ip assignment clauses

• 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 : May 21, 2024 at 12:30 PM

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.

Table of Contents

Defining the purpose.

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

Step 1 - Identify the Parties Involved

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

What is An Intellectual Property Assignment Agreement?

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

Let's break that down a touch more:

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

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

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

Key Elements to Consider for a Properly Drafted Agreement

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

1. Clarity of Transfer

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

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

2. Definition of Transferred Intellectual Property

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

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

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

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

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

3. Compensation and Payment Terms

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

The total amount payable

The currency

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

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

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

4. Warranties and Representations

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

Are the sole and true owner of the IP

Have the complete right to assign the IP to the Assignee

The IP does not infringe on any third-party rights

A sample clause might look like this:

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

5. Confidentiality Agreements

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

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

6. Governing Law and Dispute Resolution

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

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

Drafting Your IP Assignment Agreement

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

Start by clearly naming the parties involved in the agreement.

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

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

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

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

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

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

Here's an example:

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

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

This clause might look something like:

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

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

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

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

Here is an example:

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

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

Ensure the agreement is detailed and described correctly

Work with a knowledgeable attorney

Review the final agreement carefully before signing

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

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

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

Your Ultimate Guide to Creating a Contract for Buying Goods

Picture this: you're at a coffee shop with a friend who's just started a business. They mention they're working on establishing supplier...

Master Your Catering Agreement: Detailed Guide & Template

When you're in the catering business, you quickly realize that every event is different, and success depends on meeting various expectations. That's...

Step-by-Step Guide to Create a Service Agreement Template

When running a business, there's a good chance you'll need to enter into contracts with service providers, contractors, or consultants. In these...

• Skip to content.
• Jump to Page Footer.

Strategic expansion: Canadian companies' roadmap to US capital success

Our latest guide will give you direct-application tools to help tap into the US funding market.

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

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

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

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

Download the Sample intellectual property assignment template

Read next: Sample funding templates for Ontario investors and entrepreneurs

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

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

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

Clickwrap software licence agreement: Sample template

Confidentiality agreement, or nda: share purchase transaction sample templates, sample nda: non-disclosure or confidentiality agreement for asset purchase transaction, 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 .

What are IP Assignment Agreements?

For the high-growth startups we represent (and into which our venture capital clients invest), intellectual property (IP) is typically the core asset driving the company’s value. Ensuring that the company’s IP is properly owned and protected can therefore be the difference between success and failure. It is somewhat surprising then, how often founders fail to ensure that their companies do, in fact, own this critical property. Founders who eschew legal representation in favor of low-cost, automated options tend to fall into this trap most often. Most automated or semi-automated providers of startup legal documentation fail to provide even a basic IP assignment and confidentiality agreement—an essential document that all company personnel (founders included) must sign to ensure that IP is both validly assigned to the Company and protected from disclosure. When used with employees and consultants, IP assignment and confidentiality clauses are typically bundled into a single contract, often called a “Proprietary Information and Inventions Assignment Agreement” or a “Confidential Information and Inventions Assignment Agreement” (though there are many names that can be used here).

What are IP assignment agreements?

IP assignment agreements are contracts between a business and its personnel that transfer ownership of IP created by the personnel during their employment or engagement with the business. IP can include patents, trademarks, copyrights, and trade secrets. The agreement ensures that the business retains ownership of any IP created by the personnel, even after they leave the business. Even if your personnel are not involved in creating IP, it’s advisable to have these agreements in place—you never know where the next great idea might come from, and in any case, it’s easier to get this agreement signed than it is to explain to an investor or acquirer why you didn’t. Without an IP assignment agreement, personnel may be able to claim personal ownership of the IP they created, which can be deadly to a business that relies on IP for its value. If you are missing these agreements, investors and acquirers will notice and it can cause your financing or acquisition to fall through, particularly if the personnel who failed to sign have left or are otherwise unwilling to sign.

What are confidentiality agreements?

