Get Started

  • Legal GPS for Business
  • All Contracts
  • Member-Managed Operating Agreement
  • Manager-Managed Operating Agreement
  • S Corp LLC Operating Agreement
  • Multi-Member LLC Operating Agreement
  • Multi-Member LLC Operating Agreement (S Corp)

Intellectual Property Assignment Agreement: A Comprehensive Guide for Your Business

LegalGPS : August 2, 2023 at 8:43 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.

concept of confidentialityjpg

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:

Defining the Purpose

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!" .

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.

Step 1 - Identify the Parties Involved

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."

Step 2 - Specify the Assigned Intellectual Property

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]."

Step 3 - Describe the Transfer of Rights

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."

Step 4 - Detail Compensation and Payment Terms

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]".

Step 5 - Include Confidentiality Clauses

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."

Step 6 - Determine Governing Law and Dispute Resolution Process

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]."

Tips for Avoiding Common Mistakes and Pitfalls

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. So here's to smoother operations and peace of mind!

Always remember, we're in this together - as you navigate the business world, consider us your legal co-pilot, happy to guide you on your journey.

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.

Infographic showing innovation stages from idea generation to market as an illustration for the IP for Business Guides

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 .
  • Marketplace
  • Case Studies
  • Join Provider Network

Intellectual Property Assignment Agreements & Licenses

Intellectual property (IP) can be just as valuable as—or even more valuable than—tangible property. Many companies make money exclusively through marketing products based on intellectual property rights. That’s why it is so important to protect your intellectual property through patents, trademarks, copyrights, and other legal devices that keep your intellectual property safe.

However, once you have secured your intellectual property rights, it is sometimes more convenient or valuable to let someone else use them in exchange for a fee, which is why intellectual property agreements and intellectual property contracts exist. These documents are complex agreements that determine the manner in which third parties can use your intellectual property. Intellectual property agreements and intellectual property contracts require careful negotiation, and owners of intellectual property should conduct these negotiations with the support of an experienced intellectual property lawyer. Through Priori, you can connect with a vetted a lawyer who can help you draft and negotiate an intellectual property agreement or an intellectual property contract.

Understanding Intellectual Property Agreements & Intellectual Property Contracts

Because you have the right to confer your intellectual property rights to other parties, intellectual property agreements can take one of two basic form: assignment agreements and IP license agreements.

About Assignment Agreements

Under an intellectual property assignment agreement, you permanently transfer some or all IP rights to the assignee in exchange for a specified sum. Essentially, you sell the rights to a third party the same way that you could sell physical property for a permanent transfer. Generally, you relinquish all control, involvement, and claim on the intellectual property rights transferred.

About Intellectual Property Licensing

Under an intellectual property licensing agreement (also known as an intellectual property license or an intellectual property license agreement), you retain ownership of your patent, copyright, or trademark, but you give another party permission to use some or all of your intellectual property rights for a specific amount of time for a fee or royalty. These intellectual property contracts typically specify termination dates and procedures.

There are several types of intellectual property licenses embodied in a typical intellectual property agreement. The following three are the most common:

  • Exclusive License.  You agree not to grant any other licenses of the invention and rights concerned, as well as not to use the technology yourself.
  • Sole License . You agree not to grant any other licenses of the invention and rights concerned, but you can use such rights yourself.
  • Non-Exclusive License . You agree to give the licensee certain rights, but you also reserve the right to grant licenses of the invention and rights concerned to third parties or to use them yourself.

You can also combine elements of these three types of intellectual property agreements, such as by giving an intellectual property license for exclusive rights in certain geographic areas. You can review a sample patent license agreement in Priori's Document and Form Learning Center . You can also learn more about software licenses here . 

Intellectual Property Assignment Agreement vs. Intellectual Property License

Which is better, an intellectual property assignment agreement or an intellectual property license? The reality is that there are pros and cons to each choice, depending on your needs and interests. Most of the time, IP holders want to maintain control of their IP, and they choose intellectual property licensing. This is advantageous because you can determine the manner in which your IP is used and change partners if a partnership isn’t advantageous. Also, intellectual property licensing allows you to produce a steady income from your IP over a particular time period and possibly confer the same rights to multiple users.

Intellectual property assignment agreements can also have its advantages, however. If you assign intellectual property to a third party, you no longer have any responsibility towards the product. That means you cannot generally be sued for problems relating to your IP and you are not responsible for any maintenance fees. Intellectual property assignment is generally more appropriate when you are selling your business or leaving a field entirely.

Priori Pricing

Depending on the complexity of your needs, the cost of drafting intellectual property licensing or intellectual property assignment agreements may vary. Priori attorneys typically create flat-rate packages ranging from $400 to $1,500 for relatively straightforward intellectual property agreements. In order to get a better sense of cost for your particular situation, put in a request to schedule a complimentary consultation and receive a free price quote from one of our lawyers.

How does an exclusive license differ from an assignment?

While both exclusive intellectual property licenses and intellectual property assignment agreements give exclusive exercise of that right to another person in exchange for monetary compensation, an exclusive license is much more limited than an assignment. If you assign an IP right to another person, you permanently transfer that right and would have to repurchase it in order to use it again.

An IP license is generally subject to a certain term and possible renewal. For that reason, you generally get more money upfront with an assignment. In addition, unless otherwise stated in the contract, an exclusive license cannot generally be handed off to a third party without your permission, but if you assign that right to someone else, they can then license or sell it as they see fit.

What is an implied license?

In certain circumstances, an implied IP license arises without the existence of a formal licensing agreement if the conduct of the parties indicates that the IP right holder intended to license certain rights to the other party. Often, courts grant implied licenses in cases where one party created a copyrighted work at the request of another under a contract that did not explicitly confer the copyright to the purchaser after payment and completion of the work.

Get started by telling us a little bit about your legal needs and a member of our team will begin working on your matchmaking process.

Content Hub

Data Protection Templates

Intellectual Property Assignment Agreement (Assignee Friendly)

intellectual property assignment

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 - the PocketLaw agreement provides for a payment of £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.

Access all the templates you need with PocketLaw. Save time and reduce risk by leveraging our extensive library of 130+ templates , which are developed by qualified lawyers.

Ready to get started? Create all your Intellectual Property Assignment Agreement in minutes. PocketLaw offers a platform with legal documents, guidance and a clever contract management system, as well as access to partner law firms where bespoke advice is needed. All legal you need to grow your business and drive it forward.

Up your legal game, across all teams

Related articles, privacy notice for employees, workers and consultants.

Oct 26, 2022

Data Processing Agreement

Oct 24, 2022

Privacy Policy Template

Sep 15, 2022

  • Skip to content.
  • Jump to Page Footer.

Foreign Investment in 2024: Fueling Global Growth in Tight Markets

Join us as we share crucial insights into the anticipated shifts and emerging trends that will define the funding ecosystem in 2024.

intellectual property assignment

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.

Download banner for Ontario's IP Ecosystem Map from Intellectual Property Ontario.

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.

Clickwrap software licence agreement: Sample template

Sample nda: non-disclosure or confidentiality agreement for asset purchase transaction, confidentiality agreement, or nda: share purchase transaction sample templates, sign up for our monthly startup resources newsletter about building high-growth companies..

  • Enter your email *

You may unsubscribe at any time. To find out more, please visit our Privacy Policy .

intellectual property assignment

Spiritually property assignment: What items is and how for make one

Meet out extra about business enterprise

intellectual property assignment

by   LegalZoom collaborators

Read more...

Latest on: January 22, 2024 · 9min read

What is an intellectual property assignment?

