Intellectual Property: Assignment & Licensing
Intellectual property can be just as valuable as—or even more valuable than—tangible property. Many companies make money exclusively through marketing products based on intellectual property rights. That’s why it is so important to protect your intellectual property through patents, trademarks, copyrights, and other legal devices that keep your intellectual property safe.
However, once you have secured your intellectual property rights, it is sometimes more convenient or valuable to let someone else use them in exchange for a fee, which is why intellectual property agreements and intellectual property contracts exist. These documents are complex agreements that determine the manner in which third parties can use your intellectual property. Intellectual property agreements require careful negotiation, and owners of intellectual property should conduct these negotiations with the support of an experienced intellectual property lawyer. Allied Legal’s lawyers can assist in this regard.
Assignment of Intellectual Property
Broadly, under an intellectual property assignment agreement, you permanently transfer some or all IP rights to the assignee in exchange for a specified sum. You sell the rights to a third party the same way that you could sell physical property for a permanent transfer. Generally, you relinquish all control, involvement, and claim on the intellectual property rights transferred.
Intellectual Property Licensing
Under an intellectual property licensing agreement (also known as an intellectual property license or an intellectual property license agreement), you retain ownership of your intellectual property, but you give another party permission to use some or all of your intellectual property rights for a specific amount of time for a fee or royalty. These intellectual property contracts typically specify termination dates and procedures.
There are several types of intellectual property licenses embodied in a typical intellectual property agreement. Licenses can be exclusive or non-exclusive:
- Exclusive: You agree not to grant any other licenses of the invention and rights concerned, as well as not to use the technology yourself.
- Non-Exclusive: You agree to give the licensee certain rights, but you also reserve the right to grant licenses of the invention and rights concerned to third parties or to use them yourself.
Assignment Vs. Licensing
Which is better, an intellectual property assignment agreement or an intellectual property license? The reality is that there are pros and cons to each choice, depending on your needs and interests. Most of the time, IP holders want to maintain control of their IP, and they choose intellectual property licensing. This is advantageous because you can determine the manner in which your IP is used. Also, intellectual property licensing allows you to produce a steady income from your IP over a particular time period and possibly confer the same rights to multiple users.
Intellectual property assignment agreements can also have its advantages, however. If you assign intellectual property to a third party, you no longer have any responsibility towards the product. That means you cannot generally be sued for problems relating to your IP and you are not responsible for any maintenance fees. Intellectual property assignment is generally more appropriate when you are selling your business or leaving a field entirely.
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Give us a call on 03 8691 3111 or email us at [email protected] to enquire about our expertise in the intellectual property space. We regularly assist startups with their legal needs and would value the opportunity to work with you.
Want to learn more about intellectual property? Check out: It’s My Startup! But Who Owns the Intellectual Property?
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What is Assignment of a Trade Mark?
By Akshaya Sivakumar Lawyer
Updated on May 9, 2024 Reading time: 5 minutes
This article meets our strict editorial principles. Our lawyers, experienced writers and legally trained editorial team put every effort into ensuring the information published on our website is accurate. We encourage you to seek independent legal advice. Learn more .
- Trade Mark Ownership & Eligibility
- What is an Assignment or Transmission of a Trade Mark?
When Can You Assign a Trade Mark?
Rules for certification trade marks and collective trade marks.
- What Happens After Assigning A Trade Mark?
Key Takeaways
Frequently asked questions.
In Australia, IP Australia, an agency of the Federal Department of Industry, Innovation and Science, regulates trade marks. Therefore, if a business wishes to apply for a trade mark or make any changes to a pending or registered trade mark, it must go through IP Australia . You must assign a trade mark when the ownership of a trade mark passes to another person or legal entity. Below, we explain the process of the assignment of a trade mark and the relevant considerations to take into account.
Trade Mark Ownership & Eligibility
To be an eligible owner of a trade mark in Australia, the owner must be:
- an individual;
- an incorporated association;
- more than one of these (in the case of multiple ownership);
- an unincorporated association (for a collective trade mark only); or
- a body existing under legislation (for example, a registered charity).
