Common drafting mistakes often weaken the enforceability of IP assignments. Excel V. Dyquiangco explores best practices for precision and enforceability, and strategies to prevent future disputes. 

 

Drafting clear and effective intellectual property assignment agreements is essential to ensuring a legally sound transfer of ownership. Whether dealing with trademarks, copyrights, patents or proprietary business information, these agreements provide structure, clarity and protection for all parties involved. A well-crafted assignment helps preserve the value of the IP and reinforces the rights associated with it. 

At the core of every strong IP assignment is precision – identifying the assets accurately, defining the scope of the transfer and setting out the responsibilities of each party. When these elements are handled thoughtfully, they create a solid foundation that strengthens the chain of title and supports long-term business stability. 

But all too often, some still make mistakes in drafting clear and effective IP assignments. According to Sri Sarguna Raj, a partner and head of IP, technology, media, sports and gaming at Adnan Sundra & Low in Kuala Lumpur, one of the most recurring issues is imprecise or overly broad descriptions of the IP being assigned.  

“Parties often use generic phrases such as ‘all IP rights’ without specifying the exact rights, jurisdictions or registration number involved,” he said. “This creates ambiguity and breaks the chain of title when the assignment is scrutinized years later.” 

He said that assignments also frequently omit future rights, such as rights arising from ongoing development, improvements or future filings. “In technology and creative industries, where IP evolves rapidly, this oversight can leave subsequent innovations outside the scope of the original assignment,” he noted. “Many agreements also overlook execution formalities required by specific jurisdictions, such as notarization, witnessing or language requirements. These formal defects may not be apparent at signing, but they can invalidate filings or prevent recording at IP offices later.” 

For Jevon Louis, a partner at Shook Lin & Bok in Singapore, the most frequent mistakes involve the use of vague language that unintentionally creates an ambiguity about what’s actually being transferred. 

“IP assets being assigned should be precisely identified whenever possible,” he said. “Identifying at least the specific categories or nature of the IP to be assigned to a particular party is preferable to using broad phrases such as ‘all IP related to the project,’ which may be too broad and could conflict with other rights and or obligations in an assignment.” 

Another area often overlooked due to the over-reliance on boilerplate clauses is the accuracy of the warranties and representations about existing encumbrances or third-party rights vis-à-vis an IP asset. “Inaccurate warranties and representations risk leaving assignors exposed to claims of misrepresentation, as well as assignees being exposed to unknown claims,” he said.  

“Finally, execution failures like missing signatures, lack of proper witnessing or failing to comply with any formal requirements of a jurisdiction when executing an assignment can invalidate an otherwise well-drafted document,” he added. “A common error is drafting the assignment as a deed and failing to comply with the formal requirements when executing a deed of assignment under Singapore law.” 

Meanwhile, Divina Ilas-Panganiban, a partner and head of the IP, data and technology practice group at Quisumbing Torres in Manila, said that problems also arise when the agreement does not impose an obligation on the assignor to assist with the recordation process. 

“In the Philippines, in order for the assignment of trademarks, patents and other applicable IP applications or registrations to be enforceable against the whole world, the same must be recorded with the Intellectual Property Office. The request for recordal requires the submission of certain documents, including the assignment agreement which is executed by both the assignor and the assignee. Hence, it would be best to include a cooperation clause in the IP assignment agreement in order to effect the transfer of the IP right completely. It would be extremely challenging if the assignor refuses to sign documents needed for filing with IP offices,” she said.  
 

Drafting clear assignments 

With these errors to be avoided, all three lists several essential points to include in every IP assignment. For Raj, it should include the following: 

• Clear assignment clause setting out the rights transferred (present and future rights), their territories and whether the transfer is full or partial. 

• Warranties and representations confirming the assignor’s ownership, absence of encumbrances and that the rights are not subject to litigation or third-party claims. 

• Moral rights provisions, especially for copyright, addressing waiver or consent where legally permissible. 

• Further assurance clause, requiring the assignor to execute additional documents to perfect the transfer or record ownership changes. 

• Consideration or payment terms, as some jurisdictions (including Malaysia) require consideration for validity. 

• Confidentiality obligations, particularly where trade secrets or proprietary information form part of the IP. 

• Governing law and dispute resolution clause, especially for cross-border transactions. 

