Tips On What To Look For When Reviewing An IP Transfer Agreement

Prior to sending your drafted agreement to a counterparty of executing the agreement, it is important to thoroughly review the agreement for both content and form. These are some of the key items that a drafter should keep in mind when reviewing an agreement.

1. Is the IP Transfer Agreement operational?

  • Are the clauses of the IP transfer agreement enforceable according to law?
  • Are the correct parties included in the IP transfer agreement?
  • Do the parties have signing authority?

2. Are the goals of the IP transfer agreement being achieved?

  • Is the intellectual property correctly described?
  • Is there any additional intellectual property that need to be included in this agreement?
  • Do the time lines correspond to realistic ability to perform the contract?
  • Is the pricing clear?
  • Is the ‘business’ properly defined for the purposes of confidentiality, non- solicitation and non-competition purposes?
  • Has the non-assignable and non-transferable intellectual property been addressed in the agreement?

3. Are references throughout the agreement correct?

  • Example: (1) … with its principal place of business at [INSERT LOCATION] (the “Assignor”)
  • Is the “Assignor” used correctly throughout the agreement?

4. Are capitalized terms properly defined?

5. Is the correct legislation referenced in the agreement?

6. Is the numbering consistent?

7. Is all of the ‘boilerplate’ included/applicable?

  • Is there a governing law clause?
  • Is there a dispute resolution or jurisdiction clause?
  • Should time be of the essence in this agreement?
  • Can the parties sign in counterparts?
  • How is the agreement to be amended?
  • Is this the entire agreement or should other documents/schedules also form part of the agreement?

8. Are all track changes & comments removed prior to sending to Counterparty?

Written by Alva.