If your business plans to use the trade mark in an entity that you have not formed yet, you can still file the trade mark application as an individual and subsequently assign the trade mark to the new body upon formation.
What is an Assignment or Transmission of a Trade Mark?
Suppose your business experiences change within its internal structure and is undergoing a process where it is transferring rights or updating ownership. In that case, you must think about the impact on any existing trade marks and ensure you register them under the correct owner.
This process is called an ‘assignment’ of a trade mark, where the ownership of a pending or registered trade mark passes from one party to another. This can also involve adding or removing any current owners.
IP Australia records any assignments or changes to the ownership of a trade mark, and you must notify them of any change. This ensures that assignments and transmissions of title that have been effected in the marketplace are entered in IP Australia’s records at the earliest opportunity. This creates records that are an accurate reflection of the real business situation.
The current owner (‘the assignor’) passes the title of the trade mark to the new owner (‘the assignee’). The assignment may change the trademark’s ownership in whole or in part. In practice, this could mean that the assignee owns the trade mark for particular classes of goods and services. However, the assignor still owns the trade mark for the remaining goods and services.
A trade mark can be assigned from one party to another during the application process or even after a trade mark has achieved formal registration. However, whether the trade mark is registered or pending, the assignor or the assignee will have to notify IP Australia by lodging a form to record the transfer of ownership.
As a business or entity lodging the form, you must ensure that the company or individual you assign the trade mark to is eligible to hold the trade mark, i.e., a legal entity.
IP Australia requires you to attach relevant documentary evidence to support the request for assignment. The necessary evidence and forms must be signed and dated by the parties (the previous owner/s and the new owner/s). The most common forms of evidence include providing a:
- deed of assignment;
- letter of assignment;
- sales agreement;
- declaration;
- certificate of merger; or
- merger document.
After IP Australia receives the form with the evidence and records the assignment or transmission, the assignee will be considered the trademark’s owner.
If it is a full assignment or transmission for all goods and services registered for the trade mark, then the assignee is taken to be the owner of the trade mark for all those goods and services. On the other hand, suppose it is only a partial assignment or transmission. In that case, IP Australia will create a new application or registration of the trade mark for the partially assigned goods or services, and the assignee is the owner of the new trade mark.
IP Australia has certain rules regarding trade marks filed as a certification or collective trade mark.
Certification Trade Marks
If the certification trade mark is the subject of a current application for registration that has not yet been examined or is still under examination, you can assign the trade mark. However, if the certification trade mark is under examination and with the ACCC for review, or trade mark registration is already complete, you must consult the ACCC. Additionally, you must provide evidence of its consent to transfer ownership before the assignment occurs.
Collective Trade Marks
You cannot assign a collective trade mark .
What Happens After Assigning A Trade Mark?
IP Australia publishes the details of the assignment or transmission in the Official Journal of Trade Marks. IP Australia is obliged to notify any person recorded as claiming an interest in the trade mark of any assignments.
You can assign a trade mark at any stage of the application process or post-registration. This may vary if you have filed the trade mark as a certification or collective trade mark. You must also notify IP Australia of any changes to your business structure that may affect your trade mark. Providing all the necessary information and dated documentation will ensure an efficient transition process for your trade mark assignment.
If you wish to get further information on the assignment process, a trade mark lawyer can help you ensure that you have protected your trade mark, while avoiding any inconsistencies and breaches of the law. Contact LegalVision’s experienced IP lawyers on 1300 544 755 or fill out the form on this page.
You can, but once you form the business, you will need to assign your trade mark to that business or entity.
You can assign a trade mark during any stage of the application process and ownership. This may vary if you have a certain type of trade mark, such as a collective or certification trade mark.
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Intellectual Property Assignment Agreement
Rating: 4.8 - 15 votes
An Intellectual Property Assignment Agreement is a document by which someone releases some intellectual property which they created such as a work of art, a writing, a film. some computer code, or any other piece of intellectual property ("the work") and gives away or transfers all the rights to someone else. This type of agreement is used in situations where the creator of the work ("the transferor") is okay with the work being used for another purpose, and where the transferor is okay with not keeping any rights to the work.
