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Intellectual property (IP) assignment agreement: Sample template for Ontario startups

In a technology business, it is often the value of the intellectual property (IP) assets that the investor finances or the purchaser pays for. It is critical to have “clean” ownership of any intellectual property that is critical to the operation and success of your business. If your products and services depend on certain key IP assets, an investor will undertake due diligence to understand your right to use such assets.

An intellectual property assignment agreement provides assurance to investors that the founders have legally transferred to the company the intellectual property required to run the business.

Make sure to engage qualified IP counsel at a very early stage of your business to ensure that you have the freedom to operate your business with your inventions and to make certain that your business can meet the due diligence requirements of investors. MaRS has created a sample template of an intellectual property assignment agreement to help streamline business for investors, founders and their respective legal advisors. While MaRS makes this document available for educational purposes and to facilitate the negotiation of terms between investors and startups, the template is yours to use at your own risk . Please see the disclaimer below.

Download the Sample intellectual property assignment template

Read next: Sample funding templates for Ontario investors and entrepreneurs

This sample legal document has been made available by MaRS Discovery District for informational purposes only and does not constitute advertising, a solicitation, or legal advice. Neither the transmission of this sample legal document nor the transmission of any information contained in this website is intended to create, and receipt hereof or thereof does not constitute formation of, a lawyer-client relationship. Internet subscribers and online readers should not rely upon this sample legal document or the information contained in this website for any purpose without seeking legal advice from a qualified lawyer practicing in the reader’s province.

The information contained in this website is provided only as general information and may or may not reflect the most current legal developments; accordingly, information on this website is not promised or guaranteed to be correct or complete. MaRS Discovery District expressly disclaims all liability in respect to actions taken or not taken based on any or all the contents of this website.

Check out Ontario’s IP Ecosystem Map ! Our partners at IPON designed this tool to help guide Ontario innovators & researchers on their IP journey. It’s an interactive PDF with info on IP service providers across Ontario.

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Understanding IP Address Assignment: A Complete Guide

Introduction

In today's interconnected world, where almost every aspect of our lives relies on the internet, understanding IP address assignment is crucial for ensuring online security and efficient network management. An IP address serves as a unique identifier for devices connected to a network, allowing them to communicate with each other and access the vast resources available on the internet. Whether you're a technical professional, a network administrator, or simply an internet user, having a solid grasp of how IP addresses are assigned within the same network can greatly enhance your ability to troubleshoot connectivity issues and protect your data.

The Basics of IP Addresses

Before delving into the intricacies of IP address assignment in the same network, it's important to have a basic understanding of what an IP address is. In simple terms, an IP address is a numerical label assigned to each device connected to a computer network that uses the Internet Protocol for communication. It consists of four sets of numbers separated by periods (e.g., 192.168.0.1) and can be either IPv4 or IPv6 format.

IP Address Allocation Methods

There are several methods used for allocating IP addresses within a network. One commonly used method is Dynamic Host Configuration Protocol (DHCP). DHCP allows devices to obtain an IP address automatically from a central server, simplifying the process of managing large networks. Another method is static IP address assignment, where an administrator manually assigns specific addresses to devices within the network. This method provides more control but requires careful planning and documentation.

Considerations for Efficient IP Address Allocation

Efficient allocation of IP addresses is essential for optimizing network performance and avoiding conflicts. When assigning IP addresses, administrators need to consider factors such as subnetting, addressing schemes, and future scalability requirements. By carefully planning the allocation process and implementing best practices such as using private IP ranges and avoiding overlapping subnets, administrators can ensure smooth operation of their networks without running out of available addresses.

IP Address Assignment in the Same Network

When two routers are connected within the same network, they need to obtain unique IP addresses to communicate effectively. This can be achieved through various methods, such as using different subnets or configuring one router as a DHCP server and the other as a client. Understanding how IP address assignment works in this scenario is crucial for maintaining proper network functionality and avoiding conflicts.

Basics of IP Addresses

IP addresses are a fundamental aspect of computer networking that allows devices to communicate with each other over the internet. An IP address, short for Internet Protocol address, is a unique numerical label assigned to each device connected to a network. It serves as an identifier for both the source and destination of data packets transmitted across the network.

The structure of an IP address consists of four sets of numbers separated by periods (e.g., 192.168.0.1). Each set can range from 0 to 255, resulting in a total of approximately 4.3 billion possible unique combinations for IPv4 addresses. However, with the increasing number of devices connected to the internet, IPv6 addresses were introduced to provide a significantly larger pool of available addresses.

IPv4 addresses are still predominantly used today and are divided into different classes based on their range and purpose. Class A addresses have the first octet reserved for network identification, allowing for a large number of hosts within each network. Class B addresses reserve the first two octets for network identification and provide a balance between network size and number of hosts per network. Class C addresses allocate the first three octets for network identification and are commonly used in small networks.

With the depletion of available IPv4 addresses, IPv6 was developed to overcome this limitation by utilizing 128-bit addressing scheme, providing an enormous pool of potential IP addresses - approximately 3.4 x 10^38 unique combinations.

IPv6 addresses are represented in hexadecimal format separated by colons (e.g., 2001:0db8:85a3:0000:0000:8a2e:0370:7334). The longer length allows for more efficient routing and eliminates the need for Network Address Translation (NAT) due to its vast address space.

Understanding these basics is essential when it comes to assigning IP addresses in a network. Network administrators must consider various factors such as the number of devices, network topology, and security requirements when deciding on the IP address allocation method.

In the next section, we will explore different methods of IP address assignment, including Dynamic Host Configuration Protocol (DHCP) and static IP address assignment. These methods play a crucial role in efficiently managing IP addresses within a network and ensuring seamless communication between devices.

Methods of IP Address Assignment

IP address assignment is a crucial aspect of network management and plays a vital role in ensuring seamless connectivity and efficient data transfer. There are primarily two methods of assigning IP addresses in a network: dynamic IP address assignment using the Dynamic Host Configuration Protocol (DHCP) and static IP address assignment.

Dynamic IP Address Assignment using DHCP

Dynamic IP address assignment is the most commonly used method in modern networks. It involves the use of DHCP servers, which dynamically allocate IP addresses to devices on the network. When a device connects to the network, it sends a DHCP request to the DHCP server, which responds by assigning an available IP address from its pool.

One of the key benefits of dynamic IP address assignment is its simplicity and scalability. With dynamic allocation, network administrators don't have to manually configure each device's IP address. Instead, they can rely on the DHCP server to handle this task automatically. This significantly reduces administrative overhead and makes it easier to manage large networks with numerous devices.

Another advantage of dynamic allocation is that it allows for efficient utilization of available IP addresses. Since addresses are assigned on-demand, there is no wastage of unused addresses. This is particularly beneficial in scenarios where devices frequently connect and disconnect from the network, such as in public Wi-Fi hotspots or corporate environments with a high turnover rate.

However, dynamic allocation does have some drawbacks as well. One potential issue is that devices may receive different IP addresses each time they connect to the network. While this might not be an issue for most users, it can cause problems for certain applications or services that rely on consistent addressing.

Additionally, dynamic allocation introduces a dependency on the DHCP server. If the server goes down or becomes unreachable, devices will not be able to obtain an IP address and will be unable to connect to the network. To mitigate this risk, redundant DHCP servers can be deployed for high availability.

Static IP Address Assignment

Static IP address assignment involves manually configuring each device's IP address within the network. Unlike dynamic allocation, where addresses are assigned on-demand, static assignment requires administrators to assign a specific IP address to each device.

One of the main advantages of static IP address assignment is stability. Since devices have fixed addresses, there is no risk of them receiving different addresses each time they connect to the network. This can be beneficial for applications or services that require consistent addressing, such as servers hosting websites or databases.

Static assignment also provides greater control over network resources. Administrators can allocate specific IP addresses to devices based on their requirements or security considerations. For example, critical servers or network infrastructure devices can be assigned static addresses to ensure their availability and ease of management.

However, static IP address assignment has its limitations as well. It can be time-consuming and error-prone, especially in large networks with numerous devices. Any changes to the network topology or addition/removal of devices may require manual reconfiguration of IP addresses, which can be a tedious task.

Furthermore, static allocation can lead to inefficient utilization of available IP addresses. Each device is assigned a fixed address regardless of whether it is actively using the network or not. This can result in wastage of unused addresses and may pose challenges in scenarios where addressing space is limited.

In order to efficiently allocate IP addresses within a network, there are several important considerations that need to be taken into account. By carefully planning and managing the allocation process, network administrators can optimize their IP address usage and ensure smooth operation of their network.

One of the key factors to consider when assigning IP addresses is the size of the network. The number of devices that will be connected to the network determines the range of IP addresses that will be required. It is essential to accurately estimate the number of devices that will need an IP address in order to avoid running out of available addresses or wasting them unnecessarily.

Another consideration is the type of devices that will be connected to the network. Different devices have different requirements in terms of IP address assignment. For example, servers and other critical infrastructure typically require static IP addresses for stability and ease of access. On the other hand, client devices such as laptops and smartphones can often use dynamic IP addresses assigned by a DHCP server.

The physical layout of the network is also an important factor to consider. In larger networks with multiple subnets or VLANs, it may be necessary to segment IP address ranges accordingly. This allows for better organization and management of IP addresses, making it easier to troubleshoot issues and implement security measures.

Security is another crucial consideration when allocating IP addresses. Network administrators should implement measures such as firewalls and intrusion detection systems to protect against unauthorized access or malicious activities. Additionally, assigning unique IP addresses to each device enables better tracking and monitoring, facilitating quick identification and response in case of any security incidents.

Efficient utilization of IP address ranges can also be achieved through proper documentation and record-keeping. Maintaining an up-to-date inventory of all assigned IP addresses helps prevent conflicts or duplicate assignments. It also aids in identifying unused or underutilized portions of the address space, allowing for more efficient allocation in the future.

Furthermore, considering future growth and scalability is essential when allocating IP addresses. Network administrators should plan for potential expansion and allocate IP address ranges accordingly. This foresight ensures that there will be sufficient addresses available to accommodate new devices or additional network segments without disrupting the existing infrastructure.

In any network, the assignment of IP addresses is a crucial aspect that allows devices to communicate with each other effectively. When it comes to IP address assignment in the same network, there are specific considerations and methods to ensure efficient allocation. In this section, we will delve into how two routers in the same network obtain IP addresses and discuss subnetting and IP address range distribution.

To understand how two routers in the same network obtain IP addresses, it's essential to grasp the concept of subnetting. Subnetting involves dividing a larger network into smaller subnetworks or subnets. Each subnet has its own unique range of IP addresses that can be assigned to devices within that particular subnet. This division helps manage and organize large networks efficiently.

