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Wondering what the scope of a worldwide grant / transfer of all IP, either via an employment contract or explicit transfer is?

I ask as a number of countries are not members of the WIPO, others have either not signed or ratified any of the international IP treaties, and a few have no local IP law. In addition patents, and trademarks are territorial and / or context based.

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In short an assignment of IP rights with scope of worldwide means that all rights of IP are assigned to second party. Further it also comes to specific clauses of assignments which can restrict to exclusive or non-exclusive mode, specific patent number or portfolio. to cut short if exclusive rights are given then all IP belongs to new holder along with responsibility of maintaining and enforcing the same.

On your other query as WIPO not being filed or applicable on some country. Please note WIPO is an application only and doesnot mean that patent has been granted in designated country. Applicant has 20, 30 or 31 months to enter in designated state. Assignment of WIPO application means that new holder can file in designated state but cannot in non-designated state. Further if parent application is part of assignment and 12 months has not passed new holder of IP can enter directly into national phase using Conventional application method.

Countries having no IP or limited laws cannot be considered as it becomes out of scope of assignment if not specifically mentioned in its clauses. In general I have seen annexes of countries wherein said transfer is applicable and one can include all countries as per desire irrespective of IP laws.

  • That's pretty much as I understood it, but say the transfer also included a design patent or trademark, that was only currently registered in territories X and Y, but the second party wanted to go into territory Z. Would the second party be obliged to perform the relevant searches in territory Z, to ensure the product wouldn't infringe any local marks or patents, or could they assume that as they have worldwide rights, they are free to trade? – arober11 Mar 29 '15 at 14:53
  • Yes they have to perform search in country z – Pushpak Mar 29 '15 at 16:44
  • In all contract of ip assignments due-diligence is a must – Pushpak Mar 29 '15 at 17:10
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    It hasn't been explicitly stated in any of the agreements / waivers I've signed over the years. You also get strange looks if you ask whether worldwide rights cover the ISS. – arober11 Mar 29 '15 at 17:14

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