Confidentiality agreements, also known as non-disclosure agreements (NDAs), are contracts between a business and its personnel that prevent the personnel from disclosing confidential information about the business. Confidential information can include trade secrets, customer information, financial information, and any other information that is not publicly available. Most founders innately understand the importance of maintaining confidentiality, so rarely fail to have an NDA in place with individuals to whom they provide sensitive information. It should be noted, though, that having confidentiality agreements with your employees and consultants has become particularly important in recent years, as states and the federal government have sought to restrict the use of noncompetition agreements. Having a strong confidentiality agreement can be the key to ensuring that your ex-employees don’t take valuable information to your competitors.

While confidentiality obligations are self-explanatory and a “must-have”, you must also remember that an NDA does not necessarily include an IP assignment agreement. NDAs, particularly those provided by automated/semi-automated document providers, are often designed for use solely during preliminary conversations with potential commercial or collaboration partners. In that context, NDAs do not (and likely should not) have any clauses providing for the transfer of IP ownership. It is therefore critical that you do not simply ask your employees and contractors to sign a “standard” NDA—yes, that agreement will likely prevent those folks from sharing your sensitive information, but if you’re paying them to create IP for you, you’ll also want language that ensures that your company actually owns the work product they create.

Please remember, have your personnel (employees, contractors and even advisers) sign an IP assignment and confidentiality agreement, ideally on the day that individual first starts working for you. File that agreement away somewhere safe (ideally with your lawyer). These agreements ensure that the business retains ownership of its IP and that confidential information is kept secret. If you need help drafting IP assignment and confidentiality agreements, consult with a qualified attorney with experience in representing high-growth startups (believe it or not, there’s “magic language” needed to ensure these agreements work properly, and even a Supreme Court case about it).

Drafting Employee Work Made For Hire and IP Assignment Clauses | Practical Law

Drafting Employee Work Made For Hire and IP Assignment Clauses

Practical law legal update 6-523-4246  (approx. 4 pages).

Work Made for Hire and Assignment

• Secure an actual conveyance of the employee's rights.
• Minimize the risk of a successful challenge to the employer's rights at a later date.
• A further assurances clause in the event the employer finds it necessary or desirable for the employee to execute additional documents or assist the employer in its efforts to enforce the IP rights against third parties.
• A grant of power of attorney to the employer for the purpose of executing any documents and undertaking appropriate actions, if, for example, the employee is unavailable or uncooperative.

State Law Limitations

• Relate to the employer's business.
• Result from any work performed by the employee for the employer.

What are IP Assignment Agreements?

For the high-growth startups we represent (and into which our venture capital clients invest), intellectual property (IP) is typically the core asset driving the company’s value. Ensuring that the company’s IP is properly owned and protected can therefore be the difference between success and failure. It is somewhat surprising then, how often founders fail to ensure that their companies do, in fact, own this critical property. Founders who eschew legal representation in favor of low-cost, automated options tend to fall into this trap most often. Most automated or semi-automated providers of startup legal documentation fail to provide even a basic IP assignment and confidentiality agreement—an essential document that all company personnel (founders included) must sign to ensure that IP is both validly assigned to the Company and protected from disclosure. When used with employees and consultants, IP assignment and confidentiality clauses are typically bundled into a single contract, often called a “Proprietary Information and Inventions Assignment Agreement” or a “Confidential Information and Inventions Assignment Agreement” (though there are many names that can be used here).

What are IP assignment agreements?

IP assignment agreements are contracts between a business and its personnel that transfer ownership of IP created by the personnel during their employment or engagement with the business. IP can include patents, trademarks, copyrights, and trade secrets. The agreement ensures that the business retains ownership of any IP created by the personnel, even after they leave the business. Even if your personnel are not involved in creating IP, it’s advisable to have these agreements in place—you never know where the next great idea might come from, and in any case, it’s easier to get this agreement signed than it is to explain to an investor or acquirer why you didn’t. Without an IP assignment agreement, personnel may be able to claim personal ownership of the IP they created, which can be deadly to a business that relies on IP for its value. If you are missing these agreements, investors and acquirers will notice and it can cause your financing or acquisition to fall through, particularly if the personnel who failed to sign have left or are otherwise unwilling to sign.

What are confidentiality agreements?

