Deed of IP Assignment
Date 2015
Parties
Name [insert] Pty Ltd (Assignee)
ACN [insert]
Name [insert] (Assignor)
Address [insert]
Background
A. The Assignor has provided services to the Assignee or a Related Body Corporate of the Assignee.
B. During the period in which the Assignor provided services to the Assignee, the Assignor may have contributed to or otherwise been involved in the development of the Intellectual Property, Software, Source Code and Documentation.
C. The Assignor wishes to:
a. record that Assignee has at all times been the legal and beneficial owner of the Intellectual Property, Software, Source Code and Documentation;
b. assign to the Assignee all right, title and interest it may have the Intellectual Property, Software, Source Code and Documentation; and
c. waive all Moral Rights it may have in relation to the Works.
Operative part
1 Definitions and Interpretation
1.1 Definitions
In this Deed, unless the context indicates a contrary intention:
Business Day means a day on which banks are open for general banking business in Sydney, excluding Saturdays and Sundays.
Documentation means documentation, material, information and notes associated with the Intellectual Property, Software and Source Code, in whatever form, including functional, technical and user information, manuals, reports, designs, drawings, graphics, pictures, specifications, data and files, developed or produced by the Assignor or on his behalf as a result of or in connection with the Intellectual Property, Software or Source Code.
Intellectual Property means copyright, trade mark, design, patent, semiconductor and circuit layout rights, confidential information, trade, business or company names, or other proprietary rights, and any rights to registration of such rights related to or in any way connected or contained in the Software, Source Code or Documentation, whether now existing or created after the date of this Deed.
Moral Rights means the right of attribution of authorship, the right not to have authorship falsely attributed and the right of integrity of authorship, as defined and as set out under Part IX of the Copyright Act 1968 (Cth) and any foreign corresponding rights.
Related Body Corporate has the meaning given to that term in section 9 of the Corporations Act 2001 (Cth).
Software means all software or computer programs developed or created by or on behalf of the Assignor at the request or for the use of the Assignee or arising in the course of, or in connection with such development or creation and all enhancements, developments, improvements, revisions and updates to that software made on or before this Deed.
Source Code means:
(a) all source code and other material of the Software or any part or module of the Software necessary to produce the Software in a form capable of being used on a computer, whether by compilation, run time execution or other methods; and
(b) any instruction(s) or other statements (including comments), make files, scripts and related documentation necessary to understand the source material.
Work means anything created by the Assignor under or in connection with his engagement by the Assignee or a Related Body Corporate of the Assignee.
1.2 Interpretation
In this Deed, unless the context indicates a contrary intention:
(headings) clause headings and the table of contents are inserted for convenience only and do not affect interpretation of this Deed.
(party) a reference to a party to a document includes that party’s personal representatives, executors, administrators, successors, substitutes (including persons taking by novation) and permitted assigns.
(including) including and includes are not words of limitation, and a list of examples is not limited to those items or to items of a similar kind.
(corresponding meanings) a word that is derived from a defined word has a corresponding meaning.
(gender) words importing one gender include all other genders.
(rules of construction) neither this Deed nor any part of it is to be construed against a party on the basis that the party or its lawyers were responsible for its drafting.
(legislation) a reference to any legislation or provision of legislation includes all amendments, consolidations or replacements and all regulations or instruments issued under it.
(time and date) a reference to a time or date in connection with the performance of an obligation by a party is a reference to the time and date in Sydney, Australia, even if the obligation is to be performed elsewhere.
2 Assignment
2.1 The Assignor hereby assigns to the Assignee or any assignee nominated by it absolutely and beneficially the whole of the right, title and interest in and to the Intellectual Property, Software, Source Code and Documentation.
3 Moral Rights
3.1 The Assignor consents to any act or omission by or on behalf of the Assignee or a Related Body Corporate of the Assignee (whether occurring before or after this consent is given) which infringes or may infringe any of the Moral Rights the Assignor may have in relation to any Works made by the Assignor.
4 Notices
4.1 A notice is taken to be given or made:
(a) when the sender receives an email acknowledgement from the recipient's information system showing the notice has been delivered to the recipient's email address;
(b) when the notice enters an information system controlled by the recipient; or
(c) when the notice is first opened or read by the recipient,
whichever occurs first.
4.2 If under clause 4.1 a notice would be taken to be given or made on a day that is not a Business Day in the place to which the notice is sent, or later than 4 pm (local time), it will be taken to have been given or made at the start of business on the next Business Day in that place.
5 Further assurances
5.1 Each party must promptly execute all documents and do all other things reasonably necessary or desirable to give effect to the arrangements recorded in this Deed.
6 Variation
6.1 A provision of this Deed can only be varied by a later written document executed by or on behalf of all parties.
7 No assignment
7.1 A party cannot assign or otherwise transfer its rights under this Deed without the prior written consent of the other party.
8 Counterparts
8.1 This Deed may be executed in any number of counterparts. All counterparts taken together constitute one instrument.
9 Legal expenses and stamp duty
9.1 Each party must pay its own legal costs and disbursements in connection with the negotiation, preparation, execution and carrying into effect of this Deed.
9.2 The Assignee must pay all stamp duty assessed on or in relation to this Deed and any instrument or transaction required by or necessary to give effect to this Deed.
10 Entire agreement
10.1 The contents of this Deed constitute the entire agreement between the parties and supersede any prior negotiations, representations, understandings or arrangements made between the parties regarding the subject matter of this Deed, whether orally or in writing.
11 Invalidity
11.1 A word or provision must be read down if:
(a) this Deed is void, voidable, or unenforceable if it is not read down;
(b) this Deed will not be void, voidable or unenforceable if it is read down; and
(c) the provision is capable of being read down.
11.2 A word or provision must be severed if:
(a) despite the operation of clause 11.1, the provision is void, voidable or unenforceable if it is not severed; and
(b) this Deed will be void, voidable or unenforceable if it is not severed.
11.3 The remainder of this Deed has full effect even if clause 11.2(a) or 11.2(b) applies.
12 Governing law and jurisdiction
12.1 The laws applicable in New South Wales govern this Deed.
12.2 The parties submit to the non-exclusive jurisdiction of the courts of New South Wales and any courts competent to hear appeals from those courts.
Executed as a Deed
Executed by [insert] Pty Ltd ACN [insert] in accordance with section 127 of the Corporations Act 2001 (Cth) by: )
)
)
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Signature of Director
Signature of Director/Secretary
Print name of Director
Print name of Director/Secretary
Signed, sealed and delivered by [insert] in the presence of: )
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Signature of Witness
Signature of [insert]
Print name of Witness
