Technology Assignment Agreement Template for Startups

Use this template to transfer intellectual property from founders to your startup. Fill in the bracketed sections with your specific information. This should be executed at or near the time of incorporation. A word document of this form can be found here: Technology_Assignment_Agreement_Template.

TECHNOLOGY ASSIGNMENT AGREEMENT

This TECHNOLOGY ASSIGNMENT AGREEMENT (“Assignment”), dated as of [DATE], is made by [FOUNDER NAME] (“Assignor”), an individual with a principal address at [FOUNDER ADDRESS], in favor of [COMPANY NAME] (the “Company”), a [STATE OF ORGANIZATION] [ENTITY TYPE], located at [COMPANY ADDRESS].

RECITALS

WHEREAS, Assignor owns all right, title, and interest in certain intellectual property and technology as described on Schedule 1 attached hereto (the “Assigned Technology”); and

WHEREAS, Assignor wishes to assign all of their right, title, and interest in the Assigned Technology to the Company, and the Company wishes to acquire the Assigned Technology;

NOW THEREFORE, Assignor agrees as follows:

1. Assignment

For good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged, Assignor hereby irrevocably conveys, transfers, and assigns to the Company, and the Company hereby accepts, all of Assignor’s right, title, and interest in and to the Assigned Technology, on a worldwide basis, and any and all claims and causes of action with respect to the Assigned Technology, whether accruing before, on, or after the date hereof, including all rights to and claims for damages, restitution, and injunctive and other legal and equitable relief for past, present, and future infringement, misappropriation, or violation.

2. Consideration

As consideration for the assignment to the Company under this Agreement, the Company agrees to issue to Assignor [NUMBER IN WORDS] ([NUMBER]) restricted common stock shares of the Company pursuant to the Stock Purchase Agreement between the Company and Assignor of even date herewith.

3. Further Actions and Recordation

(a) Following the date hereof, upon the Company’s reasonable request, and at the Company’s sole cost and expense, Assignor shall take such steps and actions, and provide such cooperation and assistance to the Company and its successors, assigns, and legal representatives, including the execution and delivery of any affidavits, declarations, oaths, exhibits, assignments, powers of attorney, or other documents, as may be reasonably necessary to effect, evidence, or perfect the assignment of the Assigned Technology to the Company, or any assignee or successor thereto.

(b) Without limiting Section 3(a), upon the Company’s request, Assignor shall execute and deliver to the Company an assignment in the form set out in Exhibit A and duly executed by Assignor, to record and perfect with the United States Patent and Trademark Office and United States Copyright Office and the registries and other recording governmental authorities in all applicable jurisdictions the assignment to the Company of all of Assignor’s right, title, and interest in and to the patents, patent applications, registrations, and applications for registration of copyrights listed in Schedule 1; provided that, as between Assignor and the Company, the Company will be responsible, at the Company’s expense, for filing the Assignment, and other documents, certificates, and instruments of conveyance with the applicable governmental authorities.

(c) At the Company’s request, Assignor will advise or give testimony in any proceeding relating to the ownership, validity, or scope of the Assigned Technology.

(d) To the extent any copyrights are assigned under this Agreement, Assignor hereby irrevocably waives, to the extent permitted by applicable law, any and all claims Assignor may now or hereafter have in any jurisdiction to all rights of paternity, integrity, disclosure, and withdrawal and any other rights that may be known as “moral rights” with respect to the Assigned Technology.

(e) The obligations set forth in this Section 3 will continue after Assignor no longer holds an equity interest in the Company, provided that the Company will compensate Assignor at a reasonable rate after Assignor no longer holds an equity interest in the Company for time actually spent by Assignor at the Company’s request on such assistance.

(f) In the event that the Company is unable for any reason whatsoever to secure the signature of Assignor to any document reasonably necessary or appropriate for any of the foregoing purposes (including renewals, extensions, continuations, divisions or continuations in part), Assignor hereby irrevocably designates and appoints the Company and its duly authorized officers and agents as their agents and attorneys-in-fact to act for and on behalf of them, but only for the purpose of executing and filing any such document and doing all other lawfully permitted acts to accomplish the foregoing purposes with the same legal force and effect as if executed by Assignor. This power of attorney is coupled with an interest and will not be impacted by Assignor’s subsequent incapacity.

4. Representations and Warranties

Assignor represents and warrants that:

• Assignor is the sole owner of the entire right, title, and interest in and to the Assigned Technology and has not granted any license, assignment, or other right to the Assigned Technology to a third party;
• Assignor has the full and exclusive right and authority to enter into this Assignment and grant the rights hereunder without the consent of any third party;
• The Assigned Technology is free and clear of all claims, liens, encumbrances and the like of any nature whatsoever;
• Assignor is not obligated under any consulting agreement, employment agreement, or other agreement or obligation that conflicts with, or would prevent Assignor from fully performing Assignor’s obligations under, this Assignment; and
• To the best of Assignor’s knowledge, none of the Assigned Technology infringes, conflicts with, or violates any patent or other intellectual property right of any kind of any third party.