Confidentiality agreements, also known as non-disclosure agreements (NDAs), are contracts between a business and its personnel that prevent the personnel from disclosing confidential information about the business. Confidential information can include trade secrets, customer information, financial information, and any other information that is not publicly available. Most founders innately understand the importance of maintaining confidentiality, so rarely fail to have an NDA in place with individuals to whom they provide sensitive information. It should be noted, though, that having confidentiality agreements with your employees and consultants has become particularly important in recent years, as states and the federal government have sought to restrict the use of noncompetition agreements. Having a strong confidentiality agreement can be the key to ensuring that your ex-employees don’t take valuable information to your competitors.

While confidentiality obligations are self-explanatory and a “must-have”, you must also remember that an NDA does not necessarily include an IP assignment agreement. NDAs, particularly those provided by automated/semi-automated document providers, are often designed for use solely during preliminary conversations with potential commercial or collaboration partners. In that context, NDAs do not (and likely should not) have any clauses providing for the transfer of IP ownership. It is therefore critical that you do not simply ask your employees and contractors to sign a “standard” NDA—yes, that agreement will likely prevent those folks from sharing your sensitive information, but if you’re paying them to create IP for you, you’ll also want language that ensures that your company actually owns the work product they create.

Please remember, have your personnel (employees, contractors and even advisers) sign an IP assignment and confidentiality agreement, ideally on the day that individual first starts working for you. File that agreement away somewhere safe (ideally with your lawyer). These agreements ensure that the business retains ownership of its IP and that confidential information is kept secret. If you need help drafting IP assignment and confidentiality agreements, consult with a qualified attorney with experience in representing high-growth startups (believe it or not, there’s “magic language” needed to ensure these agreements work properly, and even a Supreme Court case about it).

Latest Posts

• Possible… but Practical? HUD’s New 12 Hour Cyber Incident Reporting Requirement for FHA-Approved Mortgagees
• SAFE Financing – a Deep Dive on the Evolution of the SAFE
• SAFE Financing – Valuation Cap vs. Discount Variants
• Living in a Material World: SEC Clarifies Expectations Regarding Form 8-K Disclosure of Material Cybersecurity Incidents
• Broker Face: The Protecting Americans' Data from Foreign Adversaries Act Creates New High Stakes Federal Data Broker Requirements

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:

PUBLISH YOUR CONTENT ON JD SUPRA NOW

• Increased visibility
• Actionable analytics
• Ongoing guidance

Published In:

Wyrick robbins yates & ponton llp on:.

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

Assignment Of Intellectual Property Agreement

Jump to section.

ContractsCounsel has assisted 35 clients with assignment of intellectual property agreements and maintains a network of 61 intellectual property lawyers available daily.

What is an Assignment Of Intellectual Property Agreement?

An assignment of intellectual property 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 made upon a payment of a lump sum or royalties.

Employees hired for research and development roles or other technical areas sign intellectual property assignment agreements to assign to the company any ideas, work products, or inventions related to the company business that they may create during their employment.

Common Sections in Assignment Of Intellectual Property Agreements

Below is a list of common sections included in Assignment Of Intellectual Property Agreements. These sections are linked to the below sample agreement for you to explore.

Assignment Of Intellectual Property Agreement Sample

Reference : Security Exchange Commission - Edgar Database, EX-10.2 5 gabriel_ex1002.htm ASSIGNMENT OF INTELLECTUAL PROPERTY , Viewed October 21, 2021, View Source on SEC .

Who Helps With Assignment Of Intellectual Property Agreements?

Lawyers with backgrounds working on assignment of intellectual property agreements work with clients to help. Do you need help with an assignment of intellectual property agreement?

Post a project  in ContractsCounsel's marketplace to get free bids from lawyers to draft, review, or negotiate assignment of intellectual property agreements. All lawyers are vetted by our team and peer reviewed by our customers for you to explore before hiring.

ContractsCounsel is not a law firm, and this post should not be considered and does not contain legal advice. To ensure the information and advice in this post are correct, sufficient, and appropriate for your situation, please consult a licensed attorney. Also, using or accessing ContractsCounsel's site does not create an attorney-client relationship between you and ContractsCounsel.

