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Pending Patent Assignment Agreement

This Pending Patent Assignment Agreement is used by a patent holder to assign to another party rights and interests in a patent which is not yet granted. This document contains the material terms and conditions of the agreement including the patent application information, the rights being assigned, and payment details. It contains numerous standard provisions that are commonly included in these types of agreements and may be customized to fit the specific needs of the parties. This should be used by patent holders who have applied for, but not yet been granted a patent and parties wishing to acquire those rights.



Pending Patent Assignment Agreement
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This Pending Patent Assignment Agreement is used by a patent holder to assign to
another party rights and interests in a patent which is not yet granted. This document
contains the material terms and conditions of the agreement including the patent
application information, the rights being assigned, and payment details. It contains
numerous standard provisions that are commonly included in these types of agreements
and may be customized to fit the specific needs of the parties. This should be used by
patent holders who have applied for, but not yet been granted a patent and parties
wishing to acquire those rights.
                         PENDING PATENT ASSIGNMENT AGREEMENT

THIS PENDING PATENT ASSIGNMENT AGREEMENT (hereinafter referred to as “Agreement”)
is made on this _____ [Month] ____ [Date], 20___, by and between ______________________
[Instruction:       Insert        the      name         of       patent        holder], located       at
___________________________________________ [Instruction: Insert the address of patent holder]
(hereinafter referred to as “Assignor”), and ___________________ [Instruction: Insert the name of an
individual or entity desiring to obtain the patent license] , a company organized and existing under the
laws of the _________________, located at ___________________________ [Instruction: Insert the
address of entity/individual] (hereinafter referred to as “Assignee”). Assignor and Assignee may be
referred to individually as “Party” and collectively as “Parties” to this Agreement.

NOW, THEREFORE, in consideration of the payments set out in this Agreement Assignor has
authorized the Assignee to use the patent on the terms and conditions contained herein (“Assignment”).

1. Definition:

    Pending Patent: Pending Patent means that inventor has either filed a Provisional application or a
    complete application for a patent which is not yet granted.

2. Patent Description:

    On _____ [Month] ____ [Date], 20___, Assignor filed for a Provisional Patent application with
    USPTO.

    Patent Title: _____________________________

    Patent Application Serial Number : _____________________________

    and the inventions set forth and described in that Application (“Invention”), and described as follows:

    [Instruction: Insert the Description of Invention]

        ______________________________________________________________________________
        ______________________________________________________________________________
        ______________________________________________________________________________
        ______________________________________________________________________________
        ______________________________________________________________________________
        _____________________________________________________________________________.

3. Assignment:

    Pursuant to and for the consideration set out in Clause below, the Assignor hereby vests, transfers and
    assigns to the Assignee, absolutely with full title guarantee, all its right, title, interest, claim and
    demand in and to the Patent Pending application including :

    a) the right to claim priority from and to prosecute and obtain grant of patent; and

    b) the right to file divisional applications based thereon and to prosecute and obtain grant of patent
       on such divisional application;




© Copyright 2013 Docstoc Inc.                                                                  2
    c) in respect of Invention, the right to file an application, claim priority from such application, and
       prosecute and obtain grant of patent or similar protection in or in respect of any country or
       territory in the world;

    d) the right to bring, make, oppose, defend, appeal proceedings, claims or actions and obtain relief
       (and to retain any damages recovered) in respect of any infringement, or any other cause of action
       arising from ownership of any of the Patents or any patents granted on any of the Patent
       applications filed as aforesaid, whether occurring before, on or after the date of this Assignment.

4. Payment:

    In consideration for the Assignment of the Patents, Inventions and Improvements hereunder, Assignor
    shall receive the following compensation:

    A flat fee of ________ ($___) [Instruction: Insert the amount, e.g., twenty thousand dollars
    ($20,000) dollars as full payment for all rights granted. Payment shall be made upon execution of this
    Agreement.

5. Improvements [OPTIONAL]:

    a) If the Assignor makes, devises, or discovers, or otherwise acquires rights in, any Improvement he
       shall, promptly notify the Assignee in writing, giving details of the Improvement.

    b) Unless prohibited by law, the Assignor shall immediately assign, vest and transfer to the
       Assignee, for no additional consideration, all such Improvements and the Inventions related
       thereto which shall be then regarded as part of the Patents, and the provisions of the Agreement
       shall apply to them (subject to the applicable changes). If any applicable law prohibits such
       Assignment for no additional consideration, the Parties hereby agree that the additional
       consideration to be paid for the assignment of Improvements shall be _________ ($__) [One US
       Dollar ($1)] [Instruction: Insert the amount] dollars.

    c) Notwithstanding the above, if by the operation of law such assignments are not possible, the
       Assignor shall grant the Assignee, for no additional consideration, a worldwide, royalty-free,
       irrevocable, perpetual exclusive license to use, make, manufacture, sell, reproduce,
       distribute, modify, display, prepare derivative works, or any other rights available with respect to
       Improvements and any rights therein.

6. Representations and Warranty:

    The Patent is pending. The Patent covering the Invention for which the Patent application was filed is
    the sole property of the Assignor, without any contribution, assistance, participation or alleged rights
    of any third party.

7. Indemnity:

    The Assignor shall indemnify and hold the Assignee harmless against all and any loss, damages,
    liability and costs (including reasonable legal expenses) that the Assignee suffers or incurs as a result
    of or in connection with any breach by the Assignor of the warranties in Clause 6 above or other
    obligations under this Agreement. At the request of the Assignee and at his expense, the Assignor
    shall provide all reasonable assistance to enable the Assignee to resist any claim, action or




© Copyright 2013 Docstoc Inc.                                                                   3
    proceedings brought against the Assignee as a consequence of that breach. This indemnity shall apply
    whether or not the Assignee has been negligent or at fault.

8. Termination:

    a) Option of Assignee: Assignee may terminate the license granted by this Agreement, provided
       Assignee shall not be in default hereunder, by giving Assignor ___________ (___) [Ninety (90)]
       days written notice of his intention to do so. If such notice shall be given, then upon the
       expiration of such __________ (___) [Ninety (90)] days the termination shall become effective;
       but such termination shall not operate to relieve Assignee from his obligation to pay royalties or
       to satisfy any other obligations, accrued hereunder prior to the date of such termination.

    b) Option to Assignor: Assignor may, at his option, terminate this Agreement by written notice to
       Assignee in case of:

               i.       Default in the payment of fees required to be paid by Assignee to Assignor
                        hereunder;

              ii.       Default in the performance of any other material obligation contained in this
                        Agreement on the part of Assignee to be performed and such default shall
                        continue for a period of ___________ (___) [Ninety (90)] days after Assignor
                        shall have given to Assignee written notice of such default;

             iii.       Adjudication that Assignee is bankrupt or insolvent;

             iv.        The filling by Assignee of a petition of bankruptcy, or a petition or answer
                        seeking reorganization, readjustment or rearrangement of his business or affairs
                        under any law or governmental regulation relating to bankruptcy or insolvency.
                        The appointment of a receiver of the business or for all or substantially all of the
                        property of Assignee; or the making by Assignee of assignment or an attempted
                        assignment for the benefit of his creditors; or the institution by Assignee of a

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