Quitclaim Intellectual Property Assignment Agreement | Practical Law
Quitclaim Intellectual Property Assignment Agreement
Practical law standard document w-002-7208 (approx. 9 pages).
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Trademark assignments: Transferring ownership or changing your name
Trademark owners may need to transfer ownership or change the name on their application or registration. This could happen while your trademark application is pending or after your trademark has registered. Use Assignment Center to transfer ownership or to request a change in name. See our how-to guide for trademarks on using Assignment Center.
Here are examples of common reasons:
- I’ve sold my business and need to transfer ownership of the trademark. This is a transfer of ownership called an assignment.
- I got married just after I filed my application and my last name changed. This is a name change of the owner.
There are fees associated with recording assignments, name changes, and other ownership-type changes with the USPTO. See the Trademark Services Fee Code “8521” on the current fee schedule to find the specific fee amount.
See the correcting the owner name page to learn if you can correct an error in the owner's name that does not require an assignment.
Limitations based on filing basis
Intent-to-use section 1(b) applications.
If you’re transferring ownership to a business successor for the goods or services listed in your identification, you can file your assignment at any time. In all other cases, you must wait until after you file an Amendment to Allege Use or a Statement of Use before you file your assignment. For more information, see the Trademark Manual of Examining Procedure (TMEP) section 501.01(a) .
Madrid Protocol section 66(a) U.S. applications and registrations
All ownership changes involving international registrations must be filed with the International Bureau of the World Intellectual Property Organization (WIPO). Follow the guidance on the WIPO website about changing ownership or changing an owner’s or holder’s name. See the TMEP section 502.02(b) for more information.
How to update ownership information
Submit a request to transfer ownership or change the name.
Use Assignment Center to submit your request to transfer ownership or change the owner name for your U.S. application or registration. You will need to fill out a cover sheet with certain information and may also need to upload supporting documents, depending on the type of change. Also, be prepared to pay the Trademark Services Fee Code “8521” on the current fee schedule .
You'll receive a notice of recordation or non-recordation
In about seven days, look for your notice. If you don’t receive one, contact the Assignment Recordation Branch . The Notice of Non-Recordation will explain the reason your request to record was denied. Here are four common reasons:
- A critical piece of information was omitted from the cover sheet.
- The document is illegible or not scannable.
- The information on the cover sheet and the supporting document do not match.
- The assignment was not transferred with the good will of the business.
USPTO trademark database will be automatically updated after recordation
Once recorded, the trademark database should reflect the new owner information or name change. Check the Trademark Status and Document Retrieval (TSDR) system to see if the owner information has been updated. See below for information about what to do if the database isn’t updated.
What to do if the USPTO trademark database isn’t updated
In some cases, the USPTO will not automatically update the trademark database to show the change in ownership or name. This could happen when the execution date conflicts with a previously recorded document or multiple assignments have the same execution date on the same date. For more information, see TMEP section 504.01 .
If the trademark database wasn’t updated and your trademark has not published in the Trademark Official Gazette yet, and you need to respond to an outstanding USPTO letter or office action, use the appropriate Response form to request the update of the owner information. If you don’t have a response due, use the Voluntary Amendment form . To do this,
- Answer “yes” to the question at the beginning of the form that asks if you need to change the owner’s name or entity information.
- Enter the new name in the “Owner” field in the “Owner Information” section of the form.
Your request to update the owner information will be reviewed by a USPTO employee and entered, if appropriate. To request the owner information be updated manually when your trademark has already published or registered, use the appropriate form listed in the “Checking the USPTO trademark database for assignment/name change” section below.
If you made an error in your Assignment Center cover sheet
Immediately call the Assignment Recordation Branch to request possible suspension of the recordation. The recordation may be suspended for two days. You’ll be instructed to email the specialist you speak with requesting the cancellation and that a refund be issued. However, if the assignment has already been recorded, your request will be denied. You must then follow the procedures outlined in the TMEP section 503.06 to make any corrections to the assignment.
We strongly recommend filing these changes online using Assignment Center , which will record your changes in less than a week. It is possible to request these changes by paper using the Recordation Form Cover Sheet and mailing the cover sheet, any supporting documentation, and fee to:
Mail Stop Assignment Recordation Branch Director of the U.S. Patent and Trademark Office PO Box 1450 Alexandria, VA 22313-1450
If you file by paper, we will record your changes within 20 days of filing.
Checking the USPTO trademark database for assignment /name change
After you receive a Notice of Recordation, wait one week before checking to see if the owner information has been updated in your application or registration in the trademark database. Follow these instructions:
- Go to TSDR .
- Enter the application serial number or registration number.
- Select the “Status” button.
- Scroll down to the “Current Owner(s) Information” section.
- Check to see that your owner information was updated correctly.