When it comes to assigning IP addresses within a subnet, there are various methods available. One common method is manual or static IP address assignment. In this approach, network administrators manually assign a specific IP address to each device within the network. Static IP addresses are typically used for devices that require consistent connectivity and need to be easily identifiable on the network.

Another widely used method for IP address assignment is Dynamic Host Configuration Protocol (DHCP). DHCP is a networking protocol that enables automatic allocation of IP addresses within a network. With DHCP, a server is responsible for assigning IP addresses dynamically as devices connect to the network. This dynamic allocation ensures efficient utilization of available IP addresses by temporarily assigning them to connected devices when needed.

When considering efficient allocation of IP addresses in the same network, several factors come into play. One important consideration is proper planning and design of subnets based on anticipated device count and future growth projections. By carefully analyzing these factors, administrators can allocate appropriate ranges of IP addresses for each subnet, minimizing wastage and ensuring scalability.

Additionally, implementing proper security measures is crucial when assigning IP addresses in the same network. Network administrators should consider implementing firewalls, access control lists (ACLs), and other security mechanisms to protect against unauthorized access and potential IP address conflicts.

Furthermore, monitoring and managing IP address usage is essential for efficient allocation. Regular audits can help identify any unused or underutilized IP addresses that can be reclaimed and allocated to devices as needed. This proactive approach ensures that IP addresses are utilized optimally within the network.

The proper assignment of IP addresses is crucial for maintaining network security and efficiency. Throughout this guide, we have covered the basics of IP addresses, explored different methods of IP address assignment, and discussed considerations for efficient allocation.

In conclusion, understanding IP address assignment in the same network is essential for network administrators and technical professionals. By following proper allocation methods such as DHCP or static IP assignment, organizations can ensure that each device on their network has a unique identifier. This not only enables effective communication and data transfer but also enhances network security by preventing unauthorized access.

Moreover, considering factors like subnetting, scalability, and future growth can help optimize IP address allocation within a network. Network administrators should carefully plan and allocate IP addresses to avoid conflicts or wastage of resources.

Overall, a well-managed IP address assignment process is vital for the smooth functioning of any network. It allows devices to connect seamlessly while ensuring security measures are in place. By adhering to best practices and staying updated with advancements in networking technology, organizations can effectively manage their IP address assignments.

In conclusion, this guide has provided a comprehensive overview of IP address assignment in the same network. We hope it has equipped you with the knowledge needed to make informed decisions regarding your network's IP address allocation. Remember that proper IP address assignment is not only important for connectivity but also plays a significant role in maintaining online security and optimizing network performance.

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Intellectual Property Assignment Agreement: A Comprehensive Guide for Your Business

LegalGPS : July 25, 2024 at 10:30 AM

Hello there, entrepreneur friend! Today let’s have that coffee chat about Intellectual Property Assignment Agreements. If you're thinking "what's that?" or "why do I need it?" then this is the perfect starting point for you. In today's competitive business world, protecting your intellectual property (IP) is more crucial than ever.

Intellectual Property Assignment Agreement Template

Legal GPS templates are drafted by top startup attorneys and fully customizable.

Table of Contents

Defining the purpose.

• Clarity of Transfer
• Definition of Transferred Intellectual Property
• Compensation and Payment Terms
• Warranties and Representations
• Confidentiality Agreements
• Governing Law and Dispute Resolution

Step 1 - Identify the Parties Involved

Step 2 - specify the assigned intellectual property, step 3 - describe the transfer of rights, step 4 - detail compensation and payment terms, step 5 - include confidentiality clauses, step 6 - determine governing law and dispute resolution process, tips for avoiding common mistakes and pitfalls.

What is An Intellectual Property Assignment Agreement?

An Intellectual Property Assignment Agreement is a legal document that ensures the transfer of an inventor or creator's rights to another person or company. Essentially, it’s a legal way of saying "what’s mine is now yours". These agreements are often used in situations involving startups, company buyouts, or employees creating new works or inventions during their jobs - situations a lot of entrepreneurs find themselves in.

Let's break that down a touch more:

The IP assignment agreement's primary purpose is to help your business prevent future disputes regarding IP ownership. When all parties are clear on who owns the intellectual property, it prevents a whole host of potential issues.

Believe me, the last thing you need or want as an entrepreneur is a legal dispute over who owns an idea, an invention, or any creative output.

And that's where this agreement steps in: it provides legal proof that the ownership has been transferred. So, if ever challenged, you can show the agreement and say "See, it’s mine!" .

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Key Elements to Consider for a Properly Drafted Agreement

When it comes to IP assignment agreements, not just any generic contract will do. It's crucial to understand and include some key elements to ensure you're fully protected.

1. Clarity of Transfer

The agreement must clearly define the scope and extent of the transferred rights. To do this, use precise language that leaves no room for confusion. For example, specify whether the IP rights being transferred are exclusive or non-exclusive and if there are any limitations on how the Assignee can use or sublicense the IP. Here's a suggested format:

"The Assignor hereby assigns to the Assignee, its successors and assigns, [exclusive/non-exclusive] rights, title, and interest in and to the Intellectual Property, subject to the following limitations [if any]:"

2. Definition of Transferred Intellectual Property

This section is where you identify the specific Intellectual Property being assigned. Start by describing the IP type (e.g., copyright, patent, trademark), then provide the necessary details:

For a copyright, include the work title and a brief description.

For a patent, mention the patent number and summarize the invention.

For a trademark, provide the trademark name, registration number, and design details.

Remember, the key is to be as detailed and transparent as possible.

3. Compensation and Payment Terms

Just as with any deal, it's important to be crystal clear about the compensation for transferring IP rights. Make sure you consider the following in your agreement:

The total amount payable

The currency

The payment method (e.g., check, wire transfer)

The payment schedule (e.g., lump-sum, installments)

For example: "In consideration for the assignment of rights, the Assignee shall pay the Assignor a total sum of [Amount] in [Currency], through [Payment Method], payable as follows:"

4. Warranties and Representations

Including warranties and representations in the agreement helps provide confidence to both parties. The Assignor should explicitly declare that they:

Are the sole and true owner of the IP

Have the complete right to assign the IP to the Assignee

The IP does not infringe on any third-party rights

A sample clause might look like this:

"The Assignor warrants and represents that they are the true and lawful owner of the Intellectual Property, have full right and authority to enter into this Agreement, and that the Intellectual Property does not infringe upon any third-party rights."

5. Confidentiality Agreements

A crucial aspect of a well-drafted IP Assignment Agreement is protecting sensitive information about the business and the IP itself. Incorporate confidentiality clauses to maintain a secure environment.

Try a clause similar to this one: "The parties agree to treat all confidential information related to this Agreement as strictly confidential, and to take all necessary precautions to prevent unauthorized disclosure or use of such information."

6. Governing Law and Dispute Resolution

Last but not least, outline which jurisdiction's laws will govern the agreement. Furthermore, state how any disputes will be resolved, such as through arbitration, mediation, or litigation.

A model clause could be: "This Agreement shall be governed by the laws of the State of [State]. Any dispute arising out of or in connection with this Agreement shall be resolved by [method of dispute resolution]."

Drafting Your IP Assignment Agreement

Let's move on to the most crucial part of our discussion: Creating your Intellectual Property Assignment Agreement. This section intends to make it much clearer and more action-oriented. Your aim? To walk away with enough information to begin drafting your agreement. Let's dive in.

Start by clearly naming the parties involved in the agreement.

Who is the 'Assignor' (the party transferring the rights)?

Who is the 'Assignee' (the individual or business entity receiving the rights)? Clearly outline their legal names and any other relevant identifying information, like addresses or official business names. It would typically look like this: "[Full Legal Name], referred to as the "Assignor," and [Full Legal Name], referred to as the "Assignee."

Here, you need to provide a full and exhaustive description of the intellectual property being transferred. Please don't leave room for vagueness or ambiguity - the more specific, the better. For instance, if it's a patent, include the patent number and a detailed summary of what the patent covers. If it's a copyrighted work, offer the title, the form of the work (e.g., a book, software, music), and a short description of it.

Your entry here might read: "The "Intellectual Property" includes, but is not limited to, [detailed description]."

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This section is all about clearly laying out what you're giving up and what you're gaining. Highlight all rights, titles, and interests being assigned from the Assignor to the Assignee. You could list them out just to ensure nothing falls between the cracks.

It’s vital to be as clear and detailed as possible here. You're specifying the extent of the rights transferred. It could be exclusive, non-exclusive, permanent, temporary, how it can be used, if it can be sold, and more.

Here's an example:

"The Assignor hereby assigns to the Assignee, its successors and assigns, all rights, title, and interest in and to the Intellectual Property, including, without limitation, the right to sue and recover for past, present, and future violations."

Now, let's talk about money. In this step, you need to fully detail the financial exchanges. Include the amount of payment, payment format, and schedule (upfront, lump sum, installments). It wouldn't hurt to clearly lay out what conditions, if any, would lead to a return of the compensation.

This clause might look something like:

"For the assignment of rights under this Agreement, the Assignee shall provide compensation to the Assignor in the amount of [Amount], payable [insert payment method and schedule]".

Especially with IP, you'll want to build in some safety nets. You can include a confidentiality clause that prevents the involved parties from disclosing sensitive information about the IP.

A basic confidentiality clause may read: "The Assignor agrees to keep confidential all non-public information that the Assignee designates as being confidential, not to disclose it to any other people, and not to use it for any purpose other than the discharge of the Assignor's obligations under this Agreement."

Finally, specify which state or country's laws will govern the agreement. This is crucial in the case of any future legal disputes. Additionally, include how disputes over the agreement will be resolved - arbitration, mediation, litigation, etc.

Here is an example:

"This Agreement will be governed by and construed in accordance with the laws of the State of [State]. Any disputes under this Agreement shall be resolved by [method of dispute resolution]."

You're now equipped with all you need to draft an agreement. But before you get started, here are some quick tips to avoid any missteps:

Ensure the agreement is detailed and described correctly

Work with a knowledgeable attorney

Review the final agreement carefully before signing

With these, you're set to protect your business's most valuable assets!

In today's competitive business environment, it's imperative to protect your inventions, your creations - your Intellectual Property. If you're still unsure where to start, check out our professional template for Intellectual Property Assignments!

With an Intellectual Property Assignment Agreement in hand, you're ensuring that ownership of these is well established to prevent future disputes.

Get Legal GPS's Intellectual Property Assignment Agreement Template Now

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Intellectual Property Assignment Agreement Template

Used 5,944 times

An Intellectual Property Assignment Agreement transfers ownership of any IP created by an employee to the employer. Make sure you have your employees sign this document prior to their start.

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Intellectual Property Agreement Template

Prepared by:

​ [Sender.FirstName] [Sender.LastName] [Sender.Company] ​

Prepared for:

​ [Employee.FirstName] [Employee.LastName] ​

​ [Employee.Company] ​

This Intellectual property agreement is entered into on (date) and will be effective from the same date, between [Sender.FirstName] [Sender.LastName] and [Employee.FirstName] [Employee.LastName] (Receiver).

