This Agreement is dated [insert date] Parties 1 [insert name] [of OR a company incorporated in [England and Wales] under number [insert registered number] whose registered office is at] [insert address] (Assignor); and 2 [insert name] [of OR a company incorporated in [England and Wales] under number [insert registered number] whose registered office is at] [insert address] (Assignee) (each of the Assignor and the Assignee being a party and together the Assignor and the Assignee are the parties). BACKGROUND (A) The Assignor is the owner of certain intellectual property rights. (B) The Assignor has agreed to assign such intellectual property rights to the Assignee and the Assignee has agreed to accept the assignment in accordance with the terms of this Agreement. The Parties Agree: 1 Definitions and interpretation 1.1 In this Agreement: Affiliate • means any entity that directly or indirectly controls, is controlled by or is under common control with, another entity; Assigned Intellectual Property Rights • means the intellectual property rights detailed in Schedule [insert schedule number]. Business Day • means a day, other than a Saturday, Sunday or public holiday, on which clearing banks are open for non-automated commercial business in the City of London; Confidential

An intellectual property clause is a contractual provision that allocates rights and obligations in relation to intellectual property (IP) such as copyright, trade marks, patents, design rights, database rights and confidential information. It is a descriptive term rather than one defined in UK or Irish legislation, but is widely used in commercial contracts, IT and software agreements, R&D and collaboration agreements, employment and consultancy contracts, and IP licensing and assignment documents. Typical intellectual property clauses address ownership of pre-existing (“background”) and newly created (“foreground”) IP, licences (scope, territory, duration and exclusivity), moral rights, improvement rights, use of trade marks and branding, open source software, confidentiality, infringement risk and indemnities, and post-termination use of IP. They are critical in avoiding disputes over who owns key technology, content or data, and who may exploit it commercially. Across England & Wales, Scotland, Northern Ireland and Ireland, usage and drafting practice are broadly consistent, although underlying statutory IP regimes and case law may differ. Precision in intellectual property clauses is essential, as courts will primarily interpret them by standard principles of contractual construction.

This Checklist has been drafted for use by the buyer and is designed to highlight issues commonly arising, and key questions that should be asked, when undertaking due diligence in the course of an asset purchase transaction, where a buyer is acquiring a business in its entirety or specific business assets. This focuses on IP assets and rights aspects of the transaction and is intended to be used in conjunction with due diligence enquiries in other areas such as IT and as to financial position. For information about the corporate aspects of such transactions, see: Asset purchase agreement—overview. For further information, see Practice Notes: • IP issues to consider in asset purchase contracts • Buying a software business—key considerations • Corporate transactions for technology lawyers • Asset purchase transactions—IP issues—checklist For example agreements, see Precedents: • IP due diligence questionnaire • Assignment of intellectual property rights (asset purchase) (long form) • Assignment of intellectual property rights (asset purchase) (short form) • Intellectual property licence (asset purchase) (short form) • Intellectual property licence (asset purchase) (long form) Completion

This Checklist has been drafted for use by the buyer and is designed to highlight issues commonly arising, and key questions that should be asked, when undertaking due diligence in the course of a share purchase transaction where the seller is a limited liability company. This focuses on the IP assets and rights aspects of the transaction and is intended to be used in conjunction with due diligence enquiries in other areas such as IT and as to financial position. For information about the corporate aspects of such transactions, see: Share purchase agreement—overview. For further information, see Practice Notes: • IP issues to consider in share purchase contracts • Corporate transactions for technology lawyers • Share purchase transactions—IP issues—checklist • Information technology due diligence in share purchase transactions—checklist For example agreements, see Precedent: • IP due diligence questionnaire Completion process It is important to be aware of how the sale process for the transaction will proceed from offer to completion. For example: • confidentiality agreement • heads of terms (subject to financial, commercial,

Intellectual property rights (IPR) can often become points of contention during outsourcing contract negotiations. Issues arise in relation to the ownership and licensing of rights and also in relation to the warranties and indemnities the parties seek from one another in relation to their rights to provide IPR (or access to IPR) to one another. This Practice Note covers the following: • Is intellectual property core to the deal? • Types of intellectual property in outsourcing arrangements • Background intellectual property rights • Foreground intellectual property rights • Open source software • technologies such as artificial intelligence (AI) and robotic process automation (RPA) • Warranties and indemnities • Treatment of intellectual property on exit For examples of clauses dealing with IPR in outsourcing, see clause 29 of Precedent: Outsourcing agreement—long form. For a template IPR indemnity clause, see Precedents: Third party intellectual property rights indemnity clause—pro-supplier and Third party intellectual property rights indemnity clause—pro-customer. Is intellectual property core to the deal? For some outsourcing projects, the creation and ownership

Introduction: This questionnaire relates to the intellectual property (IP) audit being supervised by [contact name] in [identify department]. IP means any intangible business assets. These are described in more detail below, but include copyright works, software, confidential information and databases, trade marks (brands and logos), domain names, patents, inventions and designs. Reasons for the audit: this audit is to [review our business's IP and the measures taken to protect it.] This review is necessary for [risk management, legal compliance, accounting and tax planning] purposes. Companies and territories covered by the audit: the audit relates to [insert company name] [and [identify other group companies covered by the audit]] in [the UK][ and [identify other jurisdictions within the scope of the audit]]. Your role: please identify what IP is used by your [department OR business] and what policies and documentation currently govern that use. If you do not think you are the appropriate person to answer these questions, please identify relevant individuals within the part of the business for which you work. Please answer all the questions you can.Please submit your