If the owner information hasn’t yet been updated, go to the “Prosecution History” section in TSDR to see the status of the assignment or name change. It can take up to seven days to see an entry in the Prosecution History regarding the assignment. If an entry shows "Ownership records not automatically updated," you will need to submit a TEAS form making the owner or name change manually.
The form you need depends on where your application is in the process.
- If your trademark has not published in the Trademark Official Gazette yet, use the TEAS Response to Examining Attorney Office Action form or the TEAS Voluntary Amendment form . If you are responding to an outstanding USPTO Office action regarding your application or registration, use the TEAS response form.
- If your trademark has published but hasn't registered, use the TEAS Post-Publication Amendment form .
- If your trademark is registered , use the TEAS Section 7 Request form . A fee is required.
Updating your correspondence information
If your ownership information is automatically updated in TSDR , you must ensure your correspondence information, including any attorney information, is also updated. To update your correspondence or attorney information, use the TEAS Change of Address or Representation (CAR) form . This form cannot be used to change the owner name.
For further information, see TMEP Chapter 500 and look at the frequently asked questions .
Additional information about this page
Considerations for Patent Assignments After Minerva Ruling
- Post author By Austen Zuege
By Austen Zuege & Benjamin Edlavitch
A version of this article about patent assignments and assignor estoppel appeared in an online magazine on August 4, 2021 as intellectual property “expert analysis”.
For many decades, the terms and content of patent assignments have been relatively uncontroversial. However, the Supreme Court’s recent ruling in Minerva Surgical, Inc. v. Hologic, Inc. established that assignor estoppel will apply to some assignments but not others. [i] Consequently, the execution of an assignment of patent rights is now potentially more contentious than before. Parties to an assignment may now wish to scrutinize the terms of an assignment document as well as the factual context around the execution of an assignment that may give rise to implied terms. What follows is an analysis of practical considerations for a patent assignment, including sample assignment clauses that might be negotiated, in light of Minerva .
Minerva reaffirmed the doctrine of assignor estoppel but limited its scope to what an assignor represents in assigning patent rights. The assignor is estopped from challenging the validity of the patent when the “assignor’s claim of invalidity contradicts explicit or implicit representations” the assignor made. [ii] A key aspect of the Court’s holding involved determining the scope of “implicit representations” that result in assignor estoppel.
The Minerva Decision
Inventor Truckai had assigned patent applications to Novacept, Inc., which was later acquired by Hologic, Inc. [iii] Afterwards, Truckai founded Minerva Surgical, Inc., and Hologic sued Minerva for patent infringement on resulting patents. [iv] Hologic argued that assignor estoppel barred Minerva from arguing the patents were invalid and the district court and the Federal Circuit both found that assignor estoppel barred the defendant from pursuing invalidity defenses. [v] The Court vacated and remanded the case in a 5-4 ruling and explained that “the limits of the assignor’s estoppel go only so far as, and not beyond, what he represented in assigning the patent application.” [vi] Therefore, “if Hologic’s new claim is materially broader than the ones Truckai assigned, then Truckai could not have warranted its validity in making the assignment” and, thus, “there is no basis for estoppel.” [vii]
The Court outlined a total of three examples where assignor estoppel does not apply. “One example . . . is when the assignment occurs before an inventor can possibly make a warranty of validity as to specific patent claims. Consider a common employment arrangement. An employee assigns to his employer patent rights in any future inventions he develops during his employment; the employer then decides which, if any, of those inventions to patent. In that scenario, the assignment contains no representation that a patent is valid. How could it? The invention itself has not come into being.” [viii] “A second example is when a later legal development renders irrelevant the warranty given at the time of assignment.” [ix] Thirdly, a post-assignment change in patent claim scope in which the “new claims are materially broader than the old claims” does not trigger assignor estoppel. [x] This last example was the situation alleged in Minerva : materially broader continuation claims filed after execution of the assignment were not subject to assignor estoppel because the Court held there was no implied warranty of validity. [xi] While the majority opinion helpfully gave a few examples of circumstances that would or would not give rise to an implied warranty, they are hardly exhaustive and do not reach some fairly common assignment scenarios, leaving some ambiguity. [xii]
Practical Considerations and Possible Assignment Clauses
Almost all of the factors that determine whether assignor estoppel will apply may be within the control of the parties to an assignment. It may be possible to include explicit terms in the assignment document in order to avoid later dispute about what was or was not implied by circumstances of execution. The question becomes, what are the sorts of terms that assignors and assignees may now wish to consider? The following are simply examples; particular parties will have different interests and their relative bargaining power will of course vary from one situation to the next. Though as discussed below the enforceability of certain terms should not be assumed in all scenarios.