­­As a condition of my employment with the Company, its subsidiaries, affiliates, successors or assigns (hereinafter, the “Company”), and in consideration of my employment with the Company and my receipt of the compensation now and hereafter paid to me by the Company, I agree to the following:

This Property Assignment Agreement will have the effect of transferring ownership in anything created by the employee during the period of his/her employment with the company. Intellectual Property Assignment Agreements are also entered into between business entities and even individuals, where one party is looking to sell the rights to its intellectual property in exchange for something of value — usually money.

​In an employer/employee Intellectual Property Assignment Agreement (which is what this agreement is), the employee may want to limit the intellectual property that would otherwise transfer to the employer. For example, the employee may not want to transfer anything conceived or created by him/her on his/her own time, especially if it does not relate to the employer’s business.

1. INVENTIONS RETAINED & LICENSED.

I have attached hereto, as Exhibit A, a list describing all inventions, original works of authorship, developments, improvements, and trade secrets which were made by me prior to my employment with the Company (collectively referred to as “Prior Inventions”), which belong to me, which relate to the Company’s proposed business, products or research and development, and which are not assigned to the Company hereunder; or, if no such list is attached, I represent that there are no such Prior Inventions.

If in the course of my employment with the Company, I incorporate into a Company product, process or machine a Prior Invention owned by me or in which I have an interest, the Company is hereby granted and shall have a nonexclusive, royalty-free, irrevocable, perpetual, worldwide license to make, have made, modify, use and sell such Prior Invention as part of or in connection with such product, process or machine.

At the time of joining the company, I was the owner of or held proprietary rights in relation to the intellectual property identified herein and related to the company’s business of (description of business), which Intellectual Property was developed in contemplation of being used, either directly or indirectly, by the Company in connection with carrying on the business of the Company.

2. ASSIGNMENT OF INVENTIONS.

I agree that I will promptly make full written disclosure to the Company, will hold in trust for the sole right and benefit of the Company, and hereby assign to the Company, or its designee, all my rights, title, and interest in and to any and all inventions, original works of authorship, developments, concepts, improvements, designs, discoveries, ideas, trademarks or trade secrets, whether or not patentable or registrable under copyright or similar laws, which I may solely or jointly conceive or develop or reduce to practice, or cause to be conceived or developed or reduced to practice, during the period of time I am in the employ of the Company (collectively referred to as “Inventions”), except as provided in “Exception to Assignments” below.

I further acknowledge that all original works of authorship which are made by me (solely or jointly with others) within the scope of and during the period of my employment with the Company and which are protectable by copyright are “works made for hire,” as that term is defined in the United States Copyright Act.

I understand and agree that the decision whether or not to commercialize or market any invention developed by me solely or jointly with others is within the Company's sole discretion and for the Company’s sole benefit and that no royalty will be due to me as a result of the Company’s efforts to commercialize or market any such invention.

3. REMAINDER OF INTELLECTUAL PROPERTY.

I hereby declare that I have assets, rights or interests that go beyond the scope of this agreement, and are not included as a part of this agreement, either in sum or whole. The benefit of such assets may not be used by [Employee.Company] , unless with my expressly stated written permission.

4. MAINTENANCE OF INVENTIONS RECORDS.

I agree to keep and maintain adequate and current written records of all Inventions made by me (solely or jointly with others) during the term of my employment with the Company. The records will be in the form of notes, sketches, drawings, and any other format that may be specified by the Company.

The records will be available to and remain the sole property of the Company at all times.

5. COSTS AND EXPENSES.

If either party incurs any costs, fees, expenses, etc., both parties will be liable to pay for costs and expenses, in full, unless if otherwise mentioned explicitly in this Agreement, any of the other Ancillary Agreements or any other agreement between parties. If any cost was borne by any person on the instance of completing a task for another person, the person who completed the task shall be reimbursed for the amount spent, as long as they can provide receipts.

6. PATENT & COPYRIGHT REGISTRATIONS.

I agree to assist the Company, or its designee, at the Company’s expense, in every proper way to secure the Company’s rights in the Inventions and any copyrights, patents, mask work rights or other intellectual property rights relating thereto, in any and all countries, including the disclosure to the Company of all pertinent information and data with respect thereto, the execution of all applications, specifications, oaths, assignments and all other instruments which the Company shall deem necessary in order to apply for and obtain such rights and in order to assign and convey to the Company, its successors, assigns, and nominees the sole and exclusive rights, title and interest in and to such Inventions, and any copyrights, patents, mask work rights or other intellectual property rights relating thereto.

I further agree that my obligation to execute or cause to be executed, when it is in my power to do so, any such instrument or papers shall continue after the termination of this Intellectual Property Assignment Agreement.

If the Company is unable because of my mental or physical incapacity or for any other reason to secure my signature to apply for or to pursue any application for any United States or foreign patents or copyright registrations covering Inventions or original works of authorship assigned to the Company as above, then I hereby irrevocably designate and appoint the Company and its duly authorized officers and agents as my agent and attorney in fact, to act for and in my behalf and stead to execute and file any such applications and to do all other lawfully permitted acts to further the prosecution and issuance of letters patent or copyright registrations thereon with the same legal force and effect as if executed by me.

7. COOPERATION.

I agree to perform all commercially reasonable acts deemed necessary or desirable by the Company to assist the Company, at the Company’s expense, in obtaining and enforcing the full benefits, enjoyment, rights and titles that come as a part of the Assigned IP. Such acts may include, but are not limited to, execution of documents and assistance or cooperation (i) in the filing, prosecution, registration, and memorialization of assignment of any applicable patents, copyrights, trademark, mask work, or other applications for my invention, (ii) in the enforcement of any applicable patents, copyrights, trademark, mask work, moral rights, trade secrets, or other proprietary rights, and (iii) in other legal proceedings related to the Assigned IP.

In the event that the Company is unable, for any reason, to secure my signature(s) to any document required to file, prosecute, register, or memorialize the assignment of any patent, copyright, trademark, mask work or other applications or to enforce any patent, copyright, mask work, moral right, trade secret or other proprietary right under any Assigned IP, I hereby irrevocably designate and appoint the Company and the Company’s duly authorized officers and agents as my agents and attorneys-in-fact to act for and on my behalf and instead of me, (i) to execute, file, prosecute, register and memorialize the assignment of any such application, (ii) to execute and file any documentation required for such enforcement, and (iii) to do all other lawfully permitted acts to further the filing, prosecution, registration, memorialization of assignment, issuance, and enforcement of patents, copyrights, mask works, moral rights, trade secrets or other rights under the Assigned IP, all with the same legal force and effect as if executed by me.

8. RETURNING COMPANY DOCUMENTS.

I agree that, at the time of leaving the employ of the Company, I will deliver to the Company (and will not keep in my possession, recreate or deliver to anyone else) any and all devices, records, data, notes, reports, proposals, lists, correspondence, specifications, drawings, blueprints, sketches, materials, equipment, other documents or property, or reproductions of any aforementioned items developed by me pursuant to my employment with the Company or otherwise belonging to the Company, its successors or assigns.

9. REPRESENTATIONS.

I agree to execute any proper oath or verify any proper document required to carry out the terms of this Agreement. I represent that my performance of all the terms of this Agreement will not breach any agreement to keep in confidence proprietary information acquired by me in confidence or in trust prior to my employment by the Company. I have not entered into, and I agree I will not enter into, any oral or written agreement in conflict herewith.

10. EQUITABLE REMEDIES.

I AGREE THAT IT WOULD BE IMPOSSIBLE OR INADEQUATE TO MEASURE AND CALCULATE THE COMPANY’S DAMAGES FROM ANY BREACH OF THE COVENANTS SET FORTH HEREIN.

ACCORDINGLY, I AGREE THAT IF I BREACH ANY OF SUCH PROVISIONS, THE COMPANY WILL HAVE AVAILABLE, IN ADDITION TO ANY OTHER RIGHT OR REMEDY AVAILABLE, THE RIGHT TO OBTAIN AN INJUNCTION FROM A COURT OF COMPETENT JURISDICTION RESTRAINING SUCH BREACH OR THREATENED BREACH AND TO SPECIFIC PERFORMANCE OF ANY SUCH PROVISION OF THIS AGREEMENT.

I FURTHER AGREE THAT NO BOND OR OTHER SECURITY SHALL BE REQUIRED IN OBTAINING SUCH EQUITABLE RELIEF AND I HEREBY CONSENT TO THE ISSUANCE OF SUCH INJUNCTION AND TO THE ORDERING OF SPECIFIC PERFORMANCE.

11. GOVERNING LAW.

This Agreement will be governed by the laws of the State of [Employee.State] . I hereby expressly consent to the personal jurisdiction of the state and federal courts with jurisdiction in [Employee.Country] [Employee.State] for any lawsuit filed there against me by the Company arising from or relating to this Agreement.

12. ENTIRE AGREEMENT.

This Intellectual Property Assignment Agreement sets forth the entire agreement and understanding between the Company and me relating to the subject matter herein and merges all prior discussions between us.

No modification of or amendment to this Agreement, nor any waiver of any rights under this agreement, will be effective unless in writing signed by the party to be charged.

Any subsequent change or changes in my duties, salary or compensation will not affect the validity or scope of this Agreement.

13. SEVERABILITY.

If one or more of the provisions in this Intellectual Property Assignment Agreement are deemed void by law, then the remaining provisions will continue in full force and effect.

14. SUCCESSORS & ASSIGNS.

This Agreement will be binding upon my heirs, executors, administrators and other legal representatives and will be for the benefit of the Company, its successors, and its assigns.

15. DISPUTES AND RESOLUTIONS.

Both parties agree that they will try to amicably settle any disputes amongst themselves, or with the help of a third party such as an agent. In case that they are unable to reach a settlement or do not wish to discuss the terms of the settlement with one another, they may approach a court of law situated in [Sender.Country] , [Sender.State] where applicable laws will come into motion.

AGREED AND ACCEPTED.

I ACKNOWLEDGE THAT I HAVE CAREFULLY READ THE FOREGOING INTELLECTUAL PROPERTY ASSIGNMENT AGREEMENT, I AM SATISFIED THAT I UNDERSTAND IT COMPLETELY, AND I AGREE TO BE BOUND BY ITS TERMS AND CONDITIONS.