5. Counterparts

This Assignment may be executed in counterparts, each of which shall be deemed an original, but all of which together shall be deemed one and the same agreement. A signed copy of this Assignment delivered by facsimile, email, or other means of electronic transmission shall be deemed to have the same legal effect as delivery of an original signed copy of this Assignment.

6. Successors and Assigns

This Assignment will be binding upon and inure to the benefit of the parties hereto and their respective successors and assigns.

7. Governing Law and Miscellaneous

This Assignment and any claim, controversy, dispute, or cause of action (whether in contract, tort, or otherwise) based upon, arising out of, or relating to this Assignment and the transactions contemplated hereby will be governed by, and construed in accordance with, the laws of the United States and the State of [STATE], without giving effect to any choice or conflict of law provision or rule (whether of the State of [STATE] or any other jurisdiction).

This Assignment, including the exhibits, schedules, and other documents and instruments referred to herein, constitutes the sole and entire agreement of the parties to this Assignment with respect to the subject matter contained herein and therein, and supersedes all prior and contemporaneous understandings and agreements, both written and oral, with respect to such subject matter.

If any term or provision of this Assignment is invalid, illegal, or unenforceable in any jurisdiction, such invalidity, illegality, or unenforceability shall not affect any other term or provision of this Assignment or invalidate or render unenforceable such term or provision in any other jurisdiction. Upon a determination that any term or provision is invalid, illegal, or unenforceable, the court may modify this Assignment to affect the original intent of the parties as closely as possible in order that the transactions contemplated hereby be consummated as originally contemplated to the greatest extent possible.

This Assignment may only be amended, modified, or supplemented by an agreement in writing signed by each party hereto. Failure by either party to exercise any of its rights hereunder shall not constitute or be deemed a waiver or forfeiture of such rights.

SIGNATURE

IN WITNESS WHEREOF, Assignor has duly executed and delivered this Assignment as of the date first above written.

[ASSIGNOR NAME]

By: ________________________________

Name:

Title:

Address for Notices:

SCHEDULE 1: ASSIGNED TECHNOLOGY

Assigned Technology includes:

(a) All technology relating to [COMPANY’S BUSINESS], including, without limitation, all inventions (whether or not patentable), software, source code, firmware, repository files, algorithms, integrations, original works of authorship (whether or not copyrightable), designs, plans, processes, test procedures, research and development information, technical data and information, and know how; and

(b) Any and all rights in and to copyrights, trade secrets, patents, and other intellectual property rights therein arising in any jurisdiction throughout the world and all related rights of priority under international conventions with respect thereto, including the patents, patent applications, copyright registrations and applications set out below and continuations, divisions, continuations-in-part, reissues, extensions, and renewals thereof.

Patents

Patent Applications

Copyright Registrations

Copyright Applications

EXHIBIT A: ASSIGNMENT OF PATENTS/COPYRIGHTS

(Use this form to record the assignment with government offices)

For good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged, [FOUNDER NAME], an individual with a principal address in [CITY], [STATE] (“Assignor”), hereby sells, assigns, transfers, and conveys to [STARTUP COMPANY NAME], a [STATE OF ORGANIZATION] [LEGAL ENTITY TYPE], located at [ADDRESS OF BUYER] (“Assignee”), pursuant to the Technology Assignment Agreement dated as of [DATE], by and between Assignor and Assignee, all right, title, and interest in and to the patents, patent applications, and copyrights set forth on Schedule A-1, attached hereto and incorporated by this reference herein, together with all claims and causes of action with respect to any of the foregoing, including without limitation all rights to and claims for damages, restitution, and injunctive and other legal and equitable relief for past, present, and future infringement, misappropriation, violation, breach, or default, and all other rights, privileges, and protections of any kind whatsoever accruing under any of the foregoing provided by any applicable law, treaty, or other international convention.

Assignor hereby authorizes the Commissioner for Patents in the United States Patent and Trademark Office, the Register of Copyrights in the United States Copyright Office, and the officials of corresponding entities or agencies in any applicable jurisdictions to record and register this Assignment of Patents and Copyrights upon request by Assignee.

IN WITNESS WHEREOF, the undersigned has caused this Assignment to be executed on this [ORDINAL NUMBER] day of [MONTH], [YEAR].

By: ________________________________

Name:

SCHEDULE A-1

Patents

Patent Applications

Copyrights

Important: This is a template for educational purposes. Have your attorney review and customize it for your specific situation. IP law varies by jurisdiction and your circumstances may require additional provisions.