Assignees will now have motivations to try to add clauses to employment and services agreements establishing assignment obligations with some or all of the following additional terms: assignment timing requirements ( i.e. , after assignor estoppel attaches), requirements for non-quitclaim assignment or warranty of validity requirements, and express no-challenge clauses. For example, if an assignee’s claims are materially broadened, then the assignor could not have warranted the claims’ validity at the time of the assignment and there is no basis for assignor estoppel, as the Court held in Minerva . [xiii] Assignees seeking to acquire patent rights on a stand-alone basis will now have reasons to do one or more of the following: add an express warranty of validity or a no-challenge clause to an assignment, obtain a further post-grant warranty of validity (especially if any claim is materially broader), obtain a new assignment with each continuation or divisional application having materially different claims (especially any broader claims), and include a choice of law provision. The following are sample clauses that might be used to pursue assignee objectives:
I hereby waive all my rights to challenge validity of said invention in the United States and its territorial possessions and in all foreign countries and of all Letters Patent or similar legal protection in the United States and its territorial possessions and in any and all foreign countries to be obtained for said invention by said application or any continuation, continuation-in-part, divisional, renewal, substitute, or reissue thereof or any legal equivalent thereof in a foreign country for the full term or terms for which the same may be granted. [No-challenge clause for stand-alone assignment]
I hereby waive all my rights to challenge validity of any and all inventions which I may solely or jointly conceive or develop or reduce to practice, or cause to be conceived or developed or reduced to practice, during the period of time I am in the employ of the Company in the United States and its territorial possessions and in all foreign countries (collectively, “the Invention(s)”) and of all Letters Patent or similar legal protection in the United States and its territorial possessions and in any and all foreign countries to be obtained for the Invention(s) by any application or any continuation, continuation-in-part, divisional, renewal, substitute, or reissue thereof or any legal equivalent thereof in a foreign country for the full term or terms for which the same may be granted. [No-challenge clause for employment agreement]
Assignors (including employee-inventors [xiv] ) will now have greater reasons to question and push back against terms present in—or missing from—assignee-supplied assignment forms. As the Supreme Court put it, assignor estoppel “raises the price of patent assignments.” [xv] For example, assignors will have reasons to demand one or more of the following: insist upon only a quitclaim assignment [xvi] or language expressly denying any warranty of validity, inserting a clause that assignor estoppel shall not apply, sign an assignment only with regard to a patent application lacking claims, [xvii] refuse to sign any “confirmatory” assignment that gives rise to a new warranty, and negotiate additional consideration ( e.g. , larger payment, bonus(es), a raise in base compensation, promotion in job title, etc.) if an assignee expects any express or implied warranty. The following are sample clauses that might be used to pursue some of those assignor objectives:
I hereby make this assignment without representation or warranty as to patentability or validity of said invention. [No Warranty of Validity]
It is possible that an assignor could unilaterally write-in additional terms into an assignment form prepared by the assignee, given that only the assignor conventionally signs an assignment under U.S. law. [xviii] Assignees might be faced with scenarios where further consideration is required to subsequently “undo” terms unilaterally written-in by the assignor if consideration was already paid—giving rise to assignees withholding payment until the executed assignment (free from unilateral modifications) is delivered.
Given that assignors and assignees may have widely divergent interests, with each seeking to receive more in exchange for less, there may be a need to reach a compromise with regard to assignment terms. For example, one or more of the following terms might be agreed to: explicitly spell out what due diligence has or has not been performed and expressly include a partial warranty of validity limited to actual knowledge and due diligence activities and/or include express language that assignor estoppel is limited only to validity challenges based on the law as it exists at the time and/or only to prior art of which the assignor was actually aware at the time (putting the obligation on the assignee to inform the assignor of all material prior art). [xix] The following are sample clauses that might be used to pursue some of those compromise objectives:
After performing due diligence, I hereby warrant and represent my belief in the validity of the specific claims presented to me as of the Effective Date of this Assignment to define said invention only with regard to prior art actually known to me as of the Effective Date and only with regard to patent statues, regulations, case law, and any other controlling authorities in effect as of the Effective Date, but this warranty does not extend to any other patent claims that are materially broader than the specific claims presented to me as of the Effective Date, and I hereby accept no liability for any finding of unpatentability or invalidity by any competent authority; and [Partial Warranty of Validity]
I agree, upon payment of a reasonable fee, to conduct further due diligence with respect to any materially broader claim and to make a similar warranty and representation of my belief in validity of that materially broader claim if, in my discretion, such a warranty and representation is justified by all of the facts and information available to me at that time. [Promise to Make Future Warranties for a Reasonable Fee]
The enforceability and effectiveness of warranties of validity and related contractual clauses present a number of other issues. Among those is the need for consideration in order for an assignment to constitute a valid contract. [xx] This is where an inventor bonus program could be useful—a bonus could be provided as consideration for an assignment and an explicit warranty, or even just for the warranty alone.