​ [Sender.Company]

​ [Sender.FirstName] [Sender.LastName] ​

LIST OF PRIOR INVENTIONS AND ORIGINAL WORKS OF AUTHORSHIP­­­­­­

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IP Assignments: Nunc Pro Tunc Assignments in Patent, Trademark, and Copyright Law

by John DiGiacomo

Like any valuable business asset, patents, trademarks and copyrights can be sold, assigned and licensed. Indeed, assignment and licensing is common with respect to intellectual property. In legal terms, an “assignment” is a transfer of ownership, either full ownership or partial. In basic terms, a nunc pro tunc is a type of assignment that is backdated. Nunc pro tunc is Latin meaning “now for then.”A nunc pro tunc assignment will be signed on a particular date, but parties will deem the assignment to have been granted on some earlier date.

For a Trademark registered on May 1, 2017, an example of how a nunc pro tunc assignment provision might look like this:

Now, therefore, for good and valuable consideration, ASSIGNOR agrees that ASSIGNOR hereby assigned unto ASSIGNEE nunc pro tunc effective as of October 1, 2020, all right, title and interest in and to the May 1, 2017 trademark described herein … In testimony whereof, ASSIGNOR, has signed this instrument this 1st day of October 2020.”

In this example, the assignment is deemed to have been granted on May 1, 2017, but has an effective date of October 1, 2020.

In business terms, nunc pro tunc assignments are often used where past IP assignments are made verbally or via conduct. In the rush to get IP “to market,” it is not uncommon for assignments to be granted, but not reduced to writing. Nunc pro tunc assignments are also commonly used to bridge gaps in the “chain of title” for IP. This can happen when corporations and/or assets are sold, but proper paperwork is missing. Purchasers believe that they have ownership to certain patents, trademarks, or copyrights, but the missing documents cause “gaps” in the chain of title. These “gaps” can be cured by obtaining a nunc pro tunc assignment from the original owner of the IP. In the same manner, nunc pro tunc assignments are often used as part of settlements for litigation involving claims of patent, trademark and/or copyright infringement or disputes over ownership

For litigation purposes, nunc pro tunc assignments are often used to give a party legal standing to initiate litigation. To have “standing” to initiate litigation, a party must have some ownership interest in the patent, trademark or copyright. However, for courts, “standing” is based on the effective date of the assignment, not the earlier date listed in the nunc pro tunc assignment.

However, for other purposes, the earlier assignment date listed in the nunc pro tunc assignment is the credited date. For example, an assignment of a registered trademark must be recorded with the US Patent & Trademark Office (“USPTO”). This is done electronically. The assignment must be uploaded along with the proper recordation form and applicable fee. For the USPTO, the trademark assignment is based on the date designated for the assignment rather than the date of execution of the nunc pro tunc assignment.

So, when should you use a nunc pro tunc assignment for a trademark? The most common situations include:

• When a trademark was previously assigned but not recorded – Sometimes, an assignment of trademark ownership may occur but the paperwork is not properly filed or recorded with the United States Patent and Trademark Office (USPTO). In this case, a nunc pro tunc assignment can be used to correct the oversight and retroactively assign the trademark to the new owner.
• When the original assignment was not effective – A nunc pro tunc assignment can also be used to correct a defective assignment. For example, if the original assignment was not properly executed or lacked essential terms, the nunc pro tunc assignment can be used to correct those issues and make the assignment retroactively effective.
• When there is a change in business structure – A nunc pro tunc assignment may be necessary when there is a change in the business structure of the trademark owner, such as a merger or acquisition. In this case, the new owner may need to retroactively assign the trademark to themselves to ensure that they have proper ownership and control over the trademark.
• When there is a dispute over ownership – If there is a dispute over the ownership of a trademark, a nunc pro tunc assignment may be used to resolve the issue. This can occur when multiple parties claim ownership of a trademark, or when there is confusion over who actually owns the trademark.
• When the trademark was abandoned – In some cases, a trademark may have been abandoned by the previous owner. If this occurs, a nunc pro tunc assignment may be used to assign ownership to the new owner retroactively. However, it is important to note that there are strict time limits for filing a nunc pro tunc assignment in these cases.

It is important to note that a nunc pro tunc assignment should only be used when there is a genuine need to correct an error or oversight in the assignment of a trademark ownership. It is not a tool to be used to cover up illegal or unethical behavior.

In addition, a nunc pro tunc assignment can be a complex legal process that requires the assistance of an experienced trademark attorney. The attorney can help ensure that the assignment is executed properly and in compliance with all legal requirements.

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Intellectual Property Assignment Agreement

Templates / Intellectual Property Assignment Agreement

Our Intellectual Property Assignment template:

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Our Intellectual Property Assignment has been drafted so that it covers all types of Intellectual Property (IP). The Intellectual Property Assignment (often called an IP Assignment) agreement enables you to transfer intellectual property easily from one party to another.

You can use this agreement template to transfer the following types of intellectual property rights:

• Trademarks;
• Design Rights; and / or

If you want to transfer know-how or confidential information along with the IP rights, then we recommend that you use our Technology Transfer Agreement , instead of this IP Assignment. When you only need to cover trademarks, then you may prefer our Trademark Assignment , as it is:

• more to the point and
• covers in more detail what you need to do to register the assignment of a registered trademark with the IPO .

If you only want to sell or transfer copyright material, then use our Copyright Assignment .

For patents only, use our Patent Assignment . Similarly just for design rights try our template Design Right Assignment .

When to Use an Intellectual Property Assignment Agreement

The intellectual property laws existing here in the UK state that if you have created artwork, music, written works, discoveries, inventions, symbols, etc, you have exclusive rights to them. This is the case unless you create the IP in question in your capacity as an employee of a company. In that case, the employer owns the intellectual property.

As the owner of intellectual property rights, you may want to transfer those rights to another party. If you are transferring IP rights in return for a monetary payment, then you are deemed to be assigning those rights. If, however, you are transferring the IP for no monetary payment, then you are deemed to be transferring the rights.

In both cases it is necessary to document the transfer in writing. Use our IP Assignment template to do this.

Using our IP Assignment Template

An IP specialist UK solicitor has drafted our template, so that it is legally binding in England, Scotland and Wales. You can purchase our documents knowing that they are easy to use and great value for money.

You may hire a consultant or freelancer to create new ideas or products. When you have them sign an Assignment of Intellectual Property, then you are transferring the IP from them to you.

It will state that any ideas or products from them will become the intellectual property of your business, instead of the consultant. It eliminates the possibility that the consultant could use the idea or product to reproduce it or sell it to another company.

Although you will find the document includes some legal terminology, it will be easy for you and the other party to understand. The guide that comes with the template explains each clause and terminology as you go along, so it is very easy to use. Download the template to your computer, and you can begin filling it out right away.

Need Help With This IP Assignment Template?

Whatever questions you have regarding this intellectual property assignment template, we are here to help you . Our team of customer support advisers cannot provide legal advice, but they can advise you on using this agreement. For example, whether this or another agreement template is right for you. We can also answer any questions that you have when you get to completing the IP assignment agreement.

FAQs on Intellectual Property Assignments

Below, we answer many of the top questions about IP assignments from the Internet.

How do you transfer intellectual property?

If you wish to transfer Intellectual Property or “IP” to another party, you will need a legal agreement known as an assignment. An assignment of intellectual property gives the party to whom the rights are being transferred full rights of ownership over the intellectual property. The agreement should include all the relevant details about the transfer itself, and list all the IP that the owner is selling. At Legalo, we have such an assignment, which you can use, safe in the knowledge that we have covered all legal eventualities.

Once you have the agreement in place, any IP that is registered needs 1 more step. You need to notify the registry that the ownership has changed. In the UK, this means the Intellectual Property Office.  This step applies in particular to:

• patents (they are always registered)
• registered trademarks (only some trademarks are registered); and
• registered design rights (only some design rights are registered).

What is an assignment of IP rights UK?

An assignment of IP rights is a legal transfer of ownership of intellectual property from one party (the assignor) to another party (the assignee). You do this through a written agreement outlining the terms of the transfer, along with any price or royalties involved. It results in the complete transfer of all rights, title, and interest in the IP, allowing the assignee to become the new owner. The assignment is typically covered in a written agreement that specifies the details of the transfer, including:

• the IP involved, and
• any price for the IP.

For any registered IP, such as a registered trade mark or patent, following the assignment, the owner would apply to the registry to have the assignment of the trade mark or patent noted, so it is clear who the new owner is.

Is an assignment a transfer of ownership?

Yes, an assignment is a legal mechanism for the transfer of ownership, so it means the sale of the IP in this context. An assignment of IP involves the transfer of all rights, title, and interest in the IP from one party to another. You use the assignment agreement to set out the terms of the transaction and provide evidence of the sale of the IP.

Does an assignment of IP need to be in writing?

Yes, an assignment of intellectual property generally needs to be in writing to be legally enforceable. In many jurisdictions, including the UK, a written agreement is necessary to transfer ownership rights. A written assignment agreement provides clarity on the details of the transfer, such as the type of IP, the rights being transferred, and any price or other conditions. For any IP that is registered, the written agreement is a precursor to advising the registry that the ownership has changed. If the IP is not registered, the written agreement would serve as the only proof of the new ownership, so is very important.

What are the key components of an IP assignment? What is an example of an intellectual property assignment agreement?

An example of an intellectual property assignment agreement is a legal document that facilitates the transfer of intellectual property rights from one party to another. It includes details such as:

• the identification of the intellectual property that the owner is assigning,
• the parties involved,
• the scope of rights being transferred,
• the consideration or payment terms (for example, royalties),
• the date on which the agreement comes into effect, and
• any warranties or representations.

The agreement may also address confidentiality, dispute resolution, and governing law provisions.

What is an IP transfer agreement?

An IP transfer agreement, also known as an intellectual property assignment, is a legal document that transfers ownership of intellectual property rights from one party to another. It sets out the terms of the transfer. Having a written agreement:

• ensures that the parties properly transfer the ownership and rights to the intellectual property to the recipient,
• protecting the parties’ interests,
• allowing the new owner to be registered as the owner of the IP, if it is registered IP, and
• enabling them to exploit or use the IP as agreed upon.

What is an example of intellectual property? What is intellectual property and list 4 examples? What are 3 different examples of intellectual property?

Intellectual property is an asset or right created by the law and often it is not a physical asset, but it might have an associated, physical form in some cases. For example, copyright is the intellectual property in a book, but it is not the book itself. It is the legal protection that the law gives to the author’s rights in the book. Examples of different types of intellectual property are:

• design rights,
• trademarks.

Owners can use these rights to protect all sorts of property, such as logos, software, plant varieties, chemical formulae, inventions, books, music and lyrics.

What is the difference between a patent, a copyright, and a trademark?

