Intellectual Property Sale Agreement

What Is Intellectual Property?

Intellectual property rights allow creators and owners of patents, trademarks or copyrighted work, to benefit from from their own work or investment. The creations and ideas generated of the mind in the form of inventions, artistic, literary works, symbols, names and images used for commercial purposes can be referred to as intellectual property. Intellectual property can be divided into two categories.

Industrial Property  

Industrial property comprises of patents for inventions, trademarks, industrial designs and geographical indications. The owner of a registered industrial design or a person who owns a design patent, has the right to prevent third parties from making, selling or importing articles of a protected design.  

Copyright

A copyright covers literary works (Poems, plays, and novels), music, films, artistic works (drawings, paintings, photographs, sculptures) and architectural designs. Copyright protects performing artists, producers of phonograms in their recordings and broadcasters in radio and  television programs.

Legal Validity of Intellectual Property Rights

Intellectual Property Rights are outlined in Article 27 of the Universal Declaration of Human Rights (UDHR) which provides for the right to benefit from the protection of moral and material interests. The importance of intellectual property was first recognized in the Paris Convention for the Protection of Industrial Property (1883) and Berne Convention for protection of literary and artistic works (1886). Both these treaties are administered the the World Intellectual Property Organisation (WIPO).

What Is An Intellectual Property Sale Agreement?

An Intellectual Property Agreement is a written and enforceable contract that formalises an agreement between two companies for the purchase and sale of intellectual property rights. Intellectual property that is being purchased consists of copyrights, trademarks or patents.

On the contrary, Assignment Agreements vary from that of license agreements such that they help in transferring the ownership of that intellectual property from the assignor to the assignee. A license agreement only authorises the licensee to use the intellectual property for a given period of time. Assignment Agreements cannot be compared to a negotiable instrument because in case of negotiation, the transferee may get a better title than transferor that can never happen in an assignment or transfer.  

Different Ways Of Assigning Intellectual Property

Assigning Of Copyrights

Assigning Intellectual property through copyrights provide protection to authors, composers and artists against unauthorized usage of their work. Copyrights are personal movable property that can be transferred via an assignment agreement from one person to another.

Sections 18,19 and 19(a) of the Indian Copyright Act, 1957 govern the assignments of copyrights. Simultaneously, Section 18 of the Act provides every copyright holder the right to transfer his/her copyright to an assignee by means of a contract.

Section 19(1) of the Copyright Act, 1957 states that no assignment of the copyright on any work shall be considered void unless it is in writing and signed by the assignor or by his authorized agent.

Assigning Of Patents

A patent is an individual right given to a person who has invented and improvised a new and article. The patentee can prevent any person from using the patented invention during the term of the patent. Patent law is covered under the Patents (Amendment) Act, 1970, which has undergone extensive amendments vide the Patents (Amendment) Act, 1999; Patents (Amendment) Act, 2002 and Patents (Amendment) Act, 2005.

Assignments under Patent refers to the act of the Patentee by which the patent rights are wholly or partially transferred to the assignee who acquires the right to stop others from making, using, exercising or vending the invention.

Assigning Of Trademarks

Trademarks help consumers distinguish between brands. A trademark can be in the form of any word, name symbol, device or any combination that is used by a manufacturer or a retailer of a product. This helps consumers in identifying the product and distinguish it from other products. 

Chapter V of the Trademarks Act, 1999 deals with the transfer of trademark by means of assignment and transfer. Only the registered proprietor has the right to assign a trademark, according to Section 37 of the Act. Trademarks in the country can be assigned with or without goodwill.

Assignment Of Geographical Indications

Geographical indications have been defined under Section 2(e) of the Geographical Indications of Goods (Registration and Protection) Act, 1999. It is an indication that is used to identify agricultural,natural and manufactured goods/ products originating from a specific geography.

Section 24 of the geographical Indication of Goods Act, 1999 states that assignment, transmission, licensing, pledge, mortgage or any such agreement is prohibited by law. The right over a geographical indication can only be passed onto another person except on the death of the authorised user.

Assignment Of Designs

When one admires the sleekness of an LED television or the shape of a new car, they are referring to its aesthetic design properties. The Designs Act, 2000 is to protect new or original designs that was created to be applied or applicable to a specific article to be manufactured by industrial processes.

Section 30 of the Design Act along with Sections 32, 33, 34, and 35 recognises the value of a contract or agreement relating to assignment of designs and provides procedures that regularises it. The Act also makes it clear that for an assignment to be valid, it must be in writing and the agreement between the parties concerned has to be reduced to the format that comprises of all the terms and conditions that embody their rights.

Assignment Of Biological Resources

The Biological Diversity Act, 2002 was created on the basis to conserve and sustainably use and distribute benefits accruing from use of biological resources. The Act prevents anyone from claiming an intellectual property right such as patent over biodiversity without permission of the Indian Government.

There is no specific provision in the Biological Diversity Act, 2002 that deals with assignment agreement. However, assignment agreements are not prohibited by the Biological Diversity Act, 2002, provided the assignment does not infringe any other rules of the Act.

Assignment Of Plant Vicinities

An ongoing need was felt in the later part of the 20th century to provide protection of different plant varieties, farmer’s rights and plant breeders, in order to encourage the development of new varieties of plants.  

Assignment agreements are permitted under the Plant Varieties and Farmers Rights Act, 2001. With the help of an assignment a plant breeder can transfer his right of ownership upon the plant strain he created, to another person in return for monetary purposes. Section 16(1)(c) of the Plant Varieties and Farmers Rights Act, 2001 provides rules regarding the legal validity of assignment agreements.

Assignment Of Semiconductor Integrated Circuits Layout

Semiconductor integrated circuit is an electronic circuit that is used in almost all electronic equipment in use today and have revolutionized the world of electronics. The number of electronics an individual uses is an example of how important a semiconductor circuit or chip is in the modern world.

Chapter V of the Semiconductor Integrated Circuits Layouts Design Act, 2000 deals with assignments and transmissions. The Act also allows owner of the the layout design to give valid receipts for any consideration received for such assignment.