Obligations to assign, such as in employment agreements, are subject to state (or foreign) law. [xxi] But obligations to assign do not necessarily also create an obligationto warrant as to validity. A party under an obligation to assign might therefore refuse to provide a warranty of validity absent receipt of further consideration. And the enforceability of an employment agreement or master services agreement that purports to impose a prospective obligation to warrant validity of an invention not yet conceived is a question distinct from the enforceability of prospective obligations to assign, and may need to be sorted out by courts.
To even further complicate things, it has been suggested that a confirmatory assignment could create a warranty of validity that did not attach to an earlier assignment. [xxii] That position seems doubtful, though it turns on the particular language used. A true “confirmatory” assignment merely acknowledges (confirms) a prior assignment, perhaps curing technical defects such as to fix a typo, add missing information needed to accommodate recordation requirements in particular jurisdictions, or to omit sensitive price information in a publicly recorded version. If the prior assignment contained no warranty of validity, express or implied, then merely confirming that prior (warranty-less) assignment creates no new warranty. That would be especially true for nunc pro tunc assignments that relate back to the effective date of an earlier warranty-less assignment. Many assignments include boilerplate language about further writings to effectuate the transfer in the event of a technical defect or barrier to recordability. But if a new warranty is expressly (or implicitly) added to a purportedly “confirmatory” assignment, then the assignment is not really (or not merely) a confirmatory assignment and there must be consideration for the new warranty term—continued employment alone would not be sufficient consideration in some states. [xxiii]
The execution of an assignment of patent rights is now potentially more contentious than before. However, it seems that amending an assignment in light of Minerva may reduce disputes subsequent to its execution.
Have an invention you would like to patent? Have a brand you would like to register as a trademark? Concerned about infringing someone else’s intellectual property? Is someone else infringing your IP? Need representation in an IP dispute? Austen is a patent attorney / trademark attorney who can help. These and other IP issues are his area of expertise. Contact Austen today to discuss.
[i] U.S. No. 20–440 (June 29, 2021).
[ii] Id. Slip Op. at 1.
[iii] Id. at 2-3.
[iv] Id. at 3.
[v] Id. at 3-4.
[vi] Id. at 16.
[viii] Id. at 15.
[x] Id. at 15-16.
[xi] Id. at 16-17.
[xii] There are also ambiguities in the Court’s decision that stem from shifting terminology. For instance, are (granted) “patent claim(s)” = (pending) patent application claim(s) “presented” to the USPTO = (unfiled) claims prepared by assignee’s attorney = (unfiled) claims prepared by assignor or assignor’s attorney? A “patent claim” is not necessarily synonymous with a “patent application claim”. An assignment knowingly executed while a pending patent application claim stands rejected might arguably carry no warranty, though Minerva does not explicitly address such a scenario.
[xiv] See Bd. of Trs. of Leland Stanford Junior Univ. v. Roche Molecular Sys. , Inc. , 563 U.S. 776, 786 (2011) (“In most circumstances, an inventor must expressly grant his rights in an invention to his employer if the employer is to obtain those rights.”); Banks v. Unisys Corp . , 228 F.3d 1357, 1359 (Fed. Cir. 2000) (“The general rule is that an individual owns the patent rights to the subject matter of which he is an inventor, even though he conceived it or reduced it to practice in the course of his employment.”).
[xv] Minerva , Slip Op. at 14,n.4.
[xvi] See, e.g., Van Renesselaer v. Kearney , 52 U.S. 297, 322 (1851); Black’s Law Dictionary 503 (10th ed. 2014) (quitclaim deed is one that “conveys a grantor’s complete interest or claim in certain real property but that neither warrants nor professes that the title is valid.”). Assignor estoppel for patents is derived from real property law. Minerva , slip op. at 5-6. A patent quitclaim assignment could include language such as “hereby conveys and quitclaims” or “hereby transfers by quitclaim”, and the document title could explicitly use the word “quitclaim” (or “quit-claim”).
[xvii] A U.S. utility patent application (but not a design patent application) can receive a filing date even if lacking a claim. 37 C.F.R. § 1.53 .
[xviii] However, handwritten changes to an assignment are normally initialed and dated by each of the assignor(s) to avoid disputes about post-execution changes not agreed to by the assignor(s). See MPEP § 323 .
[xix] See Mast, Foos, & Co. v. Stover Mfg. Co. , 177 U.S. 485, 493 (1900) (“we must presume the patentee was fully informed of everything which preceded him, whether such were the actual fact or not”); In re Wood , 599 F.2d 1032, 1036 (CCPA 1979) (“we presume full knowledge by the inventor of all the prior art in the field of his endeavor. However, with regard to prior art outside the field of his endeavor, we only presume knowledge from those arts reasonably pertinent to the particular problem with which the inventor was involved.”) accord Airbus SAS v. Firepass Corp. , 941 F.3d 1374, 1380 (Fed. Cir. 2019).