By releasing the rights, the transferor gives up any control over what happens to the work . The person that receives the rights to the work ("the transferee") can then do anything they want with it - including copying it, distributing it, publishing it , or whatever else they would like. This may occur, for example, when a graphic designer (transferor) creates a logo for a client (transferee), and has no intention to use the logo again. They may "assign" the logo to the client, so that the client can use it however they like, including modifying it, printing it on various products, and distributing it to whomever they like.
This Intellectual Property Assignment Agreement is different from an Intellectual Property Licence Agreement . An Intellectual Property Licence Agreement can be used when the creator of the work ("the licensor") wants to retain some control over the work. For example, they may want to be able to provide copies of work to many different third parties ("the licensees"). This might apply, for example, when a software developer (licensor) creates some software, and lets people (licensees) purchase an annual subscription to use it. The software developer might want to control how people use it, for example, by preventing them from making copies or modifying the code. The software developer might also want to be able to provide copies to many different licensees at once. In these circumstances, the parties may consider using our Intellectual Property Licence Agreement .
Please note that for some intellectual property in Australia, transfers or assignments of the intellectual property need to be undertaken through relevant authorities. For example, in the case of trademarks (eg, logos and other branding), or patents, these are managed by IP Australia.
In order to validly transfer a trademark or patent, the parties may need to make an application with IP Australia. In addition, if a business name is being assigned, then this will need to be organised through the Australian Securities and Investments Commission .
If the parties are unsure about these matters or need assistance with them, they should seek legal advice.
Amendments to the Competition and Consumer Act 2010 (Cth) - 13 September 2019
Starting on 13 September 2019, some amendments to the Competition and Consumer Act 2010 (Cth) ("CCA") may impact many intellectual property arrangements in Australia. In particular, the CCA prohibits some conduct which is considered "anti competitive" or "cartel conduct" .
If the parties have any concerns at all about whether or not they are going to be affected by these laws, they should strongly consider obtaining legal advice .
By way of general explanation, prior to 13 September 2019, section 51(3) of the CCA provided an exemption for some matters involving licensing or assignment of intellectual property. This meant, for example, that conduct involving licensing or assignment of intellectual property, which might otherwise be considered "anti competitive", might have been permitted.
However, starting on 13 September 2019, with the repeal of section 51(3) , those matters involving licensing or assignment of intellectual property may no longer be permitted. The legislation places significant obligations on the parties , and its implications may be quite broad. There is also potential for this legislation to affect some conditions which may be common in many traditional intellectual property arrangements. The penalties for breach of these laws are also very high .
Therefore, if the parties have any concerns at all about whether or not they are going to be affected by these laws, they should strongly consider obtaining legal advice. This Agreement is only designed for use among parties which are not engaging in anti competitive or cartel conduct.
Further information about the changes is available on the website of the Australian Competition and Consumer Commission.
How to use this document
This document can be used when an artist would like to release the rights to something they've created. Conversely, a business person or individual can also use this document to acquire the rights to something someone else has created, and they've agreed. In this document, the person preparing the document will be able to fill out the details of the work of intellectual property that is being released.
Once the document has been prepared and before it is signed, make sure that both parties (both the party assigning the intellectual property, and the party receiving the intellectual property) receive a copy of the document. Both parties should be given some time to review the document to make sure that their details are correct, that they understand the various terms, and that they are happy with the various terms.
Both parties should then sign the document . If the parties are individual persons (rather than companies) then the document may be set up to have their signatures witnessed by independent witnesses who are aged over 18 . The parties cannot witness each other . If the parties are planning to sign the document electronically then they may need to check their local laws regarding electronic signatures and having signatures witnessed electronically.
Both parties should then keep a copy of the document for their own records.