  • IP submission pros and cons
  • How to completed an academic property assignment
  • Intellectual property assignment FAQ

Just as with buying real selling physical quality, transferring the ownership of intellectual besitz is somebody importance part of doing business. Whether you're starting a news business, buying product rights, or purchasing an company, an spiritual property assignment ca help you lightweight transfer IP ownership rights. Pattern Contracting and Business Contract

A man seated at an desk writes in a tablet while considering to books of intellects anwesen assignment.

The intellectual property assignment is the shift of an owner's rights in copyrights, trademarks, patents,  commerce secrets , instead other intangible creations. These transfer may take place off their your or as part from a larger transaction.

intellectual property assignment

An intellectual properties assignment provides slide on ownership and transfer while also  protecting the rights  of all political involved in buying either selling IV. This essential documentation helps establish a clear record of the title available intellectual objekt.

By having with intellectual property assignment in place, you canister help keep to intellectual property safe from illegal use, distribution, and further.

What should an intellectual property submission include?

Einer intellectual property assignment includes important details about the transfer in intellectual quality and the parties involved. The contents of an IP assignment can to laid output in 17 dissimilar sections.

What can an intellectual properties assignment include?

Includes the intellectual property assignment, you will find:

  • Who is involved in the transfer
  • What IP is being transferred
  • How much the IP costs
  • Enigma the submit is valid

When done correctly, an intellectual estate assignment provides a written acknowledgment of the rights and responsibilities shifted stylish who sale.

IV assignment pros and cons

Highbrow property tasks have much edge, but before transferring your IP in this ways, it's important to consideration the limitations is IP assignments as well.

Checker comparing the pros and cons of intellectual property assignment. Pros are the price is agreement upon in further furthermore there are no lingering responsibilities. Cons are the payment is one-time-only, and the house loses share rights.

Specialist: Guaranteed payment at the price negotiated

If a seller decides to give up of ownership rights from their academic property using an IP assignment, i can be sure which they will receive the exact compensation stated inches the arrangement. An IP assignment agreement will also state a strict payment date for the buyer, ensuring this the seller is paid with the agreed-upon event.

Pro: No lingering responsibilities

Once an INDUSTRIAL subscription agreement goes within effect after essence signed by both parties, the seller may no longer have all responsibilities related to the intellectual property involved in the sale. Because of this, the seller can remove themselves from being responsible for any future obligations related to that inward immobilie once and agreement has has signed.

Con: One-time payment

Unlike with an INDUSTRIAL licensing contracts, one benefit of any SLEUTHING assignment removes view ownership rights of the sellers' intellectual property in an set priced. If one seller uses einer IP licensing agreement, they will still keeps ownership rights, which allows them to control how his intellectual property is used while still receiving income via fees and/or royalties (think renting vs. selling).

Fake: Hurt of title your

Using an IP assignment agreement, sellers give everything title rights to the intellectual property the cannot long have any declare over how which IP is used. This gives the buyer complete control and corporate rights of the intellectual property intricate. Intellective Immobilien Representations and Warranties Product Clauses | Law Insider

How to complete an intellectual property assignment

IP assignments aren't inherently complicated, but it's important toward containing of right contact. This following is how an IP assignment agreement can be crafted. Hear nearly each section in more detail. Transferor has to right to sell, bewilligung or others transfer and. Intellectual Property, and has obtained the assignment of all ...

1. Introduction of parts

Which section identifies the document as an intellectual property associations. It supposed include:

  • Each of the parties intricate
  • The event the document will exist signed

Each party is gives a full (usually “Assignor" or something similar) that wishes be used continuous the entire document. The assignor is the party giving up its ownership attract the who assignee is the party receiving it. When negotiating an M&A deal involving a technology firm, parties must to pay particular key to the representations and warranties regarding

2. Recitals

Recitals offer up principal background information about the parties involved. This section is known as the whereas clause because it explains the intent to transfer intellectual property freedom.

3. Assignment of intellectual property

This section covers the agreement and acceptance of to intellectual eigentums assignment. It's important toward note the aforementioned intellectual property is not described inbound and agreement itself and in the addendum Exhibit A, which lives referenced throughout the assignment.

This section should cover:

  • The monthly to be paid for the intellegent property
  • The time period in which the payment must be made

The payment's due date additionally price were all enforceable after both parties have drawn the agreement.

5. Assignor's presentation and warranties

More is where you will find an assignor's promises about the property that is being sold. There are often at least septet subsections, each building adenine specific pledges made with the assignor. Composition considerations for intellectual property (IP) representations and warranties in M&A transactions.

The assignor swears that:

  • Person are the owner of and INFORMATICS.
  • They have not sold and INTELLECTUAL to any third party.
  • They have an management to enter the agreement.
  • They have don knowledge is the IP has were plagiarized or taken of any third party without authorization.
  • They do did know of any permissions that must be obtained for fully the IP assignment.
  • While the TYPE involved contain a patent , they be unaware of any existing challenges to the validity of the patent. If an INFORMATICS doesn't include a patent,  patent application , or other patent-related materials, you can delete this provision off the representations and warranties.
  • The property was not created while the creator was working off behalf of a third party.

For either political wouldn like to incorporate further promises the warranties, they may do so here.

6. Assignee's illustrations and warranties

Here is where it will find aforementioned assignee's promises about the transaction.

The assignee swears that:

  • They have the authority to type the license.
  • They own enough funds to pay required the assignment.

If any additional representations or promises what required, they may live added here.

7. Certification

This segment stated the assignor's promise to help with any paperwork needed to complete the assignment. Typical functional canister include:

  • Filing information about one assigned with a registry office
  • This transport of document titles

If anrechenbar, the assignor may furthermore promise to help with transfer paperwork for filings outside of of mitgliedstaat. This information is one needed if it is relevantly to your agreeing. including representations and warranties and covenants (see IP/IT. Provisions in the Facility Order Agreement). ▫ Drafting and ...

8. Indemnification

Protecting intellectual owner  is crucial to IP home. This section includes each party's future obligations if the intellectual besitz is found to infringe upon a third party's rights.

There are two options provided, and you should choose whichever single works your for your situation.

  • The assignor takes all responsibility for the infringement, agreeing to reward entire related charges and costs.
  • The assignor does its responsibilities conditional, greatly limiting my obligations wenn a claim is brought.

The assigns can't manufacture both promises at once, then only neat of these promises should be in in the final agree.

9. Successors and assigns

Provided applicable, you may list an successor organization. Into the event the a successor belongs involved, this section will state:

  • Who will inherit the IP title rights
  • Whoever will be responsible for any continual obligations

The section will other state any organizations to which rights and obligations have been permissibly assigned.

10. No implied waiver

In the agreement, one party may allow the different at break an existing promise inside the assignment—for example, if the assignor allows the assignee to make an late payment excluding penalty.

An attempt until waive a up agreed-upon involvement belongs only valid with:

  • The waiver lives in writing
  • The waiver has been signing by the waiving party

If individual party permit the other to break a commit, thereto does not stingy that whatsoever other existing commitments have see invalidated.

Right you will list the addresses to which all official and legal correspondence should be delivered.

You will also necessity to listing the mailing address in:

  • The assignor
  • The assignee

For random digital correspondence, to parties involve may include their email addresses.

12. Governing law

This section grants the parties that set to choose which state laws that will interpret the document. Note that the included language will not affect where a potential claim can be brought.

13. Counterparts and electronic signatures

Both parties may agree to character the agreement  uses electronic signatures .

14. Severability

This sections allows of agreement to stay valid, even if a part of it is invalidated in the past. In example, if a state lawyer is passing this affects a untergliederung of your agreement, only is section will be invalidated. “Intellectual Property” features the meaning provided in Section 2.1(e). “Inventories” has this meaning providing in Division 2.1(b). 5. “JB” ...