[xx] See Mars, Inc. v. Coin Acceptors, Inc. , 527 F.3d 1359, 1370 (Fed. Cir. 2008) ( “ Construction of patent assignment agreements is a matter of state contract law.”) and Jim Arnold Corp. v. Hydrotech Sys., Inc. , 109 F.3d 1567, 1572 (Fed. Cir. 1997) (“the question of who owns the patent rights and on what terms typically is a question exclusively for state courts”; collecting cases); but contrast, e.g., Hewett v. Samsonite Corp. , 507 P.2d 1119, 1121 (Colo. App. 1973) (continued employment insufficient consideration for patent assignment, which was found invalid for lack of consideration) and Jostens, Inc. v. Nat’l Computer Sys. , 318 N.W.2d 691, 703-04 (Minn. 1982) (mere continued employment provided insufficient consideration under Minnesota law for coercive intellectual property agreement) with, e.g., Preston v. Marathon Oil Co. , 684 F.3d 1276, 1284-85 (Fed. Cir. 2012) (under Wyoming law, no additional consideration is required to support an employee’s post-employment execution of an agreement to assign intellectual property to his employer). A state-by-state or country-by-country survey is beyond the scope of this article.
[xxi] See Allen v. Riley , 203 U.S. 347, 355-57 (1906); Akazawa v. Link New Tech. , 520 F.3d 1354, 1356-58 (Fed. Cir. 2008); see also 35 U.S.C. § 261 ; but see DDB Techs., L.L.C. v. MLB Advanced Media, L.P. , 517 F.3d 1284, 1290 (Fed. Cir. 2008) (whether patent assignment clause creates automatic assignment or mere obligation to assign treated under Federal Circuit law).
[xxii] Dennis Crouch, “Assignor Estoppel Persists — But Only for Claims Specifically Assigned,” Patently-O (June 29, 2021).
[xxiii] See, e.g., Jostens, 318 N.W.2d at 703-04.
- Tags Assignments , Assignor Estoppel , Patents
What Is a Quitclaim Assignment?
Quitclaim deeds offer minimal protection for the buyer.
Ryan McVay/Photodisc/Getty Images
- 1. Certificate of Title Vs. Deed
- 2. What Is the Difference Between the Deed of Absolute Sale and the Deed of Assignment?
- 3. What Are Instruments of Conveyance & Transfer?
Assignment of a deed is the act of transferring that deed to another party and thereby transferring ownership. A quitclaim deed is a type of deed used to transfer real estate. In contrast to other deed types, the quitclaim doesn't offer any sort of protection for the buyer if someone else shows up with a claim on the property.
What Deeds Do
The purpose of a deed is to provide tangible proof of the transfer of real property. The deed generally contains important information about the transfer, such as the date and parties to the transaction. The deed, or an attached real estate transfer contract referenced in the deed, also contains any transfer-related promises that the seller and buyer have made to each other. To transfer the property, the deed must be signed by both seller and buyer.
Assignment of Deed
Assignment is the actual transfer of the property. For a deed to assign property, it must be delivered from the seller to the buyer. The deed doesn't need to be physically delivered; rather, delivery is a legal term for the seller's clear decision to transfer the property. Physical delivery is generally good enough, but a deed can be delivered in other ways: mailed, messengered, or placed in a safe-deposit box to be opened by the buyer. If the seller keeps the deed and there's no evidence that he intended to give it to the buyer, the law won't recognize delivery, and the transfer won't take place.
Most types of real estate deeds offer certain assurances to the buyer. General warranty deeds, for example, provide six warranties, or promises, designed to protect the buyer if a third party shows up with a better claim to the property than the seller. Among other promises, the seller warrants that he owns the property and that if such a third party shows up to stake a claim on the property, the seller will do whatever is necessary to defeat his claim, or make the buyer whole.
The quitclaim deed offers none of the warranties listed above. A quitclaim deed transfers all of the seller's rights to the property, but the quitclaim buyer has no guarantees that the seller has the right to transfer the property to her. If a third party appears and claims the property, the quitclaim buyer will be left to her own resources in defending against that claim. If the third party's claim proves to be superior to that of the seller, the buyer has no legal redress against the seller based on the deed. Note, however, that if the seller and buyer executed a contract separate from the deed, in which the seller made promises about his title to the property, this contract may be a basis for the buyer to sue the seller.
- U.S. Legal: Real Estate Deeds Law and Legal Definition
- MCLE.org: Delivery of Deeds
- 'Lectric Law Library: Quit Claim Deed Form
Erika Johansen is a lifelong writer with a Master of Fine Arts from the Iowa Writers' Workshop and editorial experience in scholastic publication. She has written articles for various websites.
