This Checklist identifies the key terms typically included in an assignment of patents or patent applications. This document can be used as a checklist of issues to consider when drafting, reviewing or negotiating an assignment of patents or patent applications. It can also be adapted for use as a heads of terms to record basic agreed terms while a formal assignment is being negotiated. How to use this Checklist This Checklist is designed to highlight issues that commonly arise during the negotiation and drafting of the following type of agreements: • Patent assignment—pro-assignor • Patent assignment—pro-assignee For further information on issues raised by this Checklist, see Practice Note: Assigning intellectual property rights. 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 for proposed assignment of patents or patent applications Checklist Further information Notes (if any) Key commercial considerations ☐ Parties Confirm which entities will be party to the agreement—identify which entity owns the patents and/or patent applications

This DEED 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 [proprietor of OR applicant for] the Patents as defined herein. (B) The [Parties have entered into the Main Agreement as defined herein and the ]Assignor has agreed to assign such Patents to the Assignee and the Assignee has agreed to accept the assignment in accordance with the terms of this Deed. THe parties agree: 1 Definitions and interpretation 1.1 In this Deed: [Budapest Treaty • means the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure 1980;] 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

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 OR applicant for] the Patents as defined herein. (B) The [Parties have entered into the Main Agreement as defined herein and the] Assignor has agreed to assign such Patents 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; [Biological Material • means any biological agent such as cells, viruses, or tissues deposited under the Budapest Treaty;] [Budapest Treaty • means the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes

The patent box is an elective regime that provides for an effective 10% rate of corporation tax on worldwide profits attributable to qualifying patents and similar intellectual property (IP) rights. A company’s profits eligible for relief under the patent box are effectively charged to corporation tax at a lower rate of 10%. The legislation gives effect to this relief by allowing a deduction to be made in calculating the profits of the company’s trade for an accounting period. For more information on the patent box generally, see Practice Note: Patent box—key features of the regime. In accordance with the BEPS Action Plan 5 requirements, the patent box rules changed on 1 July 2016 to introduce an R&D fraction restriction, potentially reducing the value of patent box claims for companies which have either acquired relevant intellectual property (IP) and/or sub-contracted development of relevant IP to affiliates. A number of ancillary changes to the rules were also brought in, to properly implement the restriction. Claimants whose election into the patent box was effective from

This Flowchart has been archived and is not maintained. Note that the patent box calculation changed for new claims from July 2016, in order to comply with the framework for preferential IP regimes set out in the OECD BEPS project. The following flowchart applies to the grandfathered rules that apply to companies using the standard calculation (ie, section 357C of the Corporation Tax Act 2010) that

ARCHIVED: The rules described in this archived Practice Note apply to companies that most recently elected into the patent box regime for an accounting period beginning before 1 July 2016 in relation to qualifying IP of those companies applied for or acquired before 1 July 2016 (or 2 January 2016 in some cases). New rules (described in Practice Note: Patent box calculation of relief—new rules) apply to new entrants to the patent box regime on or after 1 July 2016 and to all companies from 1 July 2021. A company’s profits eligible for relief under the patent box are effectively charged to corporation tax at a lower rate of 10%. The legislation gives effect to this relief by allowing a deduction to be made in calculating the profits of the company’s trade for an accounting period. For more information on the patent box generally, see Practice Note: Patent box—key features of the regime. In accordance with the BEPS Action Plan 5 requirements, the patent box rules changed on 1 July 2016 to introduce an

In the early stages of IP development, a company may derive income from its qualifying IP rights but not yet make a profit. Alternatively, a company may generate a profit that is less than the routine return on the costs of earning such income. Where a company has a relevant IP loss (RIPL) as a result of its patent box calculation (for which, see Practice Note: Patent box calculation of relief—new rules), the company will not benefit from patent box relief in relation to the loss-making trade for that accounting period. Instead, the company must: • set off the RIPL: ◦ first, against any patent box profits from another trade of the company, and ◦ secondly against any patent box profits of another group company for a relevant accounting period, and • to the extent any RIPL remains, the company must carry the balance forward to set against future patent box profits (of its own or within its group) Broadly, this is intended to ensure that a company’s

ARCHIVED: The rules described in this archived Practice Note apply to companies that most recently elected into the patent box regime for an accounting period beginning before 1 July 2016 in relation to qualifying IP of those companies applied for or acquired before 1 July 2016 (or 2 January 2016 in some cases). Different rules apply to any new qualifying IP acquired after that date. New rules described in Practice Note: Patent box calculation of relief—new rules apply to all companies from 1 July 2021. The patent box is an elective regime that provides for an effective 10% rate of corporation tax on worldwide profits attributable to qualifying patents and similar intellectual property (IP) rights. A company’s profits eligible for relief under the patent box are effectively charged to corporation tax at a lower rate (10%)—see Practice Note: Commencement and phasing in of patent box relief below. The legislation gives effect to this relief by allowing a deduction to be made in calculating the profits of the company’s trade for an accounting

The patent box is an elective regime that provides for an effective 10% rate of corporation tax on worldwide profits attributable to qualifying patents and similar intellectual property (IP) rights. The full benefits of the patent box were phased in over five years (up until 1 April 2017). In accordance with the BEPS Action Plan 5 requirements, the patent box rules changed on 1 July 2016 to introduce an R&D fraction restriction, potentially reducing the value of patent box claims. A number of ancillary changes to the rules were also brought in, to properly implement the restriction. Claimants whose election into the patent box is effective from a date prior to 1 July 2016 were able to continue claiming under the old (grandfathered) rules until 30 June 2021 in respect of qualifying IP applied for before 1 July 2016 (see Practice Note: Patent box—grandfathered rules—standard calculation of relief). The changes relate to the calculation of the patent box benefit only, and not to the features covered in this Practice Note. Patent

The scope of protection conferred by a patent is determined by its claims as interpreted using the description and drawings.

This Agreement is made on [insert date]. Parties 1 [Insert name of first co-owner of patent][ (Company Number [insert number])] [whose [registered office OR principal place of business] is at [insert address] OR whose address for service within the jurisdiction of the courts of England and Wales is [insert address]] (Party A); and 2 [Insert name of second co-owner of patent][ (Company Number [insert number])] [whose [registered office OR principal place of business] is at [insert address] OR whose address for service within the jurisdiction of the courts of England and Wales is [address]] (Party B). Each a Party and together the Parties as context dictates. Background The Parties co-own the Patents (as defined below). The Parties wish to agree the terms on which the Patents will be protected, enforced, defended, commercialised and otherwise dealt with, all in accordance with the provisions of this Agreement. It is agreed as follows: 1 Definitions and interpretation 1.1 In this Agreement: Affiliate • means, in relation to a Party, any person that Controls, is Controlled by, or is under common Control with, that Party; Completion Applications • means the completion

A defect that is apparent on inspection.