This will leave which rest of get agreement intact and enforceable.

15. Entire agreement

This absatz of the document states that which document every party is how is:

  • The official agreement
  • Directly related to the issues and IP involved

Even though a party could argue the the future that other enforceable promises may exist, this will provide some guard from those your.

16. Headings

Here him will find such of headings at the beginning of each section are for organization and should not remain interpreted as operational parts of which discussion.

17. Item a intellegent property

Referenced for Strecke 1, Exhibit A provides a detailed explanation of all intellectual property involved in the sale. If the description is furthermore vague, the sell may end above giving up show than the intended or vice versa. At completing this section, can sure to be than specific real detailed more possible.

In addition to adenine detailed description of the intellectual property, note the  goodwill  that a being sale with aforementioned property. Ownership is this intangible value off the property being sold, mostly including:

  • Reputation with customers
  • Relationship with the community
  • Trade value that's nay tied to a trademark

Don't worry about take the descriptions sound lawyerly—simple, succinct, and complete descriptions should suffice. Add any relevant registrations or samples (for example, “*See mounted drawing").

Intellects property assignment FAQ

Consider these common questions and answers when completing an intellegent property assignment.

What's the difference between an intellectual property association and a license?

Aforementioned use of a genehmigung allows of licensor to maintain ownership of the intellectual eigentumsrecht rights. When employing an intellectual property assignment, the assignor is openhanded up all of their home rights to the assignee. ... representatives, such facts as requested through Assignee relating toward which Assigned Intellectual Property. 5. Representations and Warranties.

It is always adenine good think to have someone witness the assignment and assignee signing also dating the document.

What's the difference between certain intellectual property assignment and a lease?

When obtaining the use of intellectual property utilizing ampere league, and assignee does not reception any ownership user. Because in save, the assignor keep sum ownership and control of the intellectual property and capacity dictate how it is used. Depending go the specifics of one lease, an originator might be compensated via license and/or fees. Intellectual property assignment: What to is and how the construct one

Get remains ampere quitclaim assignment?

A  quitclaim assignation  is an agreement that transfers all are the seller's rights to the intellectual eigenheim without any warranties this the seller has the right to do so. If a third party is to claim proprietary of the intellectual property down the streets, the buyer will be on their own to defend which claim.

Go copyright assignments need to be notarized?

While  copyright assignments  must be done in print to be validity, notarization isn't required. But it can always one good plan to have someone witness the assignor and assignee drawing and dating one document.

intellectual property assignment

Ready until get started? Use this formulare to  creating an intellectual property mapping in transactions . If you aren't looking to give up ownership rights is your intellectual property,  keep it protected .

You could also similar

intellectual property assignment

Why how I need to conduct a trademark finding?

Of knowing what other trademarks are go there, yours will understand if there belongs room for this mark that you desire to protect. It is best to find outside early, so you can find ampere mark is will become easier to protect. ... intellectual property assignment can help you smoothly transfer IP ownership rights. ... representations plus warranties.

February 13, 2024 · 4min ready

intellectual property assignment

How to write one desires: A comprehensive guide to will writing

Writing a will is one of the most important things she can do since yourself press for your loved a, plus it can been done in just minutes. Are you ready to get started? IP representations and warranties on tech M&A

February 6, 2024 · 11min understand

intellectual property assignment

How to getting an LLC by 7 steps: A complete leadership for 2024

It's slight for create a new LLC by filing paperwork with the state. But to setting yourself raise for success, you'll also need to reasoning about thine commercial my, capital, somebody operating agreement, and licencing and permits. Here's a step-by-step guide.

February 9, 2024 · 20min read

intellectual property assignment

Intellectual Property Assignment Agreement

During the formation of a new company a best practice is to assign all relevant intellectual property to the company using the following agreement. The consideration for the agreement is the sale of ownership to the individual assigning the intellectual property.

Need to connect with a patents lawyer near you?

Most attorneys on UpCounsel offer free consultations.

intellectual property assignment

Any [ GREEN ] highlighted language is intended to be filled in by the user. Any [ YELLOW ] highlighted language is considered optional or conditional by the attorney community. Consult with an attorney before using this document. This document is not a substitute for legal advice or services. Refer to our Terms of Use for more details.

This form has been prepared for general informational purposes only. It does not constitute legal advice, advertising, a solicitation, or tax advice. Transmission of this form and the information contained herein is not intended to create, and receipt thereof does not constitute formation of, an attorney-client relationship. You should not rely upon this document or information for any purpose without seeking legal advice from an appropriately licensed attorney, including without limitation to review and provide advice on the terms of this form, the appropriate approvals required in connection with the transactions contemplated by this form, and any securities law and other legal issues contemplated by this form or the transactions contemplated by this form.

Hire the top business lawyers and save up to 60% on legal fees

Content Approved by UpCounsel

  • Atlanta Employment Lawyers
  • Austin Employment Lawyers
  • Boston Employment Lawyers
  • Chicago Employment Lawyers
  • Dallas Employment Lawyers
  • Houston Employment Lawyers
  • Los Angeles Employment Lawyers
  • New York Employment Lawyers
  • Philadelphia Employment Lawyers
  • San Francisco Employment Lawyers
  • Seattle Employment Lawyers
  • Jacksonville Employment Lawyers
  • Las Vegas Employment Lawyers
  • Phoenix Employment Lawyers
  • Portland Employment Lawyers
  • San Diego Employment Lawyers
  • San Jose Employment Lawyers
  • View All Employment Lawyers

Download Document

intellectual property assignment

Located in the U.S.?

Not located in the u.s., optional, will help us get you started faster.

LEGAL NOTICE: We strongly suggest you have this document customized to your unique situation, because you might require additional clause(s) to better protect your business from potential legal issues.

LEGAL NOTICE: We strongly suggest you customize this document to suit you or your client's unique situation. You may require additional clause(s) to better protect you or your client’s business from potential legal issues.

Want to grow your practice?

Create your profile today and gain access to free marketing and practice management tools. Once your profile is complete, you will be reviewed for the UpCounsel Marketplace where approved attorneys can find and manage new or existing clients.

If you do not see an email from UpCounsel in the next few minutes, please check your spam box. Add: [email protected] to your email address book. This will help ensure future email delivery.

Share this document

Send to your friends, partners or attorney..

intellectual property assignment

The complete guide to intellectual property

Trademarks, copyrights, and patents can be powerful tools to protect your business and creative works, learn how in our complete guide.

Find out more about intellectual property basics

intellectual property assignment

by   LegalZoom staff

Read more...

Updated on: February 9, 2024 · 11min read

What is intellectual property?

What are your intellectual property rights, how to protect intellectual property, common types of intellectual property protection, do you need a trademark, copyright, or patent, do you need an attorney to get a trademark, copyright, or patent, costs of intellectual property protection, intellectual property considerations for specific situations, violation of intellectual property rights, transferring intellectual property, getting the protection you need.

Intellectual property has never been more important. It's often seen as the backbone of a business, protecting the ideas, innovations, and creativity that go into many of the world's top products and services.

This guide will help you understand what intellectual property is, what kind you might have, and what you need to do to protect it.

hero-trademark-you-startup woman writing on board in black and white shirt

Intellectual property (IP) refers to creations of the mind. Although it doesn't exist in a physical sense, you still claim it as your property just as you would a house, car, or boat. Along with that claim can come similar rights and protections as one would have with physical property ownership.

intellectual-property-post-image

Learn more about the different kinds of intellectual property and their protections in What is intellectual property?

