A dangerously overused cliché which expresses the idea that an assignee of intellectual property rights only receives what the assignor has to give, i.e., that an assignment is subject to any prior licenses or grants of IP rights, but also that the assignee automatically received all the rights that the assignor had under the existing license or grant. While this principle is normally applied in many jurisdictions, it is not universally applied, and in some rare instances an assignment of IP rights may defeat a pre-existing license, especially if that license either:
- does not contain a clause providing that it survives an assignment;
- the license or other grant contains a clause explicitly restricting assignment;
- Under applicable law implicitly restricts assignment (which might for example be the case if the granted license is described as ‘personal‘); or
- if the law of the country that conveyed the underlying right requires recordation of licensee rights (see Record Title) or other notice of their existence for them to be valid against a purchaser of the IP with or without notice, i.e., a bone-fide purchaser.
The cliché is more accurate when applied to licenses assignable by their terms—there the principle is widely upheld that all that can be assigned are the rights, as they existed under the license at the time of assignment, subject to any associated limitations and obligations. As a general due diligence practice, it is unwise to assume the ‘steps in the shoes’ principle, but rather one should consider the effect of assignment based on a specific license’s terms and applicable law(s). See Sub-License, Bone Fide Purchaser.