While patents, copyrights, and trademarks all fall under the umbrella of intellectual property protection, they each correspond to different types of creations and create distinct legal rights. Here is a basic description of the three most common types of IP protection:

• A patent protects new inventions or processes and grants the inventor exclusive rights to make, use, and sell the invention for a limited time. You must register a patent in order to gain the legal protection.
• Copyright protects original artistic and literary works, and the creative industries naturally use it the most. It gives the creator exclusive rights to reproduce, distribute, perform, or display works based on the original creation and typically lasts for the creator’s lifetime plus a certain number of years (70 in the UK, but it varies in other countries). You cannot register copyright in the UK, but in some other countries you can register copyright.
• A trademark protects unique brand or product names, logos, strap-lines, symbols, and other clear indicators of a company, service or product. It allows the owner of the brand to prevent others from using it themselves, avoiding misunderstandings and smeared reputations in the eyes of the consumer. It avoids competitors trading off your good reputation by pretending to be your brand. In the UK, there are both registered and unregistered trademarks, so registration is possible but optional.

Is an assignment of intellectual property a licence?

An assignment is not the same as a licence. An assignment of intellectual property transfers the ownership of the IP from one owner (maybe the inventor or author) to someone else. Often the buyer pays a one-off price for this purchase of the IP rights.

A licence is:

• merely permission from the owner for someone to use the rights in some way (dependant on what the owner permits),
• often on a short-term basis,
• usually in return for the payment of an on-going royalty,
• but the rights remain owned by the owner.

What is the difference between IP ownership and assignment?

IP ownership refers to the legal status of being the rightful owner of intellectual property. This means having exclusive rights and control over its use. On the other hand, IP assignment is the act of transferring (i.e. selling) ownership rights from one party to another. So ownership refers to the current status of owning IP rights, while assignment is the process of transferring those rights to another party.

What is the difference between transfer and assignment of intellectual property rights?

You can use the terms “transfer” and “assignment” interchangeably. They both mean the transfer or sale of rights from one party to another.

Do you need consideration for assignment of IP?

In the UK, the law requires consideration (i.e. something of value that the parties exchange – the price) to make an intellectual property assignment legally valid, unless the parties sign the contract as a “deed”. Consideration can take the form of monetary payment, royalties or licensing fees, exchange of services or assets, or equity or shares in a company. If you sign the contract as a deed, then there is no need to prove there was any consideration for the transfer of the IP.

Can you use someone else’s intellectual property?

Using someone’s intellectual property without the proper permission can lead to legal liability, such as claims of copyright infringement or trademark violations. So it is important to make sure you have authorisation before doing so. However, there are some situations where the law protects you from legal action when using someone’s intellectual property in a minor way, such as:

• Fair Use. This allows use of IP for the purposes of commentary, criticism, education, or research. This is provided that your creation derived from the IP is deemed to be substantively different. So, for example, you can write a review of a book and include short quotes from it. But you cannot copy large passages of it.
• Parody and Satire. Satirising IP can fall under the umbrella of ‘fair use’, so long as it meets the same set of criteria.
• Public Domain. Once the limited time for which the law protected an item of IP has expired, the IP falls into the public domain. Then anyone can freely use it. A creator can also place their own IP into the public domain before its copyright expires. So for example, Charles Dickens wrote his novels and then died a long time ago. The copyright in them has long since expired. So anyone can copy and republish his books now.
• Creative Common Licences.  Some creators license their work to allow others to use it free of charge for, or in, their own creations. Sometimes this permission is subject to certain limitations.

• Related Templates Technology Transfer Agreement Trademark Assignment Copyright Assignment Design Right Assignment Agreement Patent Assignment

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Intellectual Property Assignment Agreement

Nov 2, 2022

An intellectual property assignment agreement is an agreement to transfer intellectual property from one person or company to another.

What is an Intellectual Property Assignment Agreement?

An intellectual property assignment agreement is an agreement to transfer intellectual property from one person or company to another. The agreement may also be referred to as an intellectual property transfer agreement, an IP assignment agreement or an IP transfer agreement.

When should you use an Intellectual Property Assignment Agreement?

An intellectual property assignment agreement should be used whenever transferring the rights in intellectual property ( IP ). There are a number of situations where you may need to do this. The most common for SMEs is where an individual has done work for a company as a consultant without using a consultancy agreement with the result that the consultant and not the company, owns the IP in the work. It is also necessary to transfer IP where founders create IP before incorporating or being employed by a company and, as a result, title to the IP vests in the founder.  

Why is an Intellectual Property Assignment Agreement important and why should you use it?

Investors in early stage companies will often require the company and key employees to give warranties confirming that the company owns all material IP used by the company. Any IP not owned by the company will need to be transferred to the company before the investment is completed. Failing to transfer the IP can materially impact the valuation of the company or, in extreme cases, lead investors to pull out of the transaction.

It is necessary to use a written agreement for an assignment of certain types of IP (such as copyright) to be effective. Further, it is important to ensure that the agreement is an enforceable contract. For the contract to be enforceable there must be some form of consideration paid in exchange for the IP. The amount of consideration payable will depend on the situation in which the IP is being transferred. If a consultant or founder is transferring IP that should have been owned by the company, the consideration should be a nominal amount, e.g. £1, which is deemed to have been received by the assignor (note that some form of consideration is required for the agreement to be an enforceable contract). The IP can, however, be transferred for valuable consideration or as part of an asset sale.

An IP assignment will also include warranties to confirm that the assignor is the owner of the intellectual property being transferred and that the assignor has the right to transfer the intellectual property. Transferring intellectual property without these assurances means that your company will have limited or no recourse should it transpire that the assignor did not own or have the right to transfer the intellectual property.

What are the common pitfalls of an Intellectual Property Assignment Agreement?

Where possible, it is important to clearly describe the IP being transferred. IP by its nature is not physical so failing to accurately describe the IP can result in disputes about what has been transferred. 

Further, there are several different types of IP (copyright, patents, trade marks and designs). Certain IP rights can also be registered. Depending on what is being transferred it may be necessary to take additional steps to perfect the transfer (for example notifying the appropriate register of the transfer). The agreement should include a requirement that the assignor takes the necessary steps to perfect the transfer and specify which party is required to pay any associated costs (such as registration fees).

In addition where copyright is being transferred, the assignor should also ensure that the assignor waives their moral rights (such as the right to attribution) in respect of the copyrighted work.

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This intellectual property agreement  is between , an individual a(n) (the " Assignor ") and  , an individual a(n) (the " Assignee ").

The Assignor has full interest in the intellectual property listed in Exhibit A and described in section 1 below.

The Assignor wishes to transfer to the Assignee, and the Assignee wishes to purchase and receive from the Assignor, all of its interest in the Intellectual Property.

The parties therefore agree as follows:

1. ASSIGNMENT OF INTELLECTUAL PROPERTY.

The Assignor assigns to the Assignee, and the Assignee accepts the assignment of, all of the Assignor's interest in the following in the United States and its territories and throughout the world:

• (a) the intellectual property rights related to the intellectual property listed in Exhibit A ;
• (b) all precursors, portions, and works in progress with respect to that intellectual property and all inventions, works of authorship, mask works, technology, information, know-how, materials, and tools relating to those or to the development, support, or maintenance of those;
• (c) all copyrights, patent rights, trade dress, trade names, business names, other indicia of origin, trade secret rights, trademark rights, mask works rights, and all other intellectual property rights and all business, contract rights, and goodwill in, incorporated, or embodied in, used to develop, or related to any of those; and
• (d) the registrations and applications for registrations of the foregoing (collectively, the" Intellectual Property ").

2. PURCHASE PRICE.

The Assignee shall pay the Assignor a flat fee of $ as full payment for all rights granted under this agreement. The Assignee shall complete this payment no later than .

3. RECORDATION.  

In order to record this assignment with all relevant government agencies, within hours of the effective date of this assignment, the parties shall sign the form of intellectual property assignment agreement attached as Exhibit B . The is solely responsible for filing the assignment and paying any associated fees of the transfer.

4. NO EARLY ASSIGNMENT.

The Assignee shall not assign or otherwise encumber its interest in the Intellectual Property or any associated registrations until it has paid to the Assignor the full consideration provided for in this assignment. Any assignment or encumbrance contrary to this provision shall be void.

5. ASSIGNOR'S REPRESENTATIONS.

The Assignor hereby represents and warrants to the Assignee that it:

• (a) is the sole owner of all interest in the Intellectual Property;
• (b) has not transferred, exclusively licensed, or encumbered any Intellectual Property or agreed to do so;
• (c) is not aware of any violation, infringement, or misappropriation of any third party's rights (or any claim of those) by the Intellectual Property;
• (d) is not aware of any third-party consents, assignments, or licenses that are necessary to perform under this assignment;
• (e) was not acting within the scope of employment of any third party when conceiving, creating, or otherwise performing any activity with respect to any item of Intellectual Property.

The Assignor shall immediately notify the Assignee in writing if any facts or circumstances arise that would make any of the representations in this assignment inaccurate.

6. INDEMNIFICATION. The Assignor shall indemnify the Assignee against:

• (a) any claim by a third party that the Intellectual Property or its use, manufacture, sale, distribution, or reproduction infringes on or misappropriates any copyrights, trade secrets, patents, or other intellectual property;
• (b) any claim by a third party that this assignment conflicts with, violates, or breaches any contract, assignment, license, sublicense, security interest, encumbrance, or other obligation to which the Assignor is a party or of which it has knowledge;
• (c) any claim relating to any past, present, or future use, licensing, sublicensing, distribution, marketing, disclosure, or commercialization of any of the Intellectual Property by the Assignor; and
• (i) the Assignee promptly notifies the Assignor of that claim;
• (ii) the Assignor controls the defense and settlement of that claim;
• (iii) the Assignee fully cooperates with the Assignor in connection with its defense and settlement of that claim; and
• (iv) the Assignee stops all sales, distribution, and public use of the infringing Intellectual Property, if requested by the Assignor.
• (i) obtain the right for the Assignee to continue to use the infringing Intellectual Property;
• (ii) modify the infringing Intellectual Property to eliminate the infringement;
• (iii) provide substitute noninfringing intellectual property to the Assignee pursuant to this assignment; or
• (iv) refund to the Assignee the amount paid under this assignment for the infringing Intellectual Property.
• (c) No Other Obligations. The Assignor shall have no other obligations or liability if infringement occurs, and shall have no other obligation of indemnification or to defend relating to infringement. The Assignor shall not be liable for any costs or expenses incurred without its prior written authorization and shall have no obligation of indemnification or any liability if the infringement is based on (i) any modified form of the Intellectual Property not made by the Assignor, (ii) any finding or ruling after the effective date of this assignment, or (iii) the laws of any country other than the United States of America or its states.

7. GOVERNING LAW.

• (a) Choice of Law. The laws of the state of  govern this agreement (without giving effect to its conflicts of law principles).
• (b) Choice of Forum. Both parties consent to the personal jurisdiction of the state and federal courts in County, .

8. AMENDMENTS.

No amendment to this assignment will be effective unless it is in writing and signed by a party or its authorized representative.