Soft intellectual property

Soft intellectual property is a term sometimes used to refer to copyrights, trademarks, and trade secrets.

Get a sense of what falls under this rather large umbrella in Soft intellectual property: What is it and how is it valued? .

Trade secrets

A trade secret refers to commercially valuable confidential information. It must be something that you take reasonable steps to keep secret and so valuable to your business that it's worth protecting.

Get a deeper understanding of trade secrets in What is a trade secret?

Defining trade secrets is the first of many steps to protect them. You'll find the steps in Tips for protecting your trade secrets .

Some common properties that fall under the IP banner are designs, artistic works, and brands. Once created, these original designs/works/brands become the creator's property, and the creator (now owner) has rights over their property.

Intellectual property rights prevent others from using your property without your permission.

Learn more in An overview of intellectual property rights .

Different types of intellectual property fall into different categories, but all IP protections function by preventing others from using your property without your permission. To effectively protect your intellectual property, you'll need to determine what type of IP you have.

For an overview of IP protection, read How to protect your intellectual property .

Explore practical intellectual property protection in Three things you can do to protect your intellectual property and How to protect your intellectual property rights when collaborating with others .

Talking about your idea

It's hard to keep a great idea to yourself, but there is good reason to be careful who you tell, even in the early stages.

If your idea is for an invention and you don't have the resources or time to file for a formal patent, filing a provisional patent application might be a good option for you.

If you need to share your idea with someone to take it to the next level, you might consider having them sign a non-disclosure agreement (NDA).

Provisional patent applications and NDAs are covered in How to talk about your nonpatented invention without having your idea stolen .

Using a cease and desist letter

What can you do if you learn someone is stealing or using your intellectual property without permission? One available option is to write a cease and desist letter . You might not need an attorney to do it. The letter notifies the person of what they're doing with your property and what the consequences are.

Look into the most prevalent uses of a cease and desist letter by reading 4 most common ways to use a cease and desist letter .

Most intellectual property can be protected under one of these three categories: patent, trademark, or copyright.

Generally speaking, copyright applies to an original creative work you've created. A patent can apply to an invention, and a trademark applies to a word, phrase, or design that distinguishes a brand.

copyright-trademark-patent-post-image

For detailed explanations of these three categories, read Finding the right fit: Comparing intellectual property protections .

All about copyright

According to the U.S. Copyright Office, copyright protects original works of authorship. That generally applies to artistic works, from novels to sculptures to symphonies, and even includes architecture and computer software in certain cases.

Learn more in  Why you should file a copyright .

For the ins and outs of registering your copyright with the U.S. Copyright Office, read Understanding the copyright registration proccess .

All about trademarks

Words, phrases, designs, or graphics can all be trademarks. They're also what distinguishes your goods or services from the crowd. You can gain federal trademark rights by registering your trademark with the U.S. Patent and Trademark Office (USPTO).

Learn more in What is a trademark?

Get some tips on safeguarding trademarks in Monitoring and protecting your trademark .

Explore the value of trademarks in overall business strategy in Top 4 reasons why a trademark is good for business .

This infographic explains the basics of trademarks and why they're important.

trademarking-your-startup-download-button_new_logo

All about patents

The patent process has been in place for centuries and is interwoven into the fabric of the United States.

You might be surprised to learn what kinds of inventions are eligible for patents and which types aren't.

For a big picture perspective on patents and their place in society and business, read The reality of protecting your company's secrets .

Explore types of patent-eligible inventions in What is a patent and how to use it .

Trademarks apply to distinguishing logos, brand names, phrases, and the like. Copyrights apply to original creative works. Patents generally protect new, useful, and non-obvious inventions.

Learn more about copyright and trademark protections in Trademark vs. copyrights: Which one is right for you? and Copyright vs. trademark: What's the difference?

To understand the different types of patents and whether you should seek patent protection, read  What is a patent and how to use it .

Getting certain intellectual property protections can sometimes be simple. Some protections actually exist upon creation and before you register your work. However, registration can greatly enhance the protections you have over your property.

In some cases, you'll want to engage an attorney to ensure that your IP is properly protected.

When to get an attorney for a trademark

You can register your trademark online with the U.S. Patent and Trademark Office (USPTO). You can also search their site for any potential conflicts with existing registered trademarks.

Remember that if your trademark conflicts with an existing trademark, it could be rejected by the USPTO.

An attorney can advise you on how to navigate any potential conflicts. And you may want a lawyer to deal with any infringement issues, whether you are dealing with a case filed against you or enforcing your own trademark rights.

To determine if you need a lawyer for your trademark dealings, read When do I need a trademark lawyer?

If you're just starting the trademark process and wondering if your circumstances warrant hiring an attorney, read Do you need a lawyer to file a trademark?

When to get an attorney for a patent

While it's possible to write and file a patent yourself, it's often useful to have a lawyer involved. There could be elements of your invention—especially covering future modifications or expansions— that might be hard for you to see on your own.

Patent attorneys can save you a lot of headaches down the road. Some people like to file a provisional patent application themselves before drumming up investment and interest in their idea, and then hire an attorney to help with the formal patent application once they are ready.

To understand what patent attorneys do and whether you need one, read How lawyers help file patent applications and Do I need a patent attorney?

When to get an attorney for a copyright

A copyright isn't difficult to file on your own, but there are some situations in which it makes sense to consult an attorney. Read more about them in Do you need an attorney to file a copyright?

The fees for IP protection vary based on the type of protection you need and the nature of your filing.

The costs of securing IP protection might involve attorney fees as well. People most often engage attorneys for assistance with patents and trademarks. This will make your initial costs higher but can ultimately save you money in the long term. You should also factor in the fees associated with renewing trademark and patent protections over time.

Find out more in How much does a patent cost?

Learn about registration, renewal, and potential attorney costs for trademarks in How much does it cost to trademark a business name?

Sometimes applying intellectual property protections to your specific situation can be confusing. There can be some overlap between trademark and copyright. And some unusual works, at first glance, seem to defy categorization.

Below you'll find tips for how to protect some specific works and categories:

  • Architectural drawings are protected by copyright and can be registered as such. For more details on this, read Court confirms architectural drawings protected by copyright .
  • Graphic design can be eligible for the same IP protections as works of art, as illustrated in How to copyright a graphic design .
  • Blogs, like all original written works, obtain certain copyright protections the moment they are created, but you'll need to register your blog entry to enforce those copyright protections. Learn more in Blogging and intellectual property law and Lifestyle influencers: How to protect your intellectual property .
  • Similar to works of art, websites can be protected by copyright law, as described in Do I need to copyright my website?
  • Tattoo artists have sought copyright protection for their work when the wearer of the tattoo appears in prominent settings (like television and film), but there's still some gray area here when it comes to who is the owner of the tattoo. Learn more in Before the ink dries: Copyright law & tattoos .
  • Original songs and recordings gain copyright protections when you produce them, but you can't enforce your ownership rights in federal court without registering the music. This is explained further in How to copyright music and How to copyright a sound recording .
  • Written works receive some copyright protections as soon as you write them, and most parodies of existing works can also be registered with the copyright office. You can get more details by reading How to copyright a book or novel and Are literary parodies protected under the first amendment?
  • Dance can be protected by copyright as long as your dance is documented in written or filmed form, as explained in How to copyright a dance .
  • Fashion labels can trademark a name and logo. You'll find out more in How do I trademark a clothing brand?
  • Collaborative works may be copyrighted under the "joint work" provision in copyright law, as described in The basics: Understanding joint work and copyright .
  • Employee creations or inventions made in the scope of their job are owned by the employer. Learn more in Does your employer own intellectual property you create?
  • Original Software can be copyrighted, and mobile apps can be patented. Get the details in why you need to copyright your software and Can you patent your mobile app?