Applicable law
There are no laws outlining what must be put into an Intellectual Property Transfer Agreement. Overall, intellectual property in Australia is covered primarily under Commonwealth law , including the Copyright Act 1968 .
This agreement is a contract between the transferor and the transferee. Ordinary principles of contract law , as provided by the common law, will also apply.
How to modify the template
You fill out a form. The document is created before your eyes as you respond to the questions.
At the end, you receive it in Word and PDF formats. You can modify it and reuse it.
Guides to help you
- What to do after Preparing a Contract
- How Will the Changes to the Competition and Consumer Act Affect my Service Agreements and Intellectual Property Agreements?
- Legal Considerations when Promoting Products on Social Media
- Someone has Stolen my Intellectual Property, what should I do?
- Important Clauses to Review before Signing a Service Agreement
Other names for the document:
Agreement for Release of Intellectual Property, Agreement for Sale of Intellectual Property, Assignment - Intellectual Property, Assignment of Intellectual Property, Copyright Assignment Agreement
Country: Australia
Intellectual Property and New Technologies - Other downloadable templates of legal documents
- Terms and Conditions for Website or Mobile Application
- Privacy Policy for Website or Mobile Application
- Letter Requesting Permission to Use Intellectual Property
- Trademark Infringement Cease and Desist Notice
- Copyright Infringement Cease and Desist Notice
- Email Disclaimer
- Refund Policy
- Intellectual Property Licence Agreement
- Model Release Form
- End User Licence Agreement
- Content Removal Request
- Image Removal Request
- Takedown Notice
- Cookies Policy
- GDPR Privacy Policy
- Software as a Service Agreement
- Terms and Conditions for Sale of Goods Online
- Copyright Notice
- Returns Policy for Website or App
- Shipping Policy
- Other downloadable templates of legal documents
- About the Framework
- Before you start
- Framework Advisory Committee
- Step 1: Define your project
- Step 2: Choose an agreement
- Step 3: Choose an agreement type (for Research and Licence Agreements only)
Step 4: Agreement Templates and Guidance Materials
- Context and consultation on the Framework
- Announcements
Materials available for each agreement:
On this page:
1. Template agreement.
2. Plain English Guidance Document – a simple language version of the agreement to help you understand key legal terms and clauses, and your obligations under the agreement.
3. Agreement Pack - the relevant section from the Practical Guide outlining when (and when not) to use your chosen agreement and the key things to consider when negotiating and completing your agreement template, plus the guidance document and template agreement in one document.
Assignment Agreement
The Assignment Agreement is for use to legally transfer ownership of intellectual property (IP) from one party to another, for example when a party is the owner of IP developed by the other party under a joint research collaboration.
- Assignment Agreement Template
- Assignment Agreement Plain English Guidance Document
- Assignment Agreement Pack
Licensing IP
Accelerated non-exclusive licence agreement.
A licence agreement for an IP owner to licence IP Rights (IPR) (including IPR developed as part of a project) on a non-exclusive basis to the other party, either for non-commercial use or for low-risk commercialisation.
- Accelerated Non-Exclusive Licence Agreement Template
- Accelerated Non-Exclusive Licence Agreement Plain English Guidance Document
- Accelerated Non-exclusive Licence Agreement Pack
Licence Agreement (Non-exclusive Commercialisation)
A licence agreement for an IP owner to licence IP Rights (IPR) (including IPR developed as part of a project) on a non-exclusive basis to the other party for commercialisation.
- Licence Agreement (Non-exclusive Commercialisation) Template
- Licence Agreement (Non-exclusive Commercialisation) Plain English Guidance Document
- Licence Agreement (Non-exclusive Commercialisation) Pack
Licence Agreement (Exclusive Commercialisation)
A licence agreement for an IP owner to licence IP Rights (IPR) (including IPR developed as part of a project) on an exclusive basis (e.g., by field of use or territory) to the other party for commercialisation.
- Licence Agreement (Exclusive Commercialisation) Template
- Licence Agreement (Exclusive Commercialisation) Plain English Guidance Document
- Licence Agreement (Exclusive Commercialisation) Pack
Providing Services & Equipment
Equipment licence agreement.
