How to use this Checklist This Checklist is designed to highlight issues that commonly arise during the negotiation and drafting of the following types of agreement: • Assignment of designs—pro-assignor • Assignment of designs—pro-assignee For further information about assigning design rights, see Practice Notes: • UK registered and unregistered designs • Assigning intellectual property rights • Negotiation guide—intellectual property assignment clause This Checklist can also, where appropriate, form the basis of a simple non-binding heads of terms. For guidance on how to do this, see Precedent: Heads of terms—commercial contracts. Checklist schedule for proposed assignment of designs Checklist Further information Notes (if any) Key commercial considerations ☐ Parties Confirm which entities will be party to the agreement—identify which entity owns the designs (ie the assignor) and the entity to which they will be transferred (ie the assignee). Confirm each party’s legal status and whether any third parties (such as group affiliates) will benefit from the proposed agreement. ☐ Commencement / effective date Confirm proposed commencement / effective date. Key commercial considerations ☐ Designs Identify

This Deed is made on [insert date] Parties 1 [Insert name of assignor] [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 assignee] [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 [registered owner AND/OR applicant] of certain Designs (as defined below). (B) The Assignee is [insert description of the Assignee’s background/background to assignment or relevant transaction]. (C) The Assignor agrees to assign its rights in the Designs[ and the Design Materials] to the Assignee and the Assignee agrees to accept the assignment in accordance with the terms of this Deed. This Deed PROVIDES: 1 Definitions and interpretation 1.1 In this Deed: Affiliate • means any entity that directly or indirectly controls, is controlled by or is under common control with, another entity; [Assignment Date • [insert date];] 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

This Agreement is dated [insert date] Parties 1 [Insert name of assignor] [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 assignee] [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 [registered proprietor AND/OR applicant AND/OR owner] of certain Designs (as defined below). (B) The Assignee is [insert description of the Assignee’s background/background to assignment or relevant transaction]. (C) The Assignor agrees to assign its rights in the Designs to the Assignee and the Assignee agrees 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; [Assignment Date • is [insert date];] 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

EU Law analysis: The Court of Justice of the European Union held that the formal validity of a contract assigning exclusive rights to use works protected by copyright is a contractual matter under Regulation (EC) 593/2008, Rome I, even when an alleged infringer challenges the assignment in infringement proceedings. A requirement as to form concerns the parties’ expression of consent to be bound, including where it appears in national copyright law. The applicable formal validity rules must be identified under Rome I, including Article 11, which may recognise a contract as formally valid under more than one potentially applicable law. The infringement claim remains subject to Article 8(1) of Regulation (EC) 864/2007 (Rome II), which applies the law of the country for which protection is claimed. The court did not decide which national law governed the assignment, whether BT acquired the rights or whether IU infringed them.

Duties of an office-holder to realise property Insolvency procedures (such as administration, liquidation or bankruptcy) involve the appointment of an insolvency office-holder whose primary duty (in the case of a liquidator or trustee in bankruptcy) is to get in the property of the insolvent company or individual bankrupt, and realise the value of that property for the benefit of creditors. An administrator has the power to do so in the course of pursuing one of the three statutory purposes of administration (see Practice Notes: Role, powers, functions and duties of an administrator, Role, powers, functions and duties of a liquidator and Role, powers, functions and duties of a trustee in bankruptcy). In this context, insurance claims (being choses in action) fall within the definition of property that is capable of realisation. This Practice Note considers the circumstances in which an office-holder may wish to assign insurance claims and the practical considerations which may be relevant when doing so. For general details

This Deed is made on [insert day and month] 20[insert year] Parties 1 [insert name of Assignor], a company incorporated in England and Wales with registered number [insert company number] whose registered office is at [insert address] (the Assignor); and 2 [insert name of Lender] of [insert address] (the Lender). Recitals: (A) The Lender has agreed to make available a loan facility to the Assignor on the terms and conditions set out in the Facility Agreement (as defined below). (B) It is a condition precedent to the availability of the loan facility that the Assignor enter into this Deed for the purpose of providing security in favour of the Lender in respect of the Secured Obligations (as defined below). It is agreed as follows: 1 Definitions and interpretation 1.1 Definitions In this Deed, unless otherwise provided: Facility Agreement • means the facility agreement entered into on [the date of this Deed OR [insert date]] between the Assignor as borrower and the Lender as lender; Insurance Policies • means each of the insurance policies specified in Schedule 1 (Insurance Policies) and any insurance policies that are effected to renew, substitute or replace any such insurance policies and ‘Insurance

This Assignment is made as a deed on [date]. Parties 1 [Assignor], a company incorporated in [England and Wales] with company number [insert number] and having its registered office at [address of Assignor] (the Assignor); and 2 [Security Agent], as agent and trustee for itself and each of the Secured Parties (as defined below) appointed pursuant to the terms and conditions set out in the Intercreditor Agreement (the Security Agent). Background The Assignor and Security Agent desire that the Intellectual Property Rights be assigned by the Assignor to the Security Agent on the terms set out in this Assignment in accordance with the provisions of the Finance Documents (as defined herein). The parties agree: 1 Interpretation 1.1 Definitions Save as otherwise provided in this Assignment, the following words and phrases have the following meanings throughout this Assignment: [Acceleration Event • has the meaning given to it in the [Intercreditor OR Facility] Agreement;] Collateral • means all the assets of the Assignor which, from time to time, are the subject of the Security [and the trusts created hereby]; Default Rate • means a rate of