Certificate of title vs. deed, what is the difference between the deed of absolute sale and the deed of assignment, what are instruments of conveyance & transfer, what does "encumbrances" mean in real estate, what is encroachment on property, what is a post-sale quitclaim deed, what happens if you lose a quitclaim deed, tax on quitclaim of principal residence, can a beneficiary challenge a revocable trust, effects of a quitclaim deed on cost basis, what is a leasehold estate, how to sell an easement.
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Quitclaim Intellectual Property Assignment Agreement (Asset Purchase)
This template is a Quitclaim Intellectual Property (IP) Assignment Agreement that may be used in connection with an asset purchase agreement. It provides a starting point for drafting a quitclaim assignment of IP and should be tailored to the specific facts and circumstances of the proposed arrangement. This template contains practical guidance, drafting notes, and alternate clauses. The template does not contain any representations, warranties, guarantees, or any other assurances from the seller regarding the ownership, validity, or enforceability of the seller's right, title, or interest in the IP. It also does not provide for any rights of the seller to retain an interest in or use the transferred IP. If the seller intends to continue to use the IP after consummation of the asset purchase, the parties can either negotiate for joint ownership or, more commonly, licensing of the IP. Various forms of IP may be assigned, including trademarks (registered and unregistered), copyrights ...
Understanding a deed of assignment for intellectual property
A deed of transfer is used to change the ownership of intellectual property, a common occurrence in business. Explore how and when to use one.
Find out more about intellectual property basics
by Brette Sember, J.D.
Brette Sember, J.D., practiced law in New York, including divorce, mediation, family law, adoption, probate and estat...
Updated on: January 22, 2024 · 3min read
Understanding intellectual property in business
How to transfer intellectual property rights in business, what to include in a deed of assignment, registering new ownership, restrictions on intellectual property transfers.
Most companies have intellectual property as part of their assets, including software, product design, or copyright to white papers. Buying or selling such property is done using a document called a deed of assignment.
A large part of what a business consists of may be tied to intellectual property . It's easy to see physical property a company owns, such as a building, office furniture, or inventory, but intellectual property can be more challenging to identify.
Most businesses have intellectual property, or works created by human minds or, in some cases, by computers. Some examples of intellectual property include architectural drawings, ad campaigns, company or product names, inventions, and source code.
Examples of when transfers of intellectual property might happen include when a company is buying another company, when you are setting up an LLC and want to transfer your intellectual property into the company, or when a business buys product rights from another company or individual.
A deed of assignment can be done in one transaction, instead of one transaction for each item of intellectual property, by transferring all ownership rights of all intellectual property detailed in the deed. The document is signed by both the buyer and seller. No payment is required for it to be valid.
A deed of assignment must be in writing and should include:
- The names and addresses of the assignor and assignee
- A description of the program or product for which the rights are being transferred
- A statement that all intellectual property rights to the property are being transferred
- Signatures of the parties and the date of the agreement execution
The deed could also include the following sections, where applicable:
- Consideration, or payment, to be made to the original owner.
- Warranties, or promises that the intellectual property rights being assigned don't infringe on anyone else's intellectual property rights . For example, in a deed regarding the transfer of a copyright, this section could state that the copyrighted work is original and not owned by someone else.
- Indemnification, or promise by the seller to reimburse the assignee if there is some problem with title to the property.
- Future assignments. For example, the agreement could be ongoing, so that anything the assignor creates in the future for this product or program is also transferred to the buyer.
Although a deed of assignment transfers ownership in intellectual property , it does not change the registration of the ownership. The assignee is responsible for handling all registration requirements.
For example, if a patent is transferred via a deed of assignment, the new owner must record the change in ownership with the U.S. Patent and Trademark Office. Similarly, the transfer of a copyright is recorded with the U.S. Copyright Office.
Transfers of intellectual property must comply with U.S. laws. One obvious caveat is that you can't transfer property you don't own. Transfers must also comply with antitrust laws, which are set up to prevent one company from completely dominating an industry.
If intellectual property rights are being transferred overseas, the transfer must comply with Export Administration Regulations and the International Traffic in Arms Regulations , which are designed to protect national security and trade.
The deed of assignment can be a crucial part of a business deal or transaction. You can create a deed of assignment yourself, or you can work with an attorney .
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February 8, 2024 · 15min read
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A quitclaim deed is an important document that transfers an individual's ownership rights to a property or real estate to another person. It can be used in various circumstances, such as resolving disputes, removing a name from the title, gifting property, and transferring property between family members without a sale.
The following blog discusses what a quitclaim deed is, how it works, and its advantages and disadvantages.
Quitclaim deeds are commonly used when the parties know and trust each other, such as transfers between family members or divorcing spouses. They are also used in situations where the seller is not entirely sure of their ownership interest in the property, such as in cases where there may be competing claims or unclear title issues.