The Equipment Licence Agreement is for a party to access equipment from another party for a specified use and time period, for example when a company wishes to use equipment owned by the University for a specific project on its premises.
- Equipment Licence Agreement Template
- Equipment Licence Agreement Plain English Guidance Document
- Equipment Licence Agreement Pack
Technical (Consulting) Services Agreement
The Technical (Consulting) Services Agreement is for the provision of support services, for example when an industry partner wishes to purchase certain testing services from a university and this is being charged on a commercial/market rate basis.
- Technical (Consulting) Services Agreement Template
- Technical (Consulting) Services Agreement Plain English Document
- Technical (Consulting) Services Agreement Pack
Identifying & Protecting IP
Mutual confidentiality agreement.
The Mutual Confidentiality Agreement is for the exchange of confidential information between two parties, for example for preliminary discussions about a future project.
- Mutual Confidentiality Agreement Template
- Mutual Confidentiality Agreement Plain English Document
- Mutual Confidentiality Agreement Pack
Material Transfer Agreement
The Material Transfer Agreement is for the exchange of physical materials between two parties, for example for a company to test before entering a further research or licence agreement.
- Material Transfer Agreement Template
- Material Transfer Agreement Plain English Document
- Material Transfer Agreement Pack
Developing IP through Collaboration
Accelerated research agreement.
The Accelerated Research Agreement is for lower risk research and development projects between a collaborator and a university.
- Accelerated Research Agreement Template
- Accelerated Research Agreement Plain English Document
- Accelerated Research Agreement Pack
Standard Research Agreement
The Standard Research Agreement is for research and development projects between a collaborator and a university where it is not appropriate to use the Accelerated Research Agreement.
- Standard Research Agreement Template
- Standard Research Agreement Plain English Document
- Standard Research Agreement Pack
Multi-party Collaboration Agreement
The Multi-party Collaboration Agreement is for multi-party research and development projects between universities and companies.
- Multi-party Collaboration Agreement Template
- Multi-party Collaboration Agreement Plain English Document
- Multi-party Collaboration Agreement Pack
Variation Agreement
The Variation Agreement is for use to alter the terms of any agreement previously signed by a University and Collaborator under the HERC IP Framework, for example to vary the terms of a licence or research agreement. Two templates are provided – one to vary any of the two-party agreements and one to vary the Multi-party Collaboration Agreement.
- Variation Agreement Template
- Variation Agreement for Multi-party Collaboration Agreement Template
- Variation Agreement Plain English Document
- Variation Agreement for Multi-party Collaboration Agreement Plain English Document
- Variation Agreement Pack
Practical Guide
For more information on when to use each agreement, and the key things to consider when completing the template for each agreement, go to Section 5 of the Practical Guide ( page number 46 of the pdf version ).
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Intellectual Property Checklist
06 jul intellectual property checklist.
Need a downloadable version of our IP Checklist?
Click the button below to download our IP Checklist as a PDF.
Introduction
Progressive Legal® is on a mission to help Australian businesses and their owners with securing their Intellectual Property (IP) in a way that will ensure they can protect their brand, enforce their legal rights should they need to, learn more about the various IP they have in their business and understand how valuable it is for a business.
The problem we identified is that there’s no checklist out there for a business to know what they should consider when it comes to their IP. Until now…
Why is IP important?
We’ve created this checklist as a practical guide to assist businesses as IP is increasing in its value for most businesses and it’s becoming far more important than ever to take proper and reasonable steps to protect it. This is largely attributable to the advancement of technology and increase in globalisation. Many businesses are not sufficiently aware and are surprised how much valuable IP they have made when we advise them, and which has accumulated over the years.
What this checklist will cover
This checklist will: 1. increase your awareness as to how much IP you have in your business; 2. allow you to consider whether all the major boxes have been ticked; 3. provide guidance on whether there are other forms of IP you should obtain or move to register to protect; and 4. if your business legal structure has changed, have you considered whether some IP would need to be transferred in the right legal entity for it to be enforceable.