It can be tricky to distinguish the difference between influence and outright copying (or plagiarism). Intellectual property protections exist to help define these lines and to allow creators to protect their works and inventions.

If you receive a notice that you are infringing on someone else's intellectual property rights, it is wise not to ignore it. Investigate the validity of the claim and respond. There can be steep financial consequences for these infringements.

For insight into the difference between appropriating a copyrighted work and simply being influenced by it, read Appropriating copyrighted works: When is it legal?

For an overview of how copyright infringement plays out on social media, read Taking on social media's new intellectual property challenges .

If you've received a copyright infringement notice, don't panic—read What to do if you get a copyright infringement notice .

Intellectual property rights can be transferred , just like other types of property. It's common for employers to include agreements in employment contracts explicitly outlining that any inventions created in the employee's course of work are the employer's property.

If you're an employer or employee and wonder how the assignment of IP is commonly handled in this relationship, read Intellectual property assignment: What it is and how to make one .

Intellectual property should also be part of your estate plan. With the potential for generating decades of ongoing revenue, IP can be a valuable part of your estate. Learn more in Estate plans and intellectual property: What to consider .

Intellectual Property designations and protections exist to protect and help creators reap the fruits of their labor.

Whether you've invented something amazing, written the next big literary sensation, or created your dream company's logo, protecting your creative work is the first step to ensuring you reap the benefits of your hard work.

Though getting the proper protection for your intellectual property can take some legwork, it's worth it in the long run.

trademark your start up

You may also like

intellectual property assignment

How to write a will: A comprehensive guide to will writing

Writing a will is one of the most important things you can do for yourself and for your loved ones, and it can be done in just minutes. Are you ready to get started?

February 9, 2024 · 11min read

intellectual property assignment

How to start an LLC in 7 steps: A complete guide for 2024

It's easy to create a new LLC by filing paperwork with the state. But to set yourself up for success, you'll also need to think about your business name, finances, an operating agreement, and licenses and permits. Here's a step-by-step guide.

February 8, 2024 · 20min read

New York Redefines the Permissible Scope of Invention Assignment Provisions

Wilson Sonsini Goodrich & Rosati

Invention assignment provisions are fundamental in employment agreements. On one hand, they are the mechanism by which an employer takes ownership of important types of intellectual property employees create that relates to the job—potentially patentable inventions, which may be trade secrets unless patent protection is sought. In that manner, they safeguard important employer interests, including preventing potential disputes over ownership of key company inventions and ensuring that employers can make necessary representations about ownership of their intellectual property in corporate transactions such as financings and acquisitions. On the other hand, such agreements also provide boundaries under which employees can safely create unrelated intellectual property, such as when planning a new, future start-up company.

In order to clarify these boundaries for the benefit of employers as well as employees, and gradually over the decades, several states have enacted invention assignment statutes, which govern what such contracts can and cannot say regarding employer ownership. Some of them also govern which party has the burden of proof and provide safeguards for employee disclosure of intellectual property the employee may own.

For example, in California and Washington State, under Labor Code § 2870 and Revised Codes of Washington (RCW) § 49.44.140, respectively, an employer generally cannot claim ownership of patentable inventions or trade secrets that an employee developed entirely on their own time and with their own resources as long as the invention is not related to the employer’s actual or anticipated business. Published court decisions providing guidance on what relates to, or does not relate to, a business are relatively rare.

New York has now enacted a new law that follows suit.

On September 15, 2023, Governor Kathy Hochul signed into law New York State Senate Bill (S) 5640 (codified as New York Labor Law § 203-F) (203-F). 203-F took immediate effect. 203-F renders employee invention assignment provisions unenforceable if the assignment provision requires the assignment of rights to any invention that does not relate to the employer’s actual or anticipated business, so long as such inventions are developed entirely on the employees’ own time and with their own resources.

Specifically, 203-F prohibits assignment of inventions developed by employees entirely on their own time “without using the employer’s equipment, supplies, facilities, or trade secret information.” However, the law includes two important carve-outs. 203-F still permits assignment of inventions to the employer that either: 1) “relate at the time of conception or reduction to practice of the invention to the employer’s business, or actual or demonstrably anticipated research or development of the employer” or 2) “result from any work performed by the employee for the employer.”

To put this in plain English, there are six ways a New York employer can own a patentable invention: 1) it relates to the business; 2) it relates to provable current or anticipated R&D; 3) it results from work performed for the employer; or, even if 1-3 do not apply; 4) the employer’s equipment or supplies are used to develop the IP; 5) the employer’s facilities are used to develop the IP; or 6) the employer’s trade secrets are used to develop the IP. The language is disjunctive, so any of these six will suffice for employer ownership.

At the same time, 203-F provides that employees who independently innovate, utilizing their own resources and time, and develop an invention that is unrelated to their employer's business, are not bound by any clauses that demand they transfer the intellectual property rights of the invention to their employer. If an employer tries to assert rights over an invention that an employee devised completely on their own time, without the use of the employer’s resources, and the invention is not connected to the employer’s business, the statute provides that the agreement purporting to assign the invention to the employer “shall be unenforceable.”

This regime is similar to, but distinct from the separate test used for employer ownership of copyrightable works, the Work for Hire doctrine under the Copyright Act.

203-F does not expressly specify any penalties for requiring an employee to sign an agreement that is in violation of 203-F. Nonetheless, potential consequences could include a ruling by a court or adjudicating body that the invention assignment provision in an employment agreement is unenforceable. Additionally, the employer could be liable for damages such as compensating the employee for the fair market value of their invention, lost profits, or any unjust enrichment the employer gained or derived from an improper use of the invention, as well as legal fees and costs associated with litigation. Furthermore, invention assignment agreements in violation of 203-F could cause lack of certainty with regard to ownership of intellectual property that is material to the employer.

Although the new law can prevent the assignment of inventions stemming wholly from an employee’s own resources, information, and efforts, 203-F maintains employers’ rights to inventions arising from, or related to, the employees’ work for the employers or the use of the employers’ resources. For example, even under the new law, an employer can require that an employee assigns to the employer all rights to an invention that an employee develops or tests during their working hours or on their employer’s premises, or with the use of any equipment, property, or trade secret information of the employer in the development of the invention, such as a company-issued laptop or mobile device. An employer would likely not be successful in demanding the assignment of an invention if the employer’s equipment or property were only used by employees for communication or other ancillary activities and not for the actual development of the invention. Lastly, even if an employee does not use any employer resources and develops the invention entirely on their non-working hours, under 203-F, the invention may still be deemed assigned to their employer if the invention relates to their employer’s current or future business.

Notably, New York’s statute does not contain language regarding a burden of proof, or reporting requirements, as seen in other enactments such as California and Washington.

Justification and Implications

In its justification for enacting 203-F, the New York State Senate indicated that economists have linked better intellectual property protection for employees to “more efficient firms and increased economic growth,” as previous assignment clauses effectively prevented employees from trying or investigating new ideas that could transform into new businesses.   See   S.B. 5640, New York State Senate, 2023 Session.   Further, the New York Senate noted that employees tend to relocate to work in jurisdictions with these types of invention assignment protections.