9. ASSIGNMENT AND DELEGATION.

• (a) No Assignment. Neither party may assign any of its rights under this assignment, except with the prior written consent of the other party. All voluntary assignments of rights are limited by this subsection.
• (b) No Delegation. Neither party may delegate any performance under this assignment, except with the prior written consent of the other party.
• (c) Enforceability of an Assignment or Delegation. If a purported assignment or purported delegation is made in violation of this section, it is void.

10. COUNTERPARTS; ELECTRONIC SIGNATURES.

• (a) Counterparts. The parties may execute this assignment in any number of counterparts, each of which is an original but all of which constitute one and the same instrument.
• (b) Electronic Signatures. This assignment, agreements ancillary to this assignment, and related documents entered into in connection with this assignment are signed when a party's signature is delivered by facsimile, email, or other electronic medium. These signatures must be treated in all respects as having the same force and effect as original signatures.

11. SEVERABILITY.

If any one or more of the provisions contained in this assignment is, for any reason, held to be invalid, illegal, or unenforceable in any respect, that invalidity, illegality, or unenforceability will not affect any other provisions of this assignment, but this assignment will be construed as if those invalid, illegal, or unenforceable provisions had never been contained in it, unless the deletion of those provisions would result in such a material change so as to cause completion of the transactions contemplated by this assignment to be unreasonable.

12. NOTICES.

• (a) Writing; Permitted Delivery Methods. Each party giving or making any notice, request, demand, or other communication required or permitted by this agreement shall give that notice in writing and use one of the following types of delivery, each of which is a writing for purposes of this agreement: personal delivery, mail (registered or certified mail, postage prepaid, return-receipt requested), nationally recognized overnight courier (fees prepaid), facsimile, or email.
• (b) Addresses. A party shall address notices under this section to a party at the following addresses:
• If to the Assignor: 

• If to the Assignee: 
• (c) Effectiveness. A notice is effective only if the party giving notice complies with subsections (a) and (b) and if the recipient receives the notice.

13. WAIVER.

No waiver of a breach, failure of any condition, or any right or remedy contained in or granted by the provisions of this assignment will be effective unless it is in writing and signed by the party waiving the breach, failure, right, or remedy. No waiver of any breach, failure, right, or remedy will be deemed a waiver of any other breach, failure, right, or remedy, whether or not similar, and no waiver will constitute a continuing waiver, unless the writing so specifies.

14. ENTIRE AGREEMENT.

This assignment constitutes the final agreement of the parties. It is the complete and exclusive expression of the parties' agreement about the subject matter of this assignment. All prior and contemporaneous communications, negotiations, and agreements between the parties relating to the subject matter of this assignment are expressly merged into and superseded by this assignment. The provisions of this assignment may not be explained, supplemented, or qualified by evidence of trade usage or a prior course of dealings. Neither party was induced to enter this assignment by, and neither party is relying on, any statement, representation, warranty, or agreement of the other party except those set forth expressly in this assignment. Except as set forth expressly in this assignment, there are no conditions precedent to this assignment's effectiveness.

15. HEADINGS.

The descriptive headings of the sections and subsections of this assignment are for convenience only, and do not affect this assignment's construction or interpretation.

16. EFFECTIVENESS.

This assignment will become effective when all parties have signed it. The date this assignment is signed by the last party to sign it (as indicated by the date associated with that party's signature) will be deemed the date of this assignment.

17. NECESSARY ACTS; FURTHER ASSURANCES.

Each party shall use all reasonable efforts to take, or cause to betaken, all actions necessary or desirable to consummate and make effective the transactions this assignment contemplates or to evidence or carry out the intent and purposes of this assignment.

[SIGNATURE PAGE FOLLOWS]

Each party is signing this agreement on the date stated opposite that party's signature. 

[PAGE BREAK HERE] EXHIBIT A LIST OF INTELLECTUAL PROPERTY

[PAGE BREAK HERE] EXHIBIT B FORM OF RECORDABLE INTELLECTUAL PROPERTY ASSIGNMENT For good and valuable consideration, the receipt of which is hereby acknowledged, an individual a(n) (the " Assignor ") hereby assigns to an individual a(n) (the " Assignee ") all of the Assignor's interest in the Intellectual Property identified in Attachment A to this assignment, and the Assignee accepts this assignment.

Each party is signing this agreement on the date stated opposite that party's signature.

[PAGE BREAK HERE]

ATTACHMENT A INTELLECTUAL PROPERTY

Free Intellectual Property Assignment Agreement Template

How-to guides, articles, and any other content appearing on this page are for informational purposes only, do not constitute legal advice, and are no substitute for the advice of an attorney.

Intellectual property assignment agreement: How-to guide

In the dynamic realm of commerce and innovation, the notion of property extends far beyond physical boundaries. Just as one might transfer ownership of a house or a car, the exchange of intellectual property (IP) rights is a critical component of modern business transactions. For instance, if you're launching a startup, acquiring product rights, or even purchasing an entire company, in each scenario, the seamless transfer of intellectual property ownership is essential for ensuring a smooth transition and protecting your interests.

So what constitutes intellectual property? Intellectual property encompasses creations of the mind, such as inventions, software, and hardware programs, literary and artistic works, designs, symbols, names, and images. As businesses grow and evolve, the need to manage and protect these valuable assets becomes increasingly important. One crucial aspect of managing intellectual property is through intellectual property assignment agreement, otherwise known as IP assignment agreement. These agreements facilitate the transfer of IP rights from one part to another.

In this article, we’ll explore the nuances of intellectual property assignment agreements, including their definitions, benefits, types, and considerations.

What is an intellectual property assignment agreement?

An intellectual property assignment agreement, also known as an IP assignment agreement, is a written contract that transfers intellectual property rights from one party (the assignor) to another (the assignee). Intellectual property covers a broad spectrum of intangible assets, including patents, copyrights, trademarks, trade secrets, and more.

For instance, a software developer might have created a groundbreaking algorithm while employed at the company. Through an IP assignment agreement, the developer transfers the rights to this algorithm to the employer, ensuring that the company has exclusive ownership and control over its use and commercialization.

Benefits of IP assignment agreement

IP assignment agreements are crucial in a company’s business and provide multiple benefits for the assignor and assignee.

Clear ownership

By executing an IP assignment agreement, the assignor unequivocally transfers all rights and interests in the intellectual property to the assignee. This clarity of ownership and proprietary rights helps to avoid disputes and potential litigation over the ownership of the IP in the future.

Legal protection

By formally transferring the IP rights through a written agreement, both parties are legally protected. This protection can be essential in case of any infringement or misuse of intellectual property.

Assured compensation or price guarantee

When transferring IP ownership rights for patents, trademarks, copyrights, etc., the original owner gets compensated by the party buying the ownership. The buyer will also pay the IP owner an agreed-upon price for the IP, which will be paid on the date as decided by the involved parties.

No future obligations

The party selling the IP won’t be responsible for meeting any future obligations. For instance, if there is an existing trademark that requires constant monitoring to know whether the trademark is used by any other competitors, the seller won't bear the charges incurred for  trademark monitoring . The buyer has to bear these and any future trademark maintenance costs.

Commercialization opportunities

Assigning intellectual property rights can enable businesses to commercialize the intellectual property more effectively. This could involve licensing the IP to third parties, selling it outright, or using it as collateral for financing.

Facilitates collaboration

In cases where multiple parties are involved in creating intellectual property, an assignment agreement can facilitate collaboration by clearly defining each party's rights and responsibilities.

Risk mitigation

For businesses acquiring ownership rights to intellectual property, an assignment agreement mitigates the risk of third parties claiming rights to the IP. It provides a legal basis for defending against infringement claims and protects the assignee's investment in the IP.

Enhanced value

Clear ownership of intellectual property assets can enhance the value of a business, especially during mergers, acquisitions, or fundraising activities. Investors and stakeholders are more likely to perceive a business positively when it has secure ownership of valuable IP assets. For example, let’s say your start-up company holds sole intellectual property rights to an automatic house-locking system. When your company gets acquired by another company, the new company will also evaluate the value of the IP owned.

Understanding IP assignment agreements: Considerations for sellers

While intellectual property assignment agreements offer various benefits, as a seller of the IP you need to keep in mind what it entails for you when you sell your IP.

Choosing between an IP assignment and a licensing agreement

In an IP assignment agreement, the seller transfers all ownership rights to the intellectual property for a predetermined fee. Here the seller gets a fair market value for their IP as a one-time payment. However, if they had opted for an  IP licensing arrangement , they could have retained the ownership of their IP while giving certain usage rights to the interested party. For instance, let’s say you have written and composed a song. A music company wants your song under their label. Here you have two options. You can sell your song completely to the music label, where they’ll have the right to use or alter your song as they deem fit. Or you can license your creation for an agreed-upon fee or price and set the terms and conditions for using your song. Here you’re getting paid for your creation while retaining ownership of your creation. Whichever option works best for you can be opted and respective agreements can be drawn. 

Value uncertainty

The value of intellectual property can fluctuate over time due to changes in market demand, technological advancements, or legal developments. Sometimes an intellectual property’s future value can increase tremendously, impacting the fairness of the negotiated price. Hence, while deciding the price of such assets, the seller should calculate the future valuation and decide the price of IP.

Limited future opportunities

Once intellectual property rights are assigned, the assignor may be restricted from using or further developing the intellectual property in the future. This limitation could hinder the assignor's ability to explore new business ventures or pivot their existing strategies.

In conclusion, while an intellectual property assignment agreement offers significant benefits in terms of clarity, protection, and commercialization of intellectual property assets, parties must carefully weigh these advantages against the limitations. Consulting with legal professionals experienced in intellectual property law is essential to navigate these considerations effectively.

What are the types of IP assignment agreements?

Intellectual property assignment agreements are comprehensive in nature, outlining the terms and conditions under which the transfer of IP ownership occurs. Here's an overview of the types of IP assignment agreements:

Patent assignment agreement or assignment of patents

A  patent assignment agreement  is a written agreement whereby the owner of a patent transfers or assigns their ownership rights to the other party. This agreement ensures that the assignee gains full legal rights to the patent, including the right to exclude others from making, using, or selling the patented invention, innovations, and processes. Patent assignment agreements typically include details about the patented invention, including patent numbers, descriptions, and any related rights or obligations.

Copyright assignment agreement or assignment of copyrights

Copyright assignment agreements  transfer ownership of creative works, such as literary works, music, art, and other creative expressions. By signing a copyright assignment agreement, the creator relinquishes their rights to reproduce, distribute, and display the copyrighted work to the assignee.

Trademark assignment agreement or assignment of trademarks

Trademark assignment agreement s  transfer ownership of trademarks, which are used to identify and distinguish goods or services in the marketplace. Through this agreement, the assignor relinquishes their exclusive rights to use the trademark in commerce, allowing the assignee to use and enforce the mark for their business or products.