“The identification must be as precise and complete as possible,” he said. “For registered IP such as trademarks, patents and industrial designs, the agreement should include registration numbers, filing dates, classes, drawings and territorial scope. For copyrights, it should specify the exact works, versions and formats being transferred. For unregistered rights, the descriptions should be sufficiently granular – for example, source code repositories, product names, brand elements, design drafts, proprietary algorithms, characters, audiovisual assets and confidential know-how.” 

“A good test is this: a third party with no prior knowledge should be able to read the agreement and identify exactly what is being transferred,” he added. “Vague or conceptual descriptions invite disputes, weaken enforceability and can obstruct recordal at IP offices.” 

For Louis: “Every IP assignment that is drafted as an agreement must specify the underlying consideration, whether in cash or kind, to be an enforceable agreement under Singapore contract law principles.” 

“Accurate representations and warranties are also critical, especially those that confirm that the assignor owns the IP, has full authority to transfer it, and that the assets are free from encumbrances or competing claims,” he said. “Governing law and jurisdiction provisions are particularly important – specifying Singapore law and Singapore courts or arbitration provides certainty on the dispute resolution mechanism if a dispute arises.” 

Ilas-Panganiban said that in the avoidance of doubt, it will be best for the parties to attach a schedule or annex that lists all the intellectual property rights that will be assigned in the agreement. 

“Registered intellectual properties must be identified by the appropriate registration or application numbers (ideally with title, filing and registration dates, and other relevant particulars). Unregistered intellectual properties must be identified with a title or a specific descriptor which ensures that both parties understand their respective scope and coverage. If producing a list will be difficult, especially with large IP portfolios, including a reference, a link to a publicly searchable registry, a definite date, a title, will be helpful and will minimize any potential misinterpretations,” she said.  
 

Protection against disputes 

To avoid disputes, Louis said that a complete IP due diligence should be conducted on the IP assets before executing any assignment. “This typically includes searching registered IP databases, reviewing prior employment agreements and contractor relationships, and examining any licensing arrangements that might affect ownership, especially where a corporate change is likely to arise,” he said. 

When drafting the assignment, he added that he ensures that the representations and warranties are accurate and sufficiently tied to indemnification provisions so that any foreseeable risks are properly allocated. 

“For registered IP assets, the prompt recordation of the assignment with the relevant IP office should be carried out to ensure that the public have prompt notice of the change of ownership over the IP assets, and also to mitigate against the risk of an unregistered assignment being considered ineffective against third parties who acquire rights to the IP assets without notice of the assignment,” he said. 

Ilas-Panganiban noted that the best advice is for parties to know the legal requirements for an IP assignment agreement.  

“Since most intellectual property rights are territorial in nature, the requirements will most likely differ for every jurisdiction,” she said. “Ideally, the parties should seek the professional assistance of a local IP practitioner, who will help them navigate the intricacies of the entire IP assignment transaction. IP practitioners will be able to advise parties on how to protect against future ownership disputes when structuring an IP assignment. Some local laws will also impose the inclusion of mandatory clauses in the agreements, the absence of which will render the agreement unenforceable. IP practitioners will ensure that these requirements are accounted for, while simultaneously capturing the intention of the parties in the IP assignment agreement.” 

“Generally, priority should be devoted to clarity, completeness and enforceability of the IP agreement,” she continued. “In the Philippines, the more straightforward the IP assignment language is, the more it will be appreciated by the Intellectual Property Office. If the document will contain too much legalese and technical jargon, it will just expose itself to several possible interpretations which will cause disputes and misunderstandings in the future.” 

According to Ilas-Panganiban, some of the best practices in drafting clear and effective IP assignments are to have a master checklist which contains all the local formalities. “This will also track the compliance journey of each party with their respective obligations under the IP assignment agreement.  IP firms would have useful tools to address the requirements, which apply to every stage of the process – from due diligence, negotiations, execution, to post-closing,” she said. 

Another is to record the assignment immediately with the local IP offices (if required). “This recordal process will also accurately reflect the time frame of the assignment and will minimize discrepancies in the records of the parties and the IP office. The recordal may also confirm the validity of the assignment transaction and will cause the same to be enforceable as against third parties. The story of the IP transfer will end once the IP office receives the assignment document and updates its official records. A new chapter is thereafter opened, one where the assignee is now unequivocally the new owner of the IP,” she said.