The New York State Senate also highlighted the fact that California’s implementation of a similar protection has not impeded growth of its technology sector—an understatement, to say the least. See CA Labor Code § 2870 (through 2012 Leg. Sess.). Since Washington’s enactment in 1979, numerous additional states have passed similar laws, including California (CA Labor Code § 2870), Delaware (Del. Code tit. 19 § 805), Illinois (765 ILCS 1060/2), Kansas (2006 Kansas Code - 44-130), Minnesota (Minn. Stat. § 181.78), New Jersey (NJ Rev. Stat. § 34:1B-265 (2022)), North Carolina (NC Gen Stat § 66-57.1 (2022)), and Utah (Utah Code Section 34-39-3), while Nevada has a substantially different enactment (NV Rev. Stat. § 600.500 (2022)). Although the actual text of each state’s law varies somewhat, the above referenced laws generally prohibit provisions in employment agreements that require the assignment of rights in an invention for which no equipment, supplies, facilities, intellectual property, or trade secret information of the employer were used and where the invention was developed on the employee’s own time. More states may follow suit.

Considerations and Next Steps

  • Review Employment Agreements : Employers with employees in New York should diligently work with their employment and intellectual property counsel to review their employment agreements, policies, and procedures, including any offer letters, handbooks, or other policies that include intellectual property language, to ensure they do not require employees to assign inventions that are outside the scope of what is permitted by the new law. A good practice is to include the text of the statute as an exhibit to an employment agreement, as companies typically do in California.
  • Retroactivity : While 203-F does not expressly state retroactive application, the law indicates that any prohibited provisions cannot be enforced as of September 15, 2023. This unenforceability applies even if the provision is contained in an agreement entered into prior to September 15, 2023. As a result, employers with New York employees should consider whether their agreements with current employees must be updated in light of 203-F. Wilson Sonsini can provide an updated agreement.
  • Documentation of Invention Ownership : Although the law does not expressly discuss which party bears the burden of proving ownership rights to an invention, and thus probably puts the burden on the party filing suit, it is in an employer’s best interest to have clear and comprehensive documentation showing an invention was developed within the scope of the employee’s work for the employer, given the importance of clear intellectual property ownership for both the employer’s day-to-day operations as well as future commercial deals, corporate transactions, and exit opportunities.
  • Scope of the Employer’s Business : Since 203-F allows inventions by employees to be assigned to the employer that are related to “the employer’s business, or actual or demonstrably anticipated research or development of the employer” even if conducted during non-working hours away from the employer’s premises, employers should evaluate whether they have sufficient documentation detailing the scope of their business. Such documentation will permit the employer to fully capture any inventions by employees within such line of business and be best prepared to defend against a claim of ownership over a given invention by the employee.

It is essential that employers take appropriate steps to ensure their ownership of intellectual property to which they are entitled. Clear language in employment agreements and thoughtful company policies can avoid unnecessary conflict and confusion for both employer and employee, as well as potential company investors and acquirers down the line. Given the constant evolution of the legal landscape around employer-employee intellectual property rights, the current effectiveness of 203-F, and the frequency of employee movement due to hybrid and remote work, companies should work regularly with their employment and intellectual property counsel to ensure employment contracts, policies, and other agreements comply with all laws related to assignment of inventions where their employees may be located.

Related Posts

  • Time to Hit the Books for Student Privacy Compliance: College Board Agrees to Pay $750K for N.Y. Student Privacy Violations
  • 10 Privacy Predictions in the EU for 2024
  • U.S. Privacy Predictions: What to Watch for in 2024

Latest Posts

  • Treasury and IRS Release Proposed and Final Regulations on Direct Pay Elections
  • SEC Adopts Final Enhanced and Standardized Climate-Related Disclosure Rules

See more »

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

Refine your interests »

Written by:

Wilson Sonsini Goodrich & Rosati

Published In:

Wilson sonsini goodrich & rosati on:.

Reporters on Deadline

"My best business intelligence, in one easy email…"

Custom Email Digest

  • Study Guides
  • Homework Questions

Assessment DIntellectual propertyV4-0 (2)

NPTEL Intellectual Property Week 8 Assignment Answers 2024

Nptel intellectual property assignment answers 2024.

1. Which provision of trade mark Act establishes IPAB?

2. Who can use the registered Trade Mark?

  • Proprietor/owner
  • Authorised user
  • All of the above

3. Which form of civil remedy restrain defendant from disposing of the assets which may be used to satisfy plaintiffs claim

  • Interim injunction
  • Anton pillar order
  • Mareva injunction
  • Mandatory injunction

4. Which license provides exclusive right to the holder without prior authority of the owner

  • Voluntary license
  • Compulsory license
  • Temporary license

5. Statement 1 : Reproduction in any material form amounts to copy right infringement.

Statement 2 : In case of copy right infringement copying need not be substantial.

  • Statement 1 is true, Statement 2 is false
  • Statement 1 is false, Statement 2 is true
  • Statements 1 and 2 are false
  • Statements 1 and 2 are true

6. Statement 1 : Damages are granted for both remote as well as direct infringement.

Statement 2 : Damages also granted for undermining plaintiffs’ reputation and goodwill.

7. What determines infringement of patent?

  • Scope of invention
  • Violation of right
  • Ownership of patent
  • Transfer of patent

8. When an intellectual property is enforced?

  • Infringement
  • Obtains confidential information
  • Transfer of IP

9. What determines an action for interim injunction

  • Prima facie case
  • Irreplaceable injury
  • Balance of convenience
  • None of the above.

10. Identify different forms of ADR

  • Arbitration
  • Judicial adjudication
  • Conciliation

Contract Lawyers

100% vetted lawyers.

We vet and validate information for all lawyers that apply to join our network.

12 Years Average Experience

The lawyers on our platform have experience you can leverage for great results.

Supporting All Industries

Work with lawyers that have a deep understanding of your industry.

Information Check

We validate state license status, education, employment, and insurance.

Phone Interview

We interview each lawyer to evaluate cultural fit and client service skills.

Industries and Contract Types

We understand the industries and contract types our lawyers support.

Find Lawyers by Focus

  • Business Contracts
  • Estate Planning
  • Intellectual Property
  • Real Estate
  • Transactional
  • See more...

Find Lawyers by State

  • Connecticut
  • District of Columbia
  • Massachusetts
  • Mississippi
  • New Hampshire
  • North Carolina
  • North Dakota
  • Pennsylvania
  • Rhode Island
  • South Carolina
  • South Dakota
  • West Virginia

Find Lawyers by Popular City

  • Fort Lauderdale
  • Los Angeles
  • Oklahoma City
  • Philadelphia
  • Salt Lake City
  • San Antonio
  • San Francisco

Find Lawyers by Service

  • Breach of Contract
  • Business Formation
  • Business Formation Services
  • Contract Dispute
  • Contract Drafting
  • Contract Negotiation
  • Contract Review
  • File Copyright
  • Fractional General Counsel
  • Legal Document Drafting
  • Legal Drafting
  • Make Contract
  • Outside General Counsel

Find Lawyers by Contract Type

  • Acceptable Use Policy
  • Advance Health Directive
  • Articles of Incorporation
  • Articles of Organization
  • Asset Purchase
  • Asset Purchase Agreement
  • Building Lease
  • Business Associate Agreement
  • Business Partnership Agreement
  • Business Purchase Agreement
  • Buy-Sell Agreement
  • Child Custody Agreement
  • Coaching Agreement
  • Commercial Lease
  • Confidentiality Agreement
  • Consulting Agreement
  • Convertible Note
  • Employment Contract
  • End User License Agreement
  • Equipment Lease
  • Executive Summary
  • Forbearance Agreement
  • General Partnership
  • Independent Contractor Agreement
  • Joint Venture Agreement
  • Last Will and Testament
  • Letter of Intent
  • Living Trust
  • Living Will
  • LLC Operating Agreement
  • Loan Agreement
  • Marriage Agreement
  • Marriage Contract
  • Master Services Agreement
  • Medical Power of Attorney
  • Nondisclosure Agreement
  • Office Lease
  • Operating Agreement
  • Partnership Agreement
  • Power of Attorney
  • Premarital Agreement
  • Prenuptial Agreement
  • Privacy Policy
  • Promissory Note
  • Property Agreement
  • Purchase Agreement
  • Quitclaim Deed
  • SaaS Agreement
  • Sales Contract
  • Separation Agreement
  • Service Contract
  • Severance Agreement
  • Simple Agreement For Future Tokens
  • Statement of Net Worth
  • Statement of Work
  • Subscription Agreement
  • Terms Sheet
  • Time and Materials Contract
  • Trust Agreement

Meet some of our Lawyers

Leonid G. on ContractsCounsel

I have been practicing law since 2018. I used to be a litigator at a nationwide practice before going in-house at a fintech company. I have experience drafting NDAs, SaaS contracts, service agreements, and stock purchase agreements.