Trade secret assignment agreement or assignment of trade secrets

Trade secret assignment agreements are used to transfer ownership of confidential information or trade secrets from one party to another. These agreements outline the specific trade secrets being transferred and impose obligations of confidentiality on the assignee to protect the secrecy of the information.

By signing such an agreement, the assignee gains the rights to use and protect the trade secrets for their own benefit. It can be any proprietary information like formulas, processes, customer lists, and business strategies. These agreements typically include provisions to maintain confidentiality and prevent unauthorized disclosure or use of trade secrets.

Design assignment agreement or assignment of design

An assignment of design agreement involves the transfer of ownership rights related to industrial designs or product designs. It ensures that the assignee gains exclusive rights to reproduce, distribute, and modify the design according to their business needs. This agreement is crucial for companies involved in product development and manufacturing.

Employee or contractor IP assignment agreement

These agreements transfer ownership of intellectual property created by employees or contractors during their employment or engagement. They are essential for employers to secure ownership of IP developed by their personnel. They often include provisions related to confidentiality, non-competition, and non-disclosure, which are mostly included in an employment agreement. Sometimes, employers even ask employees to sign separate non-disclosure agreements whenever an employee comes up with an invention. 

Assignment of IP in a joint venture 

In cases where multiple parties jointly create intellectual property, a joint ownership agreement may establish each party's rights and responsibilities. These agreements detail the terms of joint ownership, including each party's share of the IP, decision-making authority, and rights to exploit the IP.

It's essential to choose the appropriate type of IP assignment agreement based on the specific intellectual property rights being transferred and the circumstances of the transaction. Consulting with legal professionals knowledgeable in intellectual property law can help ensure that the agreement adequately protects the interests of all parties involved.

Who uses intellectual property assignment agreements?

IP assignment agreements are utilized across a spectrum of industries and scenarios. These agreements are crucial tools for businesses and individuals seeking to define and transfer intellectual property rights.

Corporations and businesses

Employment agreement : Companies frequently incorporate IP assignment clauses into their employment contracts. This ensures that any intellectual property created by employees during the course of their employment is automatically assigned to the company.

Consulting agreement : Similar to employment agreements, consulting contracts may include provisions requiring consultants to transfer any intellectual property they develop while working for the company.

Transactions contemplated : In mergers, acquisitions, or other business transactions, IP assignment agreements are employed to transfer ownership of intellectual property assets between parties.

Joint ventures : Partners in joint ventures often use these agreements to clarify ownership rights and facilitate the sharing or licensing of intellectual property developed during the collaboration.

Individuals and inventors

Prior inventions : An individual with a prior invention may use IP assignment agreements to transfer ownership rights to a new employer or business partner.

Consultants and contractors : Freelancers, consultants, and independent contractors may be required to sign an IP or invention assignment agreement as part of their contractual arrangement with clients.

Startups : Startup founders commonly use these agreements to consolidate ownership of intellectual property created before or during the company's establishment.

In essence, assignment agreements are utilized by parties across various sectors and contexts to facilitate the transfer of valuable intellectual property rights, ensuring legal protection and compliance while fostering innovation and business growth.

Key provisions of an intellectual property assignment agreement

Introduction.

Begin the agreement by formally introducing the parties involved to the agreement. In an intellectual property assignment agreement, the party selling the IP is called the “assignor,” and the other party who buys it is called the “assignee.” Here, along with providing the details of the intellectual property, the assignor explicitly agrees to transfer intellectual property rights to the assignee according to the agreed-upon terms of the agreement.

Assignment of IP

This section specifies the intellectual property being transferred. It identifies the specific patents, trademarks, copyrights, trade secrets, or other intellectual property referenced in the agreement. Additionally, it outlines the scope of the transfer and any limitations on the assigned IP rights.

Purchase price

The agreement details any monetary compensation involved in the transfer of intellectual property rights. In this section, clearly outline the payment terms of the agreement. Detail whether the parties hereto agree to pay the assignor as a lump sum or in installments. If the payment is made in installments, you must also provide the schedule for such payment.

Recordation

To formalize the transfer of intellectual property rights, recordation with relevant authorities may be necessary. This provision addresses the requirement and process for recording the assignment with the appropriate governmental authority, ensuring compliance with legal formalities.

No early assignment

This clause states that the assignment of IP rights cannot occur before certain conditions are met, such as before the completion of a project or the fulfillment of payment obligations. This section prevents premature transfers of IP.

Assignor’s representations

In this part, the assignor provides assurance that they have the sole right to the IP created and it hasn’t been licensed to any third-parties. They also affirm that they have the legal authority to transfer ownership of the IP and there are no undisclosed encumbrances or infringements.

Indemnification

This provision outlines the parties' obligations to indemnify each other against any losses, damages, or liabilities arising from a breach of the agreement or the assertion of third-party claims related to the transferred IP.

Governing law

This section specifies the jurisdiction whose laws will govern and interpret the agreement. It provides clarity in the event of legal disputes.

This clause outlines the procedures for making changes or modifications to the intellectual property assignment agreement. To make any changes pertaining to the terms of the agreement requires written consent from both parties.

Assignment and delegation

This provision addresses the transferability of rights and obligations under the IP assignment agreement. They stipulate whether parties can assign their rights or delegate their duties to third parties.

Counterparts; electronic signatures

This section permits the IP assignment agreement to be executed in multiple counterparts, facilitating convenience in signing. It also recognizes the legal validity of electronic signatures, ensuring compliance with modern technological practices.

Severability

The severability clause states that if any provision of the agreement is found to be invalid or unenforceable, the remaining provisions will remain in full force and effect. This ensures that the invalidity of one provision does not invalidate the entire agreement.

This provision details the methods and addresses for official communication between the parties regarding the intellectual property assignment agreement. They ensure that important correspondence is properly delivered and acknowledged.

Waiver provision addresses instances where a party chooses not to enforce its rights under the agreement. For instance, if certain provisions are waived off on a one-time basis regarding the agreement, this doesn’t mean that the provision is waived for the entire term of the agreement. Take the case where the assignee is paying for the IP in installments. If the assignee is not able to pay the installment for a month, then the assignor can waive that default and continue the agreement upon prior written consent.

Entire agreement

This part of an intellectual property assignment agreement explains that the parties agree to the specific terms and conditions mentioned in the agreement. Any verbal negotiations or other terms that are even stated via email or otherwise are not part of this agreement.

This section states that the headings used in the agreement are for convenience only and do not affect the interpretation of the provisions.

Effectiveness

The effectiveness provision specifies the date on which the agreement becomes effective. This ensures clarity regarding when the rights and obligations outlined in the agreement take effect.

Necessary acts; further assurances

Requires the parties to take any additional actions necessary to carry out the terms of the agreement fully. This may include signing additional documents or cooperating with each other as needed.

How does an online template facilitate drafting intellectual property assignment agreements?

There are various advantages of using an online template for IP such as.

Simplified drafting process

Online templates streamline the drafting process of IP assignment agreements. By providing a structured framework, these templates guide users through the essential elements required for such agreements. Users can efficiently input pertinent details specific to their arrangement, ensuring comprehensive coverage of the subject matter assigned.

Ease of customization

Some  online template providers, like LegalZoom , allow you to easily customize the templates to suit specific circumstances. With editing options available, users can modify clauses and provisions to reflect their agreed-upon terms and conditions of the arrangement

Clarity and consistency

These templates offer clear and standardized language, enhancing understanding and minimizing ambiguity. Consistent formatting and terminology throughout the agreement contribute to its readability and effectiveness.

Time and cost efficiency

Utilizing an online template can minimize the need for extensive document research and costly legal consultations. It allows parties to draft a comprehensive IP assignment agreement efficiently and affordably, saving valuable time and resources.

Accessibility and convenience

Online templates are readily accessible from anywhere with an internet connection, enabling parties to initiate and complete the drafting process conveniently. This accessibility promotes collaboration and facilitates the timely execution of agreements.

As you can see, using online templates provides numerous benefits. Since there are a multitude of templates available online, choosing the right template is key. To streamline this process, LegalZoom offers a comprehensive intellectual property assignment agreement template that is simple and easy to use. Just answer the guided questions, complete the form, and download the document for free.

Frequently asked questions

What's an intellectual property assignment agreement.

When your business needs to sell or buy intangible assets, use an intellectual property assignment agreement to protect both parties. It enables the transfer of ownership of intangible items legally. Intellectual property includes everything from patents to trademarks to software and more.

What key details are required to complete your assignment agreement?

Here's the information you'll need to complete your intellectual property assignment agreement:

• Who owns the intellectual property : Keep the information of the assignor ready while drafting your agreements
• Who's buying the intellectual property : Have the name and contact details of the assignee ready
• How much it costs : Know what the buyer pays for the intellectual property

Related categories

Related templates.

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Copyright Assignment

Protect your intellectual property with a copyright assignment form. Securely transfer your copyright to another party, clearly defining ownership terms while preserving your rights effectively.

Patent Application Assignment

Transfer the ownership rights or interests in a patent application. A patent application agreement defines the terms of transfer, promotes collaboration, and mitigates risks.

Patent Assignment

Simplify the process of transferring patent rights for both buyers and sellers with a patent assignment agreement. Document the ownership transfer clearly and efficiently.

Trademark Assignment

Simplify the buying and selling of trademarks with a trademark assignment agreement. Transfer intellectual property rights and ensure a fair and smooth transaction.

Trademark License Agreement

Ensure fair use of intellectual property with a trademark license agreement. Outline the terms of usage and compensation.

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FAQs - IP Assignment Agreements

What is Intellectual Property?

• pieces of writing

What are intellectual property rights (IPRs)?

Who owns intellectual property rights?

• If intellectual property is created by an employee as part of their job and they have an Employment Agreement in place, the IP is presumed to be owned by the employer.
• If IP rights have been registered, the person or entity named on the register owns those rights. They are the only party with the right to transfer ownership.

What IP rights can be transferred?

• industrial designs
• geographical indications
• trade secrets

What is an IP Assignment document?

Why do I need an IP Assignment Agreement?

Who should I have an IP Assignment with?

Do SeedLegals Employment Agreements include IP Assignment?

How can I write an Intellectual Property Assignment?

What's included in an Intellectual Property Assignment contract?

• details of the assignor
• details of the assignee
• details of the assignment
• any payment for the IP rights
• indemnities against future losses or legal risk, if they apply

How is an IP Assignment different from a Founders Agreement?

How long does an IP Assignment last?

Is an IP Assignment contract legally binding?

Can I use a SeedLegals IP Assignment Agreement if my collaborators are overseas?