Need help with an Assignment Of Intellectual Property Agreement?

Meet some of our assignment of intellectual property agreement lawyers.

I offer flat/fixed fees rather than hourly work to help lower your legal costs and align our interests. I specialize in contract law and focus on making sure your contract is clear, protects your interests and meets your needs. You can expect fast, straightforward communication from me, making sure you understand every step. With my experience, you'll get a detailed review of your contract at a fair, fixed price, without any surprises. I have over 30 years of business and legal experience that I bring to your project. I graduated from The University of Texas School of Law with High Honors in 1993 and practiced at Texas' largest law firm. I have founded companies and so understand how to be helpful as both a lawyer and business owner.

Skilled in the details of complex corporate transactions, I have 15 years experience working with entrepreneurs and businesses to plan and grow for the future. Clients trust me because of the practical guided advice I provide. No deal is too small or complex for me to handle.

With over ten years of intellectual property experience, I’m happy to work on your contractual matter. I am very diligent and enjoy meeting tight deadlines. Drafting memoranda, business transactional documents, termination notices, demand letters, licenses and letter agreements are all in my wheelhouse! Working in a variety of fields, from construction to pharmaceutical, I enjoy resolving any disputes that come across my desk.

International-savvy technology lawyer with 35years+ in Silicon Valley, Tokyo, Research Triangle, Silicon Forest. Outside & inside general counsel, legal infrastructure development, product exports, and domestic & international contracts for clients across North America, Europe, and Asia. Work with Founders to establish startup and continuous revenue, sourcing and partnering with investors to attract funding, define success strategy and direct high-performing teams, advising stakeholders and Boards of Directors to steer company growth.

Managing partner at Patel & Almeida and has over 22 years of experience assisting clients in the areas of intellectual property. business, employment, and nonprofit law.

Tiffanie W.

Tiffanie Wilson is a business transactions and personal injury lawyer. She helps clients realize their business goals by expertly drafting contracts, providing sound legal advice, and working for justice for injured clients.

An experienced attorney with a varied range of legal abilities. Focusing on real estate transactions and general commercial litigation.

Find the best lawyer for your project

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

Intellectual Property lawyers by top cities

• Austin Intellectual Property Lawyers
• Boston Intellectual Property Lawyers
• Chicago Intellectual Property Lawyers
• Dallas Intellectual Property Lawyers
• Denver Intellectual Property Lawyers
• Houston Intellectual Property Lawyers
• Los Angeles Intellectual Property Lawyers
• New York Intellectual Property Lawyers
• Phoenix Intellectual Property Lawyers
• San Diego Intellectual Property Lawyers
• Tampa Intellectual Property Lawyers

Assignment Of Intellectual Property Agreement lawyers by city

• Austin Assignment Of Intellectual Property Agreement Lawyers
• Boston Assignment Of Intellectual Property Agreement Lawyers
• Chicago Assignment Of Intellectual Property Agreement Lawyers
• Dallas Assignment Of Intellectual Property Agreement Lawyers
• Denver Assignment Of Intellectual Property Agreement Lawyers
• Houston Assignment Of Intellectual Property Agreement Lawyers
• Los Angeles Assignment Of Intellectual Property Agreement Lawyers
• New York Assignment Of Intellectual Property Agreement Lawyers
• Phoenix Assignment Of Intellectual Property Agreement Lawyers
• San Diego Assignment Of Intellectual Property Agreement Lawyers
• Tampa Assignment Of Intellectual Property Agreement Lawyers

ContractsCounsel User

Agreement of using Copyrighted material draft

Location: florida, turnaround: less than a week, service: drafting, doc type: ip assignment agreement, number of bids: 7, bid range: $350 - $650, intellectual property assignment agreement review, location: pennsylvania, service: contract review, page count: 1, number of bids: 6, bid range: $200 - $499, want to speak to someone.