Aaron S. on ContractsCounsel

My passion is protecting the passions of others. I have 5+ years of contract review, and all aspects of entertainment law including negotiation, mediation, intellectual property, copyright, and music licensing. I also have experience working with nonprofits, and small businesses helping with formation, dissolution, partnerships, etc. I am licensed in both Texas and California.

Nuo Jia (Lois) L. on ContractsCounsel

Nuo Jia (Lois) L.

Attorney Lois Li is a bilingual business and commercial attorney licensed in Michigan, U.S. since 2014, in Ontario, Canada since 2015, and in New York, U.S. since 2020. As an attorney licensed in two countries, Lois leads Alpine Law’s US/China/Canada practice. She is experienced in legal and contractual transactions in both English and Chinese. Lois has over six years of experience in assisting clients with business operations and legal services, and is specialized in advising companies with legal needs in International Business, Securities law, Cryptocurrency – Block chain, and Fin-Tech. Having served as both an outside and an in-house counsel, Lois worked with many startup and small businesses. With a strong understanding of core business and the ability to translate business needs into legal requirements, Lois has assisted many companies to establish policies and procedures, and drafted and negotiated employment and transaction contracts. Further licensed as a Registered Nurse since 2010, Lois specializes in healthcare law and is experienced in FDA, HIPAA, Medicare and Medicaid regulations. She has assisted many businesses in the medical and healthcare industry.

Bill C. on ContractsCounsel

I am a corporate business and securities attorney licensed in Illinois with more than a decade of legal experience holding both a J.D. and Master in Law in Taxation. I specialize in advising technology companies in the cryptocurrency space with regulatory compliance (eg. securities law, FinCen, and MSB rules) and cybersecurity matters (eg. GDPR, HIPAA, and CCPA), licensing agreements (SaaS, End User Licensing Agreement, Master License Agreement and etc), brokerage agreements, vendor agreements, revenue share agreements, affiliate agreements, and other related business and technology contracts. Having served as both an outside and an in-house counsel, I have worked with many early stage and mid-size companies, including blockchain companies with issued tokens in the top 100 ranking. With a strong understanding of core business needs for cryptocurrency companies and the ability to translate business needs into legal requirements, I have successfully helped businesses in the cryptocurrency space establishing their contracts, meeting regulatory compliance requirements (SEC, FinCen), and negotiating contracts with partners and vendors.

Dany C. on ContractsCounsel

Lawyer Vets APC is a digital legal practice founded on the idea that legal services should be available to all– Not just a privileged few. In support of this mission, we leverage technology to reduce overhead, increase productivity, and put more money in our client's pockets.

Sayema H. on ContractsCounsel

Sayema Hameed is an experienced California attorney offering exceptional legal services in the field of employment law. With over two decades of legal experience, Sayema provides her clients with thoughtful and strategic advice and counsel, attention to detail, and high quality work to satisfy client goals and achieve successful outcomes. Helping clients maintain legal compliance, reduce liability exposure, and resolve conflicts efficiently are top priorities of Hameed Law Group. Sayema's practice includes preparation and update of employee handbooks, policies, and contracts, as well providing advice and counsel in all areas of employment in California. Sayema makes it a priority to stay up to date on the latest developments in California employment law. Sayema has been recognized as a Southern California Super Lawyer (2019-2024) and previously as a Rising Star (2009-2017) by Super Lawyers, a rating service of outstanding lawyers who have attained a high-degree of peer recognition and professional achievement.

Ann D. on ContractsCounsel

Ann R. Dougherty, Esquire practices in both Pennsylvania and New Jersey with over 25 years of experience and has taught legal writing at the Delaware Law School of Widener University. Ann’s experience includes general liability, commercial property and bad faith insurance coverage litigation. Ann has successfully represented corporations in declaratory judgment matters concerning environmental and asbestos exposure, handled excess recoveries, comprehensive claim reviews and negotiated cost sharing agreements. She has also represented religious organizations including risk management strategies. In addition to practicing law, Ann also teaches introductory Philosophy and Ethics courses. Ann is a member of the Philanthropic Educational Organization for Women and the Daughters of the American Revolution. She has served on the Boards of the American Lung Association of the Mid-Atlantic for Delaware and the Wilmington Ballet Academy.

Lissette E. on ContractsCounsel

Lissette E.

Litigation and Immigration Attorney with over 12 years of experience.

John V. on ContractsCounsel

Education: Georgetown Law (83), Yale (75- BA in Economics), Hotchkiss School (1970). Practice areas have included commercial litigation, individual litigation, and securities litigation and arbitration.

Susan T. on ContractsCounsel

General practitioner since 2005, general practice; civil disputes, torts.... logo Call us: (410) 878-7006 Menu Services Maryland Mobile Last Will & Testament Services All Maryland Legal Services Susan C. Trimble Attorney at Law WHAT WE ARE ABOUT Susan C. Trimble, is an established attorney in the Maryland area. Her work is infused with commitment to her community and family. is tailored to your wants and needs. Here you will find an approachable, personable and conscientious advocate. EDUCATION: Juris Doctorate (JD). University of Baltimore School of Law, Baltimore, Maryland, USA. 2006. Bachelor of Science (BS), English Literature. Towson University, 1989. Associate in Claims, (AIC) certification. Fraud Claims Law Associate, (FCLS) certification.

V. Yvette S. on ContractsCounsel

V. Yvette S.

I am a highly skilled attorney, fluent in English and Spanish with 20 years of legal experience and 8 additional years of real estate, project finance, banking, financial, securities, and start-up company experience. I worked 6 years with 2 international law firms and handled extremely complex work for all types of clients, 3 years with a Federal Government Regulator, and 5 years in various compliance management positions at national and international financial institutions. I am licensed in New York and North Carolina. I will handle federal litigation on a non-contingency basis. I also practice Appellate Advocacy for constitutional, employment, consumer, and corporate laws. I am skilled in many different NY and NC laws. I have successfully represented clients with state and federal regulatory investigations. I can help you with the FDA, SEC, OCC, CFPB, FDIC, FR and certain state regulators.

Find the best lawyer for your project

Learn about contracts.

  • Bill of Sale
  • Commercial Loan
  • Licensing Agreement
  • Noncompete Agreement

other helpful articles

  • How much does it cost to draft a contract?
  • Do Contract Lawyers Use Templates?
  • How do Contract Lawyers charge?
  • Business Contract Lawyers: How Can They Help?
  • What to look for when hiring a lawyer

intellectual property assignment

Quick, user friendly and one of the better ways I've come across to get ahold of lawyers willing to take new clients.

Want to speak to someone?

Get in touch below and we will schedule a time to connect!