In brief A review of a company’s IP assets may be undertaken for several reasons, including—stocktaking, strengthening company assets in the balance sheet and filling in gaps relating to company assets, valuing and exploiting company assets, identifying threats and minimising the risk of litigation, and developing a system of managing and maintaining the IP. This Checklist is designed to identify key considerations which may arise during an audit of IP and accompanies Precedent: Intellectual property internal audit questionnaire. For further information on issues raised by this Checklist, see the following content: • for information on the types of IP a business may own, see Practice Notes: What IP assets a business may own and how best to protect them and IP right comparison table • some IP rights were created as a result of the withdrawal of the UK from the EU—for information about new IP rights created as a consequence of Brexit, see Practice Notes: Trade mark rights before and after Brexit—comparison table and Design rights before and after Brexit—comparison table • for information about best practice

IP laws are almost always national in nature. However, there are many conventions and treaties under which nations agree to provide minimum levels of IP protection, and to protect IP created by nationals of other countries. The World Intellectual Property Organization (WIPO) administers over 20 treaties and conventions on the registration, classification and protection of IP. Details of the treaties it administers, and the parties to those treaties, can be found on its website. This Practice Note discusses some of the major conventions and treaties it administers. It does not cover all of the treaties and conventions relating to European patents. Paris Convention for the Protection of Industrial Property (1883) The Paris Convention was the first convention to harmonise the IP laws of its contracting states. It applies to patents, trade marks, industrial designs, utility models, trade names and geographical indications. A list of contracting states can be found here. Major provisions • each contracting state must grant the same protection to nationals of other contracting states as it does to its own nationals

This Agreement is made on [insert date] (Commencement Date) between the following parties (each a ‘party’ and together the ‘parties’): Parties 1 [insert licensor name] a company incorporated in [England and Wales] whose registered number is [insert company number] and whose registered office is at [insert registered office] (Licensor); and 2 [insert licensee name] a company incorporated in [England and Wales] whose registered number is [insert company number] and whose registered office is at [insert registered office] (Licensee). Background (A) [Licensor has entered into an agreement with Licensee[ dated [insert date]] for the sale of [the [insert name] business AND/OR certain business assets by Licensor as seller to Licensee as buyer ] OR [insert other description of relevant transaction (referencing any relevant related agreements)]] (Transaction). (B) Licensor owns certain intellectual property rights which are not being transferred to Licensee in the Transaction but that Licensee wishes to use or take the benefit of. (C) Licensor has agreed to license, and Licensee has agreed to take a licence of these intellectual property rights on the terms and conditions of this Agreement. (D) [This Agreement and the licence

This Agreement is made on [insert date] (Commencement Date) between the following parties (each a ‘party’ and together the ‘parties’): Parties 1 [insert licensor name] a company incorporated in England and Wales whose registered number is [insert company number] and whose registered office is at [insert registered office] (Licensor); and 2 [insert licensee name] a company incorporated in England and Wales whose registered number is [insert company number] and whose registered office is at [insert registered office] (Licensee). Background (A) [Licensor has entered into an agreement with Licensee [dated [insert date]] for the sale of [the [insert name] business AND/OR certain business assets] by Licensor as seller to Licensee as buyer OR [insert other description of relevant transaction (referencing any relevant related agreements)]] (Transaction). (B) Licensor has agreed to license, and Licensee has agreed to take licence of certain intellectual property rights which are not being transferred to Licensee in the Transaction but that Licensee wishes to use or take the benefit of on the terms of this Agreement. (C) [This Agreement and the licence under it are conditional upon a separate

This Agreement is made on [insert date] Parties 1 [insert name], a company incorporated in [England and Wales] under number [insert company number] and whose registered office is at [insert address] (Licensor); and 2 [insert name], a company incorporated in [England and Wales] under number [insert company number], whose registered office is at [insert address] (Licensee), (each of the Licensor and the Licensee being a party and together the Licensor and the Licensee are the parties). BACKGROUND (A) The Licensor [is the [registered] proprietor of OR is the applicant to register OR has the right to license and/or sub-license] certain intellectual property rights. (B) The Licensee is [insert background to licence/relevant transaction]. (C) The Licensor has agreed to grant a licence of these intellectual property rights to the Licensee and the Licensee has agreed to take a licence of the intellectual property rights on the terms of this Licence. AGREEMENT 1 Definitions and interpretation 1.1 In this Licence: Business Day • means a day other than a Saturday, Sunday or public holiday[, on which clearing banks are open for non-automated commercial business in the [City of London]]; Confidential Information • means all information of a confidential nature (in any form) including

This Agreement is made on [insert date] Parties 1 [insert name], a company incorporated in [England and Wales] under number [insert company number] and whose registered office is at [insert address] (Licensor); and 2 [insert name], a company incorporated in [England and Wales] under number [insert company number], whose registered office is at [insert address] (Licensee). (each of the Licensor and the Licensee being a party and together the Licensor and the Licensee are the parties). BACKGROUND (A) The Licensor [is the[ registered] proprietor of OR is the applicant to register OR has the right to license and/or sub-license] certain intellectual property rights. (B) The Licensee is [insert background to licence/relevant transaction]. (C) The Licensor has agreed to grant a licence of these intellectual property rights to the Licensee and the Licensee has agreed to take a licence of the intellectual property rights on the terms of this Licence. AGREEMENT 1 Definitions and interpretation 1.1 In this Licence: Advance • means the sum of [insert]; Business Day • means a day other than a Saturday, Sunday or public holiday[, on which clearing banks are open for non-automated commercial business in the [City of London]]; Confidential