Intellectual Property Rights (IPRs) can be transferred to another person or company either by way of an assignment or by licensing the IPR to the other party. The method chosen will depend on whether the transferor wishes to retain ownership over the IPR being transferred.
Assignment
Where a person or company wishes to sell their IP rights in the protected property to another, they will need to ensure that these rights are assigned to the buyer to allow them to benefit from and be able to exploit the IPR in the protected property.
An assignment of intellectual property agreement will need to be drafted, which will contain the price which the buyer will be paying for the IPRs, warranties (factual statements) and indemnities (promises to reimburse to cover claims following assignment).
Warranties may include that the seller is the rightful owner of the IPRs, that the IPRs have not been licensed to a third party and the seller is not aware of any infringement of the IPRs.In relation to indemnities, the buyer will likely seek an indemnity that if, following the sale, they face a claim by a third-party for IP infringement, the seller will cover all costs and expenses in defending the claim.
Licensing
Where a person or company wishes to retain ownership over the IPRs but enable another person or company to use the IPR, then a licence could be granted and the licensor (the one granting the licence) could charge either a one-off lump sum or a periodic fee for the buyers use of the IPRs.
The Licensor will also need to decide whether an exclusive or non-exclusive licence will be granted to the buyer, the latter enabling multiple licensees to exploit the IPR.
The decision is likely to be centred around ownership and whether the owner of the IPRs wishes to retain it.