How a Quitclaim Deed Works
A quitclaim deed provides no guarantee about the title of the transferred property. Instead, it simply transfers any ownership interest the grantor (the person transferring the property) has in the property to the grantee (the person receiving the property).
The grantor prepares the quitclaim deed. The grantor is the person who currently owns the property and wishes to transfer it to someone else. The grantor must fill out the quitclaim deed, which includes information such as the names and addresses of the grantor and grantee, a legal description of the property, and the date of the transfer.
The grantor signs the quitclaim deed in the presence of a notary public, who will verify the grantor's identity and witness the process. The grantee receives the quitclaim deed. The grantee must receive the original signed quitclaim deed from the grantor.
The grantee records the quitclaim deed. They must file the quitclaim deed with the county recorder's office in the county where the property is located. It creates a public record of the transfer of ownership and helps protect the grantee's ownership interest in the property.
It's vital to note that a quitclaim deed does not guarantee that the grantor has clear title to the transferred property. For this reason, a quitclaim deed is often used when the grantor and grantee are familiar with each other and there is no question about the property's title.
How to Create a Quitclaim Deed
Creating a quitclaim deed involves several steps, including drafting the document, signing it, and recording it with the appropriate county or state authority. Here are the basic steps to create a quitclaim deed:
- Identify the Parties Involved. The first step is to identify the grantor (the person transferring the property) and the grantee (the person receiving the property).
- Obtain the Property Information. Gather information about the property, including the legal description, address, and county where it's located.
- Draft the Quitclaim Deed. Write the quitclaim deed document, including the names of the parties involved, the property description, and a statement indicating that the grantor is transferring any interest they have in the property to the grantee. You can find templates or examples of quitclaim deeds online or hire a real estate attorney to draft one for you.
- Sign the Quitclaim Deed. The grantor must sign the document in front of a notary public or other authorized official.
- Record the Quitclaim Deed. After the document is signed, it must be recorded with the appropriate county or state authority, such as the county recorder's office. This makes the transfer of ownership official and creates a public record of the transfer.
When to use a quitclaim deed.
A quitclaim deed is commonly used when the parties know each other, such as between family members or divorcing spouses. It may also be used to transfer property between business partners or to clear up any questions about ownership.
However, it's important to note that a quitclaim deed may not be appropriate in all situations. For example, if you're buying or selling a property, it's generally recommended to use a warranty deed instead, providing greater protection for the buyer.
It's also important to clearly understand the potential risks involved when using a quitclaim deed, particularly if there are any outstanding liens or other claims against the property. In any case, it's always a good idea to consult with a real estate attorney before using a quitclaim deed to transfer ownership of real property .
Quitclaim Deed vs. Warranty Deed
A quitclaim deed and a warranty deed are both legal documents used in real estate transactions to transfer ownership of a property from one party to another. However, they differ in the level of protection they offer to the buyer.
A quitclaim deed is a document that transfers any interest the grantor (the person transferring the property) has in the property to the grantee (the person receiving the property), but it makes no guarantees or promises about the title.
In other words, the grantor is only transferring their interest in the property without making any warranties or guarantees about the title. This means that the grantee takes on any risks associated with the title, such as any liens, encumbrances, or defects.
On the other hand, a warranty deed is a document that transfers ownership of a property and includes promises or warranties from the grantor that they have clear and marketable title to the property.
It means that the grantor is guaranteeing that they own the property free and clear of any liens or encumbrances and that they have the right to transfer ownership to the grantee. If any issues with the title arise after the transfer, the grantor may be held liable and may have to compensate the grantee for any losses.
Advantages and Disadvantages of Quitclaim Deeds
- Simplicity: A quitclaim deed is a simple way to transfer property ownership without requiring an extensive legal process.
- Cost-Effective: Compared to other types of property transfers, a quitclaim deed is generally less expensive and can be completed quickly.
- Speed: Since there is no need for title searches or insurance, the transfer can happen quickly and without much delay.
- Flexibility: Quitclaim deeds can transfer property to family members, business partners, or anyone else without requiring extensive paperwork or formalities.
- Limited Protection: The grantee of a quitclaim deed has limited protection against any claims that may arise against the property compared to other types of deeds that provide stronger legal protections.
- Not Suitable for All Situations: Quitclaim deeds may not be appropriate for certain situations, such as when buying or selling a property or when a third party is interested.
- Potential for Disputes: If there are any disputes over ownership or claims against the property, a quitclaim deed may not provide enough legal protection for the grantee. It could result in costly legal battles to resolve the dispute.
Quitclaim Deeds and Mortgages
While a quitclaim deed removes an individual's name from the property title and removes that individual's right to property, it doesn't eliminate mortgage responsibilities. A quitclaim deed removes a name but does not absolve that person from needing to pay off any debts they incur as the property's owner.