Finally, if the owners of the business would eventually consider selling at any stage or hand-on to future generations? If so, have you got your house in order? All of this should be legally neat and tidy, and all steps taken to protect the IP of the business. If not, it can potentially be fatal.
We have seen prospective purchasers balk at buying certain businesses where this has not been done, as they know how dangerous it is for a business not to have all this done because of the costly consequences that can result, which they would have seen. Opportunities have been missed as a result!
Step 1: Identifying your Intellectual Property (IP)
In order to consider what IP assets the business owns, you must first identify what types of Intellectual Property you currently have in your business ( IP Inventory ).
You’ll be surprised just how much IP exists in your business!
Need intellectual property advice tailored to your business?
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Step 2: Protecting your Intellectual Property
After you’ve identified the extent of your IP inventory, it’s essential that you consider the commercial/ legal risks which exist and any active steps you should be taking to protect it. This includes risks that exist either internally, with 3rd parties you engage and of course – your competition in the market you operate in.
The protection of your IP is a long process and begins from the moment you expend effort on creating your idea to the actual manifestation of that idea in physical form.
Registration of intellectual property in Australia
Trade marks : Have you registered your trade mark(s) with IP Australia ? Find our trade mark registration service here .
Copyright: You do not need to register Copyright in Australia. Copyright is automatically recognised under the Copyright Act 1968 (Cth) (subject to satisfying the requirements of subsistence).
Designs: Have you registered your Design(s) with IP Australia? Our experienced registered design lawyers can help you do this.
Patents: Have you registered your Patent(s) with IP Australia ? For more information about patent advice, click here.
Unregistered trade mark(s)
If you have an unregistered trade mark, you still have protection to stop other people from using it (i.e. under the common law of passing off , or pursuant to the Australian Consumer Law for misleading and deceptive conduct).
Trade mark and copyright notices
Do you use the symbol ™ for unregistered trade marks?
Do you use the symbol ® to show your trade mark is registered?
Here is an article if you want more information.
Ownership of intellectual property in Australia
Do you document your right to use IP works?
Do you document drafts and initial plans of your IP works?
Is the IP being used wholly owned by your company?
Do you require all employees and contractors to sign agreements which assign all IP rights to your company which they have developed while they are working for you?
Do you know under what name your social media accounts and domains are held in?
Where employment ends, do you conduct exit interviews with employees with respect to any IP issues (such as the return of company property, trade secrets etc)?
Has all IP which has been created externally (i.e. by contractors) been formally assigned to your company?
Corporate structure
If there is a group of companies, is your IP owned by the correct entity?
If you have a holding company and trading entity, is the IP held in the former, whilst the latter has a license to use it?
If you have moved to a new business structure, has the IP been moved to the new structure?
Is the IP co-owned (either between parties or entities)? If so, have you considered the implications of this?
Enforcement of rights
Where you are made aware that an infringement of your IP has occurred, do you send cease and desist / letters of demand to the infringing party putting them on notice of your rights?
Do you obtain legal advice regarding suspected infringements of your IP?
Use of confidential information
Do you have any processes or procedures in place to prevent the unauthorised disclosure of your business’s ideas or concepts?
Do you have Confidentiality Agreements/Deeds, or Non-Disclosure Agreements with your employees, contractors and other third parties?
If another party is found to infringe an IP right that you have licensed, have you considered whether you or the licensee will pay any legal costs associated with dealing with the matter?
Have you identified all agreements you or your company may have with a third party? This includes and is not limited to:
- license agreements;
- assignment agreements ;
- distribution agreements ;
- non-disclosure agreements ; and
- non-competition agreements.
Have you identified other documents relating to Intellectual Property rights? This includes and is not limited to:
- contracts with suppliers; and
- contracts with customers (including terms and conditions etc).
After reviewing the documentation, does each agreement identify:
- The parties to the agreement?