Find lawyers and attorneys by city

IMAGES

  1. Intellectual Property Assignment Template

    intellectual property assignment

  2. FREE 10+ Intellectual Property Assignment Samples in MS Word

    intellectual property assignment

  3. Intellectual Property Assignment Template

    intellectual property assignment

  4. Intellectual Property Assignment: What It Is and How to Make One

    intellectual property assignment

  5. Intellectual Property Assignment

    intellectual property assignment

  6. FREE 10+ Intellectual Property Agreement Samples in MS Word

    intellectual property assignment

VIDEO

  1. Understanding intellectual property and business assets

  2. Intellectual Property Rights on the Development and Use of Digital Materials

  3. Intellectual Property Assignment part 3

  4. Intellectual Property

  5. Intellectual Property Assignment part 1

  6. Intellectual Property

COMMENTS

  1. Intellectual property assignment: What it is and how to make one

    An intellectual property assignment is the transfer of an owner's rights in copyrights, trademarks, patents, trade secrets, or other intangible creations. These transfers may take place on their own or as part of a larger transaction. An intellectual property assignment provides records of ownership and transfer while also protecting the rights ...

  2. Intellectual Property Assignment: Everything You Should Know

    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.

  3. Intellectual Property Assignment Agreement: A Comprehensive Guide for

    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 ...

  4. IP Assignment and Licensing

    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 ...

  5. Intellectual Property Assignment Agreements & Licenses

    Intellectual property assignment is generally more appropriate when you are selling your business or leaving a field entirely. Priori Pricing. Depending on the complexity of your needs, the cost of drafting intellectual property licensing or intellectual property assignment agreements may vary. Priori attorneys typically create flat-rate ...

  6. Intellectual Property Assignment Agreement Guide

    Create all your Intellectual Property Assignment Agreement in minutes. PocketLaw offers a platform with legal documents, guidance and a clever contract management system, as well as access to partner law firms where bespoke advice is needed. All legal you need to grow your business and drive it forward. Secure the rights to innovations with an ...

  7. Intellectual Property Assignment Agreement

    An intellectual property assignment agreement is a contract that transfers the intellectual property rights (For example, patents, trademarks, industrial designs, or copyrights) from the creator to another entity. The intellectual property rights holder may transfer all or part of their rights. The transfer of intellectual property rights is ...

  8. IP Assignment Agreement: Definition & Sample

    INTELLECTUAL PROPERTY ASSIGNMENT AGREEMENT . This INTELLECTUAL PROPERTY ASSIGNMENT AGREEMENT (this "IP Assignment"), dated as of September 29, 2017, is made by and between VectorVision, Inc., an Ohio corporation, having a principal place of business at 1850 Livingston Road, Suite E, Greenville, Ohio 45331 and David W. Evans, a U.S. citizen ...

  9. Understanding a deed of assignment for intellectual property

    A deed of assignment must be in writing and should include: The names and addresses of the assignor and assignee. A description of the program or product for which the rights are being transferred. A statement that all intellectual property rights to the property are being transferred. Signatures of the parties and the date of the agreement ...

  10. How To Assign Intellectual Property Rights

    The assignment of intellectual property rights signifies the legal transfer of an owner's rights, title, and interests in certain intellectual property rights from the original owner (assignor) to another party (assignee). This assignment is a formal process that involves the explicit conveyance of IP rights and is usually effectuated through ...

  11. Intellectual Property Assignment Agreement: Templates & Samples

    Intellectual Property ("IP") is an umbrella term for tangible and intangible creations of the mind - work products or inventions that would considered protected from use by another without the creator or owner's permission ( e.g., art, manuscripts, trade secrets, source code, designs, automated processes, customer lists, software programs ...

  12. Intellectual Property Assignment: Definition and Examples (2023)

    An Intellectual Property Assignment is a legal document that assigns the ownership of intangible property, such as copyrights, trademarks, patents, and trade secrets, from one party to another. This type of assignment is commonly included in prenuptial agreements to ensure that any existing or future intellectual property created or owned by ...

  13. Free Intellectual Property Assignment Agreement Template

    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 ...

  14. Contracts and intellectual property ownership

    The typical solution is an invention assignment agreement signed by the employee when they first join the company. Such an agreement covers a range of IP ownership issues, from confidentiality of company trade secrets to the assignment of any intellectual property created on the job or using company resources to the company. These agreements ...

  15. Intellectual property (IP) assignment agreement

    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 ...

  16. Intellectual property assignment: What it is and how to make one

    What should an intellectual property submission include? Einer intellectual property assignment includes important details about the transfer in intellectual quality and the parties involved. The contents of an IP assignment can to laid output in 17 dissimilar sections. Includes the intellectual property assignment, you will find:

  17. Assignment of Intellectual Property

    2. Intellectual Property Assignment.Assignor hereby assigns, transfers and conveys, unto Assignee, and Assignee accepts the assignment by Assignor of, all of Assignor's right, title, and interest, in and to the Assigned Intellectual Property, the same to be held and enjoyed by Assignee for its own use and benefit, and for the use and benefit of its successors, assigns, or other legal ...

  18. Intellectual Property Agreement

    Intellectual Property Assignment Agreement. During the formation of a new company a best practice is to assign all relevant intellectual property to the company using the following agreement. The consideration for the agreement is the sale of ownership to the individual assigning the intellectual property.

  19. Assigning & Licensing Your Intellectual Property

    An assignment of intellectual property is the transfer of intellectual property rights from one party to another, usually in exchange for monetary compensation. The transfer is complete, which means that once another party owns the rights to your intellectual property, you will no longer be able to use it. This makes paying attention to the ...

  20. Free Intellectual Property Assignment Agreement Template

    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 ...

  21. Intellectual Property Assignments from Software Developers: Key

    Intellectual property rights assignment agreements typically include a provision by which the third-party author waives their moral rights in and to the relevant works. United States. For employers engaging software development contractors located in the United States, intellectual property assignments are fairly standard. ...

  22. The complete guide to intellectual property

    Intellectual property has never been more important. It's often seen as the backbone of a business, protecting the ideas, innovations, and creativity that go into many of the world's top products and services. This guide will help you understand what intellectual property is, what kind you might have, and what you need to do to protect it.

  23. New York Redefines the Permissible Scope of Invention Assignment

    Furthermore, invention assignment agreements in violation of 203-F could cause lack of certainty with regard to ownership of intellectual property that is material to the employer.

  24. Assessment DIntellectual propertyV4-0 (2) (docx)

    An employee who creates intellectual property in the normal course of their duties cannot claim to own that intellectual property. However, if the employee is not employed to create intellectual property, but does so, then the employee will own the intellectual property. Consideration needs to be given to all the circumstances.

  25. NPTEL Intellectual Property Week 8 Assignment Answers 2024

    Answer :-. 5. Statement 1: Reproduction in any material form amounts to copy right infringement. Statement 2: In case of copy right infringement copying need not be substantial. Statement 1 is true, Statement 2 is false. Statement 1 is false, Statement 2 is true. Statements 1 and 2 are false. Statements 1 and 2 are true.

  26. Intellectual Property Assignment: Definition and Examples (2023)

    An Intellectual Property Assignment is a legal document that transfers the rights of a particular intellectual property (IP) from one party (the assignor) to another (the assignee). The document outlines the specific IP to be transferred, the date of the assignment, and the parties involved in the transaction. ...

  27. Page couldn't load • Instagram

    6 likes, 0 comments - thebarinaadalegal on March 5, 2024: "#LegalSense #BarinaadaLegal #startuplegalexpert #startupfounder Six (6) things to keep in mind if..."