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This deed conveys an assignment of a patent by the holder/patentee or applicant for grant of patent. Under the Patents Act 1990 (Cth), the assignment must be in writing and it must be signed by or on behalf of both the assignor and the assignee (Section 14). This template assumes that the entire patent claim is assigned.
Where more than one person is recorded as the patentee, the consent of all co-owners in writing is required for an assignment to be recorded by the Patent Office (Section 16).
If a licence to use has previously been granted or there has been a grant of any other third party right (eg. where there are royalty payments or there is a charge, mortgage or other equitable interest), we strongly recommend that you do not use this Deed without first checking to ensure that the assignment does not breach any prior licence or agreement. This is because under that agreement the Assignor is likely to have obligations and these cannot be unilaterally assigned by the Assignor.
Where a third party has rights (eg. as licensee), a deed of novation should be used which will join the third party as a signatory to the assignment/transfer from the Assignor to the Assignee.
Note too that an assignment of a patent may have taxation implications such as capital gains tax and possibly GST. For taxation purposes, a registered design is a depreciable asset under the Income Tax Assessment Act 1997 (Cth) (sub-section 995-1(1)); and see ATO Interpretative Decision 2006/169 in relation to depreciation available for rights accrued in a foreign jurisdiction due to a grant of licence.
This Patent Deed of Assignment includes the following provisions:
3. Assignor's Warranties & Indemnity
4. General Undertakings
5. General Provisions
* Notes to Patent Assignment Deed