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

Find lawyers and attorneys by city

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

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

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

The parties therefore agree as follows:

1. ASSIGNMENT OF INTELLECTUAL PROPERTY.

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

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

2. PURCHASE PRICE.

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

3. RECORDATION.  

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

4. NO EARLY ASSIGNMENT.

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

5. ASSIGNOR'S REPRESENTATIONS.

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

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

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

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

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

7. GOVERNING LAW.

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

8. AMENDMENTS.

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

9. ASSIGNMENT AND DELEGATION.

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

10. COUNTERPARTS; ELECTRONIC SIGNATURES.

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

11. SEVERABILITY.

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

12. NOTICES.

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

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

13. WAIVER.

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

14. ENTIRE AGREEMENT.

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

15. HEADINGS.

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

16. EFFECTIVENESS.

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

17. NECESSARY ACTS; FURTHER ASSURANCES.

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

[SIGNATURE PAGE FOLLOWS]

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

[PAGE BREAK HERE] EXHIBIT A LIST OF INTELLECTUAL PROPERTY

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

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

[PAGE BREAK HERE]

ATTACHMENT A INTELLECTUAL PROPERTY

Free Intellectual Property Assignment Agreement Template

Safeguard the sale or purchase of assets with an intellectual property assignment agreement. transfer the ownership of patents, trademarks, software, and other critical assets easily..

Complete your document with ease

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

Intellectual property assignment agreement: How-to guide

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

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

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

What is an intellectual property assignment agreement?

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

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

Benefits of IP assignment agreement

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

Clear ownership

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

Legal protection

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

Assured compensation or price guarantee

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

No future obligations

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

Commercialization opportunities

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

Facilitates collaboration

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

Risk mitigation

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

Enhanced value

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

Understanding IP assignment agreements: Considerations for sellers

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

Choosing between an IP assignment and a licensing agreement

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

Value uncertainty

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

Limited future opportunities

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

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

What are the types of IP assignment agreements?

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

Patent assignment agreement or assignment of patents

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

Copyright assignment agreement or assignment of copyrights

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

Trademark assignment agreement or assignment of trademarks

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

Trade secret assignment agreement or assignment of trade secrets

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

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

Design assignment agreement or assignment of design

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

Employee or contractor IP assignment agreement

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

Assignment of IP in a joint venture  

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

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

Who uses intellectual property assignment agreements?

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

Corporations and businesses

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

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

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

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

Individuals and inventors

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

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

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

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

Key provisions of an intellectual property assignment agreement

Introduction.

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

Assignment of IP

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

Purchase price

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

Recordation

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

No early assignment

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

Assignor’s representations

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

Indemnification

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

Governing law

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

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

Assignment and delegation

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

Counterparts; electronic signatures

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

Severability

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

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

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

Entire agreement

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

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

Effectiveness

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

Necessary acts; further assurances

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

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

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

Simplified drafting process

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

Ease of customization

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

Clarity and consistency

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

Time and cost efficiency

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

Accessibility and convenience

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

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

Frequently asked questions

What's an intellectual property assignment agreement.

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

What key details are required to complete your assignment agreement?

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

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

Related templates

Assignment of Agreement

Transfer work responsibilities efficiently with an assignment of agreement. Facilitate a smooth transition from one party to another.

Copyright Assignment

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

Patent Application Assignment

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

Patent Assignment

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

Trademark Assignment

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

Trademark License Agreement

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

• Commercial Law

IP Assignment clauses

IP Assignment clauses are featured in contracts when an owner’s intellectual property rights are to be assigned or transferred to another entity or individual, usually in return for some type of consideration.

When an IP Assignment clause is missing

IP Assignment clauses are a valuable contractual provision employed to enable the assignment of IP.

Unlike the licensing of intellectual property, which may be terminated, once assignment occurs it effectively brings to an end the original owner’s involvement with the assigned intellectual property.

Drafting considerations

When drafting an IP Assignment clause, the following points should be considered:

• Confirm that the assigning party is the owner of the IP or has been assigned the rights to it. If rights were assigned, confirm that there are no limitations on their ability to assign the acquired rights.
• Confirm whether the assignor will warrant its rights and necessary third party consents.
• Decide what consideration (payment) is being provided for the intellectual property and whether payment will be made in lump sum or periodic payments.
• If consideration is by way of periodic payments, consider and ensure that the clause is clear in relation to when the title will transfer.
• Outline the logistics of when, where and how the intellectual property will be delivered.
• Confirm whether the assignment will be a full or partial assignment. If only partial rights are being assigned ensure that the clause is clear in relation to which part/s.
• Verify whether there will be any limitations on the assignment.
• Confirm whether the assignor will provide indemnification in the event the rights are disputed or for any other terms or conditions.

