Intellectual property transfer checklist
Transferring intellectual property requires precision — incomplete assignments leave ownership disputes unresolved. This checklist covers the key steps for assigning patents, trade marks, designs, copyright, and confidential information.
This is a 12-step checklist for transferring intellectual property rights from one party to another in Australia. It covers identification of IP assets, assignment documentation, registration, tax, and post-transfer obligations.
The checklist
Identify all IP assets in scope
Compile a complete schedule of IP assets being transferred — patents, trade marks, designs, copyright works, domain names, and trade secrets.
Confirm current ownership
Verify the transferor is the registered owner or legal owner of each asset, including checking IP Australia registers.
Check for encumbrances
Search for security interests on the PPSR and any existing licence agreements that may restrict or survive the transfer.
Confirm employee and contractor IP assignments
Verify that all employee and contractor IP created in developing the assets has been properly assigned to the transferor.
Draft the assignment deed
Prepare a written assignment deed that identifies each IP right, the consideration, and any warranties as to title and non-infringement.
Include moral rights provisions
Address moral rights — obtain consents from authors if the transfer involves copyright works where moral rights may be asserted.
Address transitional licences
If the transferor needs continued use of the IP, draft a transitional licence with clear scope, term, and termination provisions.
Register the assignment
Lodge assignment records with IP Australia for patents, trade marks, and designs to update the register of ownership.
Transfer domain names
Initiate domain name transfer through the registrar, including .au domains via the auDA transfer process.
Assess stamp duty and tax
Determine whether the IP transfer triggers stamp duty in any state or territory, and assess CGT and GST implications.
Notify licensees and third parties
Notify any existing licensees of the change of ownership and confirm whether their licences continue under the new owner.
Deliver supporting materials
Ensure the transferee receives all source files, prosecution files, renewal schedules, and know-how documentation related to the IP.
When this checklist applies
Use this checklist when transferring IP assets — whether as part of a business sale, corporate restructure, or standalone IP assignment.
Common pitfalls
- Not identifying all IP assets, particularly unregistered copyright and trade secrets
- Failing to check whether contractor agreements include valid IP assignment clauses
- Overlooking PPSR security interests that survive the transfer
- Not registering the assignment with IP Australia, leaving the register out of date
- Ignoring moral rights consents for copyright works
Run this checklist on a real matter
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This checklist is a general guide. IP transfers involve complex ownership, tax, and registration issues — obtain specialist IP and tax advice.
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