This Agreement is made on [insert date] (Commencement Date) between the following parties (each a ‘party’ and together the ‘parties’): Parties 1 [insert Assignor name] a company incorporated in [England and Wales] whose registered number is [insert company number] and whose registered office is at [insert registered office] (Assignor); and 2 [insert Assignee name] a company incorporated in [England and Wales] whose registered number is [insert company number] and whose registered office is at [insert registered office] (Assignee) Background (A) [The Assignor has entered into an agreement with the Assignee[ dated [insert date]] for the sale of[ the [insert name] business and/or certain business Assets] by the Assignor as seller to the Assignee as buyer OR [insert other description of relevant transaction (referencing any relevant related agreements)]] (Transaction). (B) The Assignor has agreed to assign, and the Assignee has agreed to take an assignment of, the Assigned IPR on the terms and conditions of this Agreement. (C) [This Agreement and the assignment under it is conditional upon a separate Asset Purchase Agreement (or similar document) being entered into between the parties on or before

This Agreement is made on [insert date] (the Commencement Date) between the following parties (each a ‘party’ and together the ‘parties’): Parties 1 [insert assignor name] a company incorporated in [England and Wales] whose registered number is [insert company number] and whose registered office is at [insert registered office] (the Assignor); and 2 [insert assignee name] a company incorporated in [England and Wales] whose registered number is [insert company number] and whose registered office is at [insert registered office] (the Assignee) Background (A) [The Assignor has entered into an agreement with the Assignee [dated [insert date]] for the sale of [the [insert name] business and/or certain business Assets] by the Assignor as seller to the Assignee as buyer OR [insert other description of relevant transaction (referencing any relevant related agreements)]] (Transaction). (B) The Assignor has agreed to assign, and the Assignee has agreed to take an assignment of, the Assigned IPR on the terms and conditions of this Agreement. (C) [This Agreement and the assignment under it is conditional upon a separate Asset Purchase Agreement (or similar document) being entered into

This Checklist is designed to highlight issues that commonly need to be addressed when drafting long-form and short-form assignments of intellectual property rights (IPRs) in an asset purchase scenario, and is to be used with the following Precedents: • Assignment of intellectual property rights (asset purchase) (long form) • Assignment of intellectual property rights (asset purchase) (short form) For licences of IPRs in an asset purchase scenario consider: • Precedent: Intellectual property licence (asset purchase) (long form) • Precedent: Intellectual property licence (asset purchase) (short form) • Intellectual property rights licence (asset purchase)—checklist For further information on issues raised by this Checklist, see the following Practice Notes: • Assigning intellectual property rights • Licensing intellectual property rights • Sub-licensing intellectual property rights • Key issues in software licence agreements • Know-how—protection and licensing • Tax issues and incentives arising from assignment and licensing of IP Key terms for inclusion in an assignment of intellectual property rights (IPRs) in an asset purchase scenario (A) Key commercial considerations Notes Parties Parties: confirm

The following Checklist is not exhaustive and does not cover every eventuality for every transaction. However, it contains key steps and issues to consider when acting for a landlord dealing with a tenant’s application for licence to assign. It assumes that the tenant’s lease is a rack rent lease of commercial property. Undertaking for costs If the lease or the Heads of Terms require the tenant to pay the landlord’s costs of considering an application for consent to assign, obtain an undertaking from the tenant’s lawyers to pay the landlord’s legal and surveyor costs (plus VAT and disbursements), whether or not the assignment is completed and whether or not consent is granted. Make sure that your estimate is sufficient, or that you reserve the right to increase the amount if the matter becomes unduly complicated or protracted. Consider whether the undertaking should cover any superior landlord’s fees (if applicable). Does the lease permit assignment? Check the alienation provisions in the lease in order to establish whether the tenant is permitted to assign and, if so, on what

Introduction Most leases contain an absolute prohibition against assignment of part of the demised property. This is due to the potential complications in relation to: • apportioning the rent, other payments and covenant obligations as between the divided parts • fracturing the covenant strength of the tenants • physically subdividing the premises • a consequential adverse effect on rental values and/or the value of the landlord’s reversion However, assignment of part is sometimes permitted under leases which were granted for a substantial term on payment of a significant premium or on a rent sharing basis, often with development obligations imposed on the tenant (this applies to both commercial and residential developments). Where the term is very long (potentially as much as 999 years), assignment may not even require landlord’s consent provided that the assignment meets pre-determined criteria and/or is notified to the landlord within a specified timescale after the assignment has occurred. If the lease is silent on the point, an assignment of part will be permitted. Inadvertent assignment As an aspect