Finally, it should be noted that most assignments need to be recorded with the relevant intellectual property office and the relevant register updated to indicate the new owner’s details.

Connor James

Leave a reply cancel reply.

Your email address will not be published. Required fields are marked *

About Law Quarter

A firm focused on a just, safe and sustainable community. If you are looking for an experienced legal team, get in touch today. 

Recent Posts

Shareholders Agreement: What You Need to Know

Telehealth Providers Beware: TGA Cracks Down on Prescription Drug Advertising

Legal Landscape of Renewable Energy: Navigating Opportunities and Challenges

IP Assignment Agreement and Key Clauses 

Introduction.

In today’s fast-paced and innovation-driven world, intellectual property (IP) is a valuable asset for individuals and businesses alike. IP assignment means when one party, often referred to as the “assignor” or “licensor,” transfers their rights and ownership of intellectual property to another party, known as the “assignee” or “licensee.

When it comes to transferring ownership of IP rights, an IP Assignment Agreement plays a crucial role. This agreement ensures that the transfer of intellectual property is properly documented and is legally binding. In this blog, we will explore the key terms in an Intellectual Property Assignment Agreement.

What is an IP Assignment Agreement?

IP assignment agreements are usually agreements between a business and its employees or any other party that transfers ownership of IP created by the personnel during their employment or engagement with the business. IP can include patents, trademarks, copyrights, and trade secrets, or other intangible creations. It is transferred to a company or another individual. This provides a clear record of the title of the intellectual property to whoever the rights of the IP are being transferred. This can also help the creator to keep their intellectual property safe from illegal use, distribution and more. 

The agreement ensures that the business retains ownership of any IP created by the employees, even after they leave the business. Even if an employee is not involved in creating IP, it’s advisable to have these agreements in place—you never know where the next great idea might come from, and in any case, it’s easier to get this agreement signed than it is to explain to an investor or acquirer why you didn’t. Without an IP assignment agreement, personnel may be able to claim personal ownership of the IP they created, which can be deadly to a business that relies on IP for its value. So, if it is such an important document, then what are the terms and clauses that are required to make it a foolproof contract?

To Learn Drafting of IP Assignment Agreement and other important agreements, sign up for our Contract Drafting & Negotiation course taught by Top Law Firm Partners. It starts on October 7, 2023. 

Terms and clauses that are important in an IP Assignment Agreement

Mainly the terms need to give information about who is involved in the transfer, what Intellectual Property is being transferred, how much the Intellectual Property Costs, and why the transfer is valid. To elaborate, an IP Assignment Agreement must have the following:- 

• Scope and Objective of the Agreement

The scope and objective clause lays down the foundation of the IP assignment agreement. These clauses need to specify the  purposes for which the assignee will use the IP. The assignor needs to know and specify the intent of the transfer of the IP. It is crucial to understand that the assignor can only transfer rights that are specified in the scope of the agreement.

• Description of the Intellectual Property

A detailed description of the intellectual property being assigned is vital to identify the scope and nature of the IP rights involved. These points have to be in the description clause:

• Title and Ownership : The title and ownership of the IP being transferred need to be stated. 
• Detailed Description : This clause needs to give a comprehensive description of the IP, including any relevant technical specifications or documentation. 
• Registration Information: If the IP is registered with any regulatory or governmental authority, the clause has to mention the registration details. 
• Assignment of Rights

The main clause is the assignment clause which specifies the transfer or conveyance of the ownership of rights over the IP. In this clause, a clear outline of the scope of the ownership and procedure of transfer has to be laid out. The key points to cover in this clause include:

• Exclusive or Non-Exclusive Assignment : It must be clearly stated whether the assignment is exclusive (transferring all rights) or non-exclusive (transferring limited rights).
• Territory : Definition of the geographical territory in which the assignment applies. 
• Duration : The duration of the assignment must be specified, whether it is temporary or permanent. 
• Future Transfers : In case it is a temporary assignment, it must specify whether the assignee can transfer the IP to its hires, or legal representative or assign it to any other person. 
•     Consideration

Consideration refers to the compensation or payment exchanges between the parties. In an IP assignment agreement, the consideration may take various forms:

• Lump Sum Payment : A one-time payment made by the Assignee to the Assignor.
• Royalties : A percentage of revenue generated from the IP, payable over a defined period. 
• Equity Stake : In certain cases, the Assignor may receive shares or ownership in the Assignee’s business. 

• Warranties and Indemnities:

These terms protect both parties by setting forth the assurance and protections related to the intellectual property being assigned:

• Ownership Warranty : The assignor warrants that they are the sole owner of the intellectual property and have the right to transfer it or they may give the warranty to the assignee. 
• Infringement Warranty : The assignor warrants that the intellectual property does not infringe upon the rights of any third party. 
• Indemnification : The Assignor agrees to indemnify and hold harmless the Assignee from any claims or damages from the assignment. To protect the Assignee from any potential future damages or legal costs resulting from any misstatement in the Assignment Agreement, an indemnification clause is crucial.
• Confidentiality and Non-disclosure

To protect sensitive information related to intellectual property, it is essential that the assignment agreement has confidentiality and non-disclosure provisions. This section should have:

• Confidentiality Obligations : It must specify the obligation of both parties to keep all information related to the IP assignment confidential. 
• Non-Disclosure : Prohibit the parties from disclosing any confidential information to third parties without prior written consent. 
• Governing law and Jurisdiction

Determining the governing law and jurisdiction in the event of a dispute is crucial for effective enforcement. These terms should include:

• Choice of law : The term needs to specify the jurisdiction whose law will govern the interpretation and enforcement of the contract. 
• Jurisdiction : Determine the appropriate courts or arbitration bodies that will have jurisdiction over any disputes. 

An Intellectual Property Assignment Agreement is a critical legal document for transferring ownership of intellectual property rights. By including the aforementioned clauses one can make it a foolproof contract and protect their rights and make it enforceable whenever anything goes wrong. Further, before signing the agreement one must look out for all the important terms and clauses and make an informed decision. 

To Learn Drafting of IP Assignment Agreement and other important agreements, sign up for our Contract Drafting & Negotiation course taught by Top Law Firm Partners. It starts on October 7, 2023.

Leave a Comment Cancel reply

Save my name, email, and website in this browser for the next time I comment.

TALK TO AN EXPERT

• +1 855 328 3331 / +91- 020-29911979
• [email protected]
• Investability Testing
• ALCOR Value Proposition
• Investment Thesis for ALCOR
• ALCOR Leadership
• Write For Us
• Sample Report
• ALCOR AUSTRALIA
• ALCOR BRAZIL
• ALCOR ECUADOR
• ALCOR GERMANY
• ALCOR INDIA
• ALCOR JAPAN
• ALCOR KOREA
• ALCOR KUWAIT
• ALCOR SINGAPORE
• ALCOR SOUTH AFRICA
• ALCOR UNITED KINGDOM
• ALCOR URUGUAY

What is IP Assignment Agreement and Why is it Crucial for Every Business

• October 30, 2020
• Venture Capital Funding

You may be starting or acquiring a company. Then you need the Intellectual Property Assignment Agreement (IP) to transfer intellectual property. These include   innovation  patents, source code, and customer lists.

In a technology business, what the  investor finances   is often  the IP assets .

Your products and services depend on certain critical IP assets. Then an investor will undertake   due diligence.  It will help him to understand your right to use such assets.

In this post, we will tell you why an IP assignment agreement is required. So, we will also list out the steps to draw such an agreement.

What is Intellectual Property Assignment Agreement?

An IP assignment agreement is a contract.

It transfers the rights to the intellectual property from the creator. The rights go to another entity, such as an acquiring company.

You may (and should) ask your employees to sign the IP agreement. Additionally, this will assign to your company