The mortgage is a separate document from the quitclaim deed. This can come into play during a divorce. For example, if one spouse quitclaims their property to the other spouse, this doesn't remove either spouse's name from the mortgage — nor does it remove the responsibility to pay that mortgage.
The only ways to relieve a borrower from their mortgage obligation are by using:
- A payoff of the mortgage
- A refinance ( Here is an article about refinancing your mortgage)
- A sale of a property that results in a mortgage payoff
Deed transfers, including quitclaim deeds, solely impact property ownership and do not affect existing mortgages on the property.
Although a quitclaim deed removes an individual's name from the property title and their right to the property, it does not release them from any mortgage responsibilities. Even after a quitclaim deed, the individual must continue to pay off any debts they incurred as the property owner.
It is important to note that a mortgage is a separate document from the quitclaim deed, which can become relevant in situations such as divorce. For instance, if one spouse transfers their property to the other spouse using a quitclaim deed, it does not remove either spouse's name from the mortgage nor their obligation to pay it.
To relieve a borrower from their mortgage obligation, they can use one of the following methods: a payoff of the mortgage, a refinance, or a sale of the property that results in a mortgage payoff.
Key Terms for a Quitclaim
- Quitclaim Deed: A legal document that transfers ownership of real property in a state from one person (grantor) to another (grantee) without any warranties or guarantees regarding the property's title or condition.
- Grantor: The person who currently owns the property and is transferring ownership through the Quitclaim Deed.
- Grantee: The person receiving ownership of the property through the Quitclaim Deed.
- Consideration: The amount of money or other valuables exchanged between the grantor and grantee as part of the Quitclaim Deed transaction. It is worth noting, Quitclaim Deeds are often transacted for no consideration, such as gifting or transferring a property.
- Cloud on Title: Any claim, lien, or other encumbrance that could affect the grantee's property ownership, even though the grantor makes no warranties or guarantees about the property's title.
Final Thoughts on a Quitclaim
A quitclaim deed is significant because it provides a simple, cost-effective way to transfer property ownership. However, it provides no guarantees or warranties about the title or ownership.
For help with Quitclaim deeds, we would recommend getting in touch with a real estate lawyer who specializes in these types of documents. Seeking professional legal advice is always the best course of action for this type of transaction.
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Meet some of our quitclaim lawyers.
With 20 years of transactional law experience, I have represented corporate giants like AT&T and T-Mobile, as well as mid-size and small businesses across a wide spectrum of legal needs, including business purchase agreements, entity formation, employment matters, commercial and residential real estate transactions, partnership agreements, online business terms and policy drafting, and business and corporate compliance. Recognizing the complexities of the legal landscape, I am dedicated to providing accessible and transparent legal services by offering a flat fee structure, making high-quality legal representation available to all. My extensive knowledge and commitment to client success establishes me as a trusted advisor for businesses of all sizes.
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Results oriented business attorney focusing on the health care sector. Formerly worked in Biglaw doing large multi-million dollar mergers and acquisitions, financing, and outside corporate counsel. I brought my skillset to the small firm market, provide the highest level of professionalism and sophistication to smaller and startup companies.
Orly Boger has worked in the high tech industry and in a leading law firm before launching her law firm. Orly focuses on startup companies and technology transactions. She structures and negotiates software and technology license agreements, strategic partnerships, cloud-based/SaaS agreements, internet related transactions, OEM agreements, supply, distribution, telecommunications. In addition, Orly has experience in serving as an in-house legal counsel for start up companies at various phases of their development, providing strategic legal advise to entrepreneurs and emerging companies with a comprehensive understanding of the business and legal issues. She has been helping companies develop a legal strategy for all aspects of their operations, from commercial transactions and partnerships, scalable SaaS or services agreements, privacy policies, employment related policies, open source licensing and much more.
Corporate attorney with 14+ years of in-house counsel, people leadership and client management experience. Provides legal expertise and a business-oriented approach to problem solving and building lines of business. Consistently works under pressure, prioritizing and managing workload and simultaneous tasks to meet deadlines in a changing, fast-paced environment.
Jerry provides legal advice to business owners regarding contracts, business law, labor & employment, wills and estates, and real estate.
Seasoned professional with experience in wide variety of contract negotiation and review.
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Can a quit claim be contested after 18 years for any reason.
X is trying filing to contest
Hello! I hope you are well! If X is contesting a defective or invalid deed, and the quitclaim deed has been recorded for at least five years, then the deed will be considered valid. Under Oklahoma law, an instrument (in your case, the quitclaim deed) that has not been acknowledged or which contains a defective acknowledgment shall be considered valid notwithstanding such omission or defect, and shall not be deemed to impair marketability, provided such instrument has been recorded for a period of not less than five (5) years. 16 O.S. §§ 27a & 39a. I would note that my response is limited based on the information that you have provided and that each individual situation may present its own unique issues. I hope this helps!
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