- The true owner of any IP developed under the agreement?; and
- The rights being transferred?
Step 3 : Avoiding the infringement of other s ’ IP rights
Just as it’s important to protect your own Intellectual Property rights, it is also essential that you take active steps to prevent the potential infringement of third parties Intellectual Property rights , so as to limit your legal liability .
Identification of competitors
Do you have any processes by which you identify potential competitors in the market and the likelihood of infringing their IP rights?
Before you create your Intellectual Property, do you conduct a thorough review of any registered IP which you may potentially be infringing upon (such as trade mark searches on IP Australia)?
If you plan on selling your product/ services internationally, have you conducted the same review for the countries you intend to export your products or services to?
Due diligence
If you are purchasing a business, have you conducted your due diligence to ensure that the IP being used is not infringing a third parties rights?
Licences with third parties when using third party Intellectual Property in Australia
Do you have any licenses which allow you to use another parties IP? If so, are you across the terms of that license and how the IP can be used?
Do your licenses which allow another party to use your IP include indemnities against any tort or liability claims?
Use of hyperlinks
Are you sure that your online content (such as social media pages or website) does not link to or embed material which infringes copyright ?
Seeking advice from legal professionals
Do you seek advice from any lawyers or Intellectual Property professionals as to your Intellectual Property matters?
If you require legal advice in relation to your Intellectual Property or your business more broadly, the team at Progressive Legal are experts in the field.
Feel free to call our office at 1800 820 083 or request our advice below to fill out our online enquiry form.
Contact us by giving us a call on 1800 820 083 or request our advice today.
*NB// The contents of this article are information only and should not be relied on as legal advice. Please seek specialist legal advice in relation to your particular situation.
(c) Progressive Legal Pty Ltd – All legal rights reserved (2023)
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Find out how we can help or please complete the form above.
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Ian Aldridge is the Founder and Principal Lawyer Director at Progressive Legal . He has over 15 years experience in advising businesses in Australia and the UK. After practising in commercial litigation for 12 years in major Australian and International Law Firms, he decided to set up a NewLaw law firm in Australia and assist growing Australian businesses. Since then, he has advised over 2,500 small businesses over the past 6 years alone in relation to Intellectual Property Law, Commercial, Dispute Resolution, Workplace and Privacy Law. He has strived to build a law firm that takes a different approach to providing legal services. A truly client-focused law firm, Ian has built Progressive Legal that strives to deliver on predictable costs, excellent communication and care for his clients. As a legal pioneer, Ian has truly changed the way legal services are being provided in Australia, by building Legal Shield™ , a legal subscription to obtain tailored legal documents and advice in a front-loaded retainer package, a world-first. He has a double degree in Law (Hons) and Economics (with a marketing major). He was admitted to the Supreme Court of NSW in 2005.
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By post. Download and complete the form. Send the form to our postal address: IP Australia. PO Box 200. Woden ACT 2606.
Trade Mark No(s) In the name of. The assignee/assignor hereby applies to the Registrar of Trade Marks to record a full assignment/transmission on the trade marks listed above for ALL the goods/services for which the trade mark(s) is/may be registered. I provide the following document(s) in support of this request: (tick the relevant box)
43.4. Process for assigning all goods and/or services (full assignment) Date Published 20 Apr 2022. An application to record an assignment in respect of all the goods or services covered by a trade mark registration or application is known as a full assignment. This is more common than partial assignments described in the next section.
4.2.4. Where the owner of the conflicting trade mark is a deregistered company or is a company in liquidation, ASIC becomes the vested owner of the trade mark. 4.2.5. A general letter of consent confirming that one party is prepared to consent to any trade mark applications made by another party may be considered.
Contact us. Give us a call on 03 8691 3111 or email us at [email protected] to enquire about our expertise in the intellectual property space. We regularly assist startups with their legal needs and would value the opportunity to work with you.
