property (individual or company).

• Heirs or other successors in title.

• A company that owns a patent, trademark, or design.

Time Limits and Prescription

• There is no statutory limitation period for executing an assignment.

• However, an action to annul an assignment must be filed within five years (Article 2224 of the French Civil Code).

Procedure and Consequences

Steps in the Assignment Process

1. Negotiation of terms between the assignor and assignee.

2. Drafting of the contract, specifying the rights transferred, conditions, and consideration.

3. Signing of the agreement by both parties.

4. Registration with relevant authorities (e.g., INPI for patents, trademarks, and designs).

Consequences for Businesses

• Legal security: The assignee obtains an enforceable and valid title.

• Business opportunities: A transferred patent or trademark can strengthen market positioning.

• Loss of control for the assignor, unless contractual clauses impose usage restrictions.

Difference Between Assignment and Licensing

FAQ

How much does an assignment cost?

Costs depend on the type of intellectual property, negotiation terms, and applicable registration fees.

Can an assignment be annulled?

Yes, if there is a defect in consent, failure to meet legal requirements, or lack of valid consideration.

Is registration mandatory?

Yes, to make the transfer enforceable against third parties, especially with the INPI for patents, trademarks, and designs.

Conclusion

An assignment agreement is a key legal tool for transferring intellectual property rights. Ensuring compliance with legal and contractual formalities is crucial for a valid transfer. Seeking advice from an IP lawyer is highly recommended to secure the transaction.