License and assignment contracts

Learn how to defend your digital assets with expert advice

Every IP and IT asset can be transferred and can circulate on the market.

Trademark, patent, utility models, designs, copyright, know-how rights can be objects of agreements and therefore can be conferred in companies, assigned definitely or licensed.

Choosing the type of contract most suitable for the needs of an organization or of the author of a copyright protected work has a crucial strategic relevance and must answer to the specific need of the owner of the relative rights.

Knowing the differences between assignment and license is only the first step to be able to carry out a transfer, definite or temporary, of the rights on immaterial goods. Subsequently, it is necessary to choose a specialized professional expert to identify the real need and purpose to be pursued, to then punctually regulate every profile relating to the operation.

Assignment

Generally, an assignment occurs when the owner of a right transfers it to others permanently. Therefore, with an assignment agreement, the permanent transfer of the right to the purchaser occurs, who becomes the exclusive owner, just as it happens in sales.

Differently from the common sales, the assignment of IP and IT rights presents other complexity profiles due mainly to the immateriality of the goods.

Preliminarily, identifying precisely the transfer object and carrying out all the appropriate verifications on the validity of the title, the existence of possible complaints or limitations to its exploitation become essential.

Subsequently, the conditions of the assignment must be regulated analytically on the basis of the agreement reached by the parties. It is important to be sure that there is no margin of error left, not even for those aspects that the parties did not take into consideration.

In fact, it is possible to assign all or parts of the rights of the owner, just as it is possible to regulate the conditions of the assignment, foreseeing limits and specific precautions.

We assist the client in the preliminary phase and the negotiation preceding the assignment, highlighting all the relevant aspects of the transaction and foreseeing the most suitable solution depending on the context.

We then draft the contract and the execution of all the necessary formalities of the transcription and registration at the competent offices, both national and foreign.

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License

Even the license, like the assignment, is an agreement with which one’s own right on trademark, patents, utility models, designs copyrights, know-how are conceded to others.

The main difference with the assignment is that in the license agreements the ownership of the right remains with the licensor, which grants to others the right to exploit it for a generally limited time.

If, therefore, we can compare the assignment with a sale, the license could be compared with a lease or rent.

The content of the license agreements changes on the basis of the contracts between the single parties and the variables to take into consideration can be different. We can determine that the license will have an exclusive or non-exclusive nature, that it will be temporary or perpetual, free or paid, limited to a determined territory or valid in the entire world.

Moreover, the license contracts present complexity profiles due mainly to the immateriality of the goods at disposal.

Preliminarily, identifying precisely the object of the license and carrying out all the adequate verifications on the validity of the title, the existence of possible complaints or limitations to its exploitation becomes essential.

Subsequently, the license conditions must be analytically regulated on the base of the agreement reached by the parties, ensuring that there are no margins of uncertainty. It is extremely important to avoid any risk of possible conflict between the rights and powers granted to the licensee and the rights remaining with the licensor.

We assist the client in the preliminary phase and the negotiations preceding the assignment, highlighting all the relevant aspects of the transaction and foreseeing the most adequate solution to the context.

We then draft the license and the execution of all the necessary formalities of transcription and registration at the competent offices, both national and foreign.

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