2.2.2 Under section 217A of the Trade Marks Act 1995 (Cth), the fee for a copy of a publically available document is $50 per document capped at $200 for 4 or more documents from the one casefile (pursuant to the Trade Mark Regulations, Schedule 9, Items 21 and 22). 2.2.3 Under the FOI Act, the applicant has the right to contend that a charge ...
Assigning intellectual property is the transfer of the rights of that intellectual property from one party to another, usually for monetary consideration. Whether you are starting a business or running a business, intellectual property is a significant piece of your business's value. It is important to ensure that the terms of any assignment ...
An IP assignment agreement is a contractual agreement which facilitates the transfer of IP from one party to another. The party transferring the IP interest is the assignor. The party receiving the IP interest is the assignee. There are several important clauses which you should include in an IP assignment agreement. The Assignment Clause.
Satisfactory evidence of assignment is usually in the form of a letter of assignment or a written statement (deed) transferring the design right. There is no fixed wording for the letter or deed but it must: state clearly that the assignor is transferring their right to the assignee ; be signed by both the assignor and the assignee.
An assignment agreement in Australia is a contract that includes the rights and responsibilities of the assignor and assignee. It also covers your legal obligations and includes a warranties clause to protect all parties involved. Some key points covered in a IP assignment agreement can include: Who is involved; What property is being transferred;
You'll be able to make most updates through online services. The details that you'll need to update will depend on the type of IP right. As each IP right is seen as a single right, updating details on one won't automatically change it on another. You'll need to update your details for each right that you own or have applied for.
Application for an extension of time under section 224 for acceptance. 19 June 2023. Complete this form to apply to extend the due date for Acceptance beyond 21 months after the date of the Examiner s 1st report to allow further time for submissions. This form is also to be used for payments where the Acceptance due date has already passed.
IP Australia requires you to attach relevant documentary evidence to support the request for assignment. The necessary evidence and forms must be signed and dated by the parties (the previous owner/s and the new owner/s). The most common forms of evidence include providing a: deed of assignment; letter of assignment; sales agreement; declaration;
An Intellectual Property Assignment Agreement is a document by which someone releases some intellectual property which they created such as a work of art, a writing, a film. some computer code, or any other piece of intellectual property ("the work") and gives away or transfers all the rights to someone else. This type of agreement is used in situations where the creator of the work ("the ...
What is IP and IP Assignment? Intellectual property, or "IP", refers to the various rights available under the law for intangible property - this can be things like brand names, logos, original content and software code. In almost every kind of business, intellectual property is one of the most valuable aspects of the business and should ...
The Department of Education acknowledges the Traditional Owners and Custodians of Country throughout Australia and their continuing connection to land, waters and community. We pay our respects to them and their cultures, and Elders past and present. The Assignment Agreement is for use to legally transfer ownership of intellectual property (IP ...
A deed of assignment, often referred to as a rights agreement or IP transfer agreement, is a contractual agreement used to transfer ownership of specific intellectual property from one party to another. This is a permanent transfer and the assignor won't have any more rights to its intellectual property. At Progressive Legal, we emphasise the ...
The Assignment Agreement is for use to legally transfer ownership of intellectual property (IP) from one party to another, for example when a party is the owner of IP developed by the other party under a joint research collaboration. Assignment Agreement Template. Assignment Agreement Plain English Guidance Document. Assignment Agreement Pack.
What this checklist will cover. This checklist will: 1. increase your awareness as to how much IP you have in your business; 2. allow you to consider whether all the major boxes have been ticked; 3. provide guidance on whether there are other forms of IP you should obtain or move to register to protect; and.
Search existing patents. 3. Understand costs and timings. Make sure you understand how long it takes to register a patent and the costs involved. Timeframes and fees. 4. File your application. Follow our step-by-step guide to prepare and submit an Australian patent application. Then, log on to our online services to apply.
27. Annex A1 - An example of a letter of consent. An example of a letter of consent. As owners of trade mark 1234567 ABCXYZ in Class 12, we hereby consent to the use and registration of the trade mark ABCXYZ filed under application 789999 by XYZ Tractor Company Pty Ltd in respect of "Tractors" in Class 12.