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Intellectual Property Assignment: What it Is and Different Types

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ContractsCounsel has assisted 36 clients with intellectual property assignments and maintains a network of 64 intellectual property lawyers available daily. Customers rate lawyers for intellectual property assignment matters 5.0.

What is Intellectual Property Assignment?

Intellectual property assignment is a process in which the ownership of a work product created for an entity by an employee or consultant is transferred to the entity.

Typically, an employee or consultant will sign an agreement that explicitly assigns any intellectual property created during service with the company. For the employee, this is called either a Confidentiality and Inventions Assignment Agreement (CIIAA) or Proprietary Information and Inventions Assignment Agreement (PIIAA).

4 Types of Intellectual Property

You should consider 4 of the main kinds of valuable assets under an intellectual property assignment:

• A trademark
• A copyright
• Trade secrets

These are all considered valuable assets of a company, and knowing how they work and how they’re created can help protect them.

Here is an article to learn more about intellectual property.

A patent is granted by the government and gives the owner of the patent unlimited ability to build, sell or use their invention while at the same time preventing others from doing so.

Typically, patents issued have a 20-year life span, but some expire in 14. After this period, anyone else can copy, build, or sell the invention. Any attempt to circumvent this time allowance would result in a patent infringement .

To receive exclusive rights to build, sell or use your invention, you have to provide details about your invention that would allow someone who is “practiced in the arts” to recreate it. Also, there are four requirements for a patent to be issued:

• The subject matter must be “patentable” (as defined by Congress and the courts).
• Your idea must be “new.”
• The idea must be “useful.”
• Your idea must be “non-obvious.”

Additionally, you can file for three different types of patents:

• Utility Patent : Utility patents are granted for inventions or discoveries of useful processes, machines, articles manufactured, the composition of matter, or any new and useful improvements to the above.
• Design Patent : Design patents are granted for any new, original, or ornamental design. This type is valid for 14 years after it is issued.
• Plant Patent : Plant patents are granted to persons who invent, discover, and reproduce any distinct or new variety of plant, asexually. This type is valid for 20 years after it is issued.

Here is an article to learn more about patents.

A trademark is any word, phrase, symbol, design, or combination that identifies goods or services. The term “trademark” is used for both trademarks and service marks. Still, a service mark is reserved for those services related to the company.

Owning a trademark doesn’t automatically mean you own the words or the phrasing, but rather that you own the rights to how to use that word or phrase concerning specific goods or services. A great example is an online store that tries to use the Nike swoosh mark for their own t-shirts or shoes. This is trademark infringement .

To obtain trademark protection, you must first choose the specific category of goods or services the trademark will cover. This also means the company looking to obtain the trademark must already produce the category of goods/services to be trademarked or have a demonstrative or good faith intent to provide them.

Here is an article to learn more about trademarks.

Copyright infringement is probably one of the most well-known areas of IP protection. Copyrights are obtained to protect original authored works such as:

• Photographs
• Audio recordings
• Computer programs
• Architectural works

Things like titles, names, short phrases, slogans, familiar symbols or designs, lettering, coloring, or a list of ingredients or contents, are not considered creative . Still, they are also included as items that can be copyrighted. In general, copyrights can protect the way you convey a message or expression, but not ideas, procedures, systems, concepts, processes, and discoveries.

Companies can have a record of ownership over copyrights, as the law allows for ownership through “ works made for hire ” or works created by an employee within the scope of their employment.

Here is an article to learn more about copyrights.

Trade Secrets

Businesses have a wide range of confidential information, but not everything is considered a trade secret. Typically, a trade secret refers to information that is not publicly known and involves a reasonable effort to keep it confidential.

It also has to offer some form of economic value to the information holder that would only be beneficial if the information was not known by anyone else. States and even countries have varying laws regarding trade secrets. An excellent way to consider what constitutes trade secrets is to consider what information you wouldn’t want your competitors to get ahold of.

Think about pricing information, marketing strategy, or specific processes used to manufacture your goods.

Here is an article to learn more about trade secrets.

Image via Pexels by Andrea Piacquadio

Does IP Assignment Need Consideration?

An enforceable and valid intellectual property assignment needs to have a valid contract. A contract requires:

• Acceptance of the offer
• Proper consideration

Now, what is considered valid consideration could vary. Still, generally consideration “must be ‘bargained for’ and not "illusory’” (Restatement (Second) of Contracts, § 77).

In some cases, small monetary considerations, as well as non-monetary considerations, are enough to create a binding contract, as long as there is an exchange of value between parties.

What is an Intellectual Property Assignment Agreement?

The intellectual property assignment agreement is the document that binds everything together. Companies traditionally use IP agreements to protect their inventions. However, in this arrangement, they are still free to transfer ownership of IP on a case-by-case basis.

It is sometimes called an IP transfer agreement. It ensures that if an employee helps to develop an intangible creation while employed with the company, the company still owns the rights and responsibilities to the creation.

An IP Property Assignment Agreement usually includes the following sections:

• Definition of Intellectual Property
• Intellectual Property Assignment
• Future Intellectual Property Assignment
• Representations and Warranties
• Indemnification
• Assumption of Liabilities
• Severability
• Confidentiality
• Termination; Survival of Certain Provisions
• Governing Law and Venue
• Entire Agreement; Counterparts

Who Uses an Intellectual Property Assignment Agreement?

Any entity or person can use an intellectual property assignment to protect their original inventions. Still, they can safely transfer ownership of IP when needed.

Example of an Intellectual Property Assignment

Some examples of intellectual property assignments include:

• A New Software Company: A software company working on brand-new proprietary software may assign a technology assignment agreement. This type of assignment protects startup companies before they create the company. The developers may keep certain IP rights in some cases.
• An Existing Manufacturing Company: An existing company involved in manufacturing technology could institute an Invention Assignment agreement for their employees to sign. This gives the company ownership over any relevant intellectual property created by the signing employees.
• New Sub-Contracted Employees: Newly contracted employees could be hired by a company to conduct research or work on new product development. In these roles, a company may ask that they sign an IP Assignment Agreement that assigns back to the company any ideas, work, a product of work, or inventions related to the business created during employment.

Intellectual property assignments are not for the faint of heart. Oftentimes these are multi-layered and complex arrangements that require careful negotiation.

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Scott graduated from Cardozo Law School and also has an English degree from Penn. His practice focuses on business law and contracts, with an emphasis on commercial transactions and negotiations, document drafting and review, employment, business formation, e-commerce, technology, healthcare, privacy, data security and compliance. While he's worked with large, established companies, he particularly enjoys collaborating with startups. Prior to starting his own practice in 2011, Scott worked in-house for over 5 years with businesses large and small. He also handles real estate leases, website and app Terms of Service and privacy policies, and pre- and post-nup agreements.

I am a solo-practitioner with a practice mostly consisting of serving as a fractional general counsel to growth stage companies. With a practical business background, I aim to bring real-world, economically driven solutions to my client's legal problems and pride myself on efficient yet effective work.

Construction lawyer practicing in Southern California since 1988. Have extensive experience in construction contracts and forms drafting, negotiating. I also serve as counsel for large material suppliers and have extensive experience in commercial transactions, drafting and negotiation of commercial documents including dealerships, NDAs, etc.

Business attorney with over 15 years of experience serving companies big and small with contracting including business, real estate and employment.

At Whalen Legal Group, PC, we strive to ensure that our clients are provided with the highest quality legal representation. Our team is committed to providing you with personalized and effective legal advice. We specialize in Business Law, Estate Planning and Trust, and Real Estate Law and have years of experience in these fields.Our goal is to provide our clients with the best possible service and to ensure that their legal matters are handled with compassion, integrity, and transparency. We understand that every situation is different and we take the time to listen and understand each and every one of our clients’ needs.

I represent business owners throughout California with their business, IP and employment law matters.

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Assignment of IP

Fact sheet: commercialising intellectual property - assignment agreements.

This fact sheet deals with the assignment of Intellectual Property (IP) rights. An assignment can be beneficial in many business circumstances. Examples may include your company not having the means to undertake commercialisation or preferring to receive a once-off lump sum payment for the innovative technology. This implies having no further concerns regarding the maintenance and enforcement of the IP rights.

Download Fact sheet

Infographic: Commercialising IP - Assignment Agreements

An IP assignment is a transfer of ownership of an intellectual property right, such as a patent, trade mark or copyright, from one party (the assignor) to another party (the assignee). This infographic adds together the benefits, risks and the key elements of assignment agreements.

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IP Guide: Your Guide to IP and Contracts

IP can be transferred or licensed, offered to enter into cooperation agreements or contributed as capital in a joint venture. Protecting and managing IP through well-drafted agreements is key for business success. Therefore, the purpose of this guide on IP and contracts is to be a useful tool regarding IP exploitation and management. It aims to help businesses better understand contracts in the IP field and to get an idea on different key points and how these should be drafted.

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IP Assignment and Licensing

IP rights have essentially transformed intangibles (knowledge, creativity) into valuable assets that you can put to strategic use in your business. You can do this by directly integrating the IP in the production or marketing of your products and services, thereby strengthening their competitiveness. With IP assignement and IP licensing, IP owners can also use your IP rights to create additional revenue streams by selling them out, giving others a permission to use them, and establishing joint ventures or other collaboration agreements with others who have complementary assets.

  Expert tip: Assignment, license and franchising agreements are flexible documents that can be adapted to the needs of the parties. Nevertheless, most countries establish specific requirements for these agreements, e.g. written form, registration with a national IP office or other authority, etc. For more information, consult your IP office .

IP rights assignment

You can sell your IP asset to another person or legal entity.

When all the exclusive rights to a patented invention, registered trademark, design or copyrighted work are transferred by the owner to another person or legal entity, it is said that an assignment of such rights has taken place.

Assignment is the sale of an IP asset. It means that you transfer ownership of an IP asset to another person or legal entity.

IP for Business Guides

Learn more about the commercialization of patents, trademarks, industrial designs, copyright.

Read IP for Business Guides

IP licensing

You can authorize someone else to use your IP, while maintaining your ownership, by granting a license in exchange for something of value, such as a monetary lump sum, recurrent payments (royalties), or a combination of these.

Licensing provides you with the valuable opportunity to expand into new markets, add revenue streams through royalties, develop partnerships etc.

If you own a patent, know-how, or other IP assets, but cannot or do not want to be involved in all the commercialization activities (e.g. technology development, manufacturing, market expansion, etc.) you can benefit from the licensing of your IP assets by relying on the capacity, know-how, and management expertise of your partner.

  Expert tip: Licensing can generally be sole, exclusive or non-exclusive, depending on whether the IP owner retains some rights, or on whether the IP rights can be licensed to one or multiple parties.

Technology licensing agreements

Trademark licensing agreements, copyright licensing agreements, franchising agreements, merchande licensing, joint venture agreements, find out more.

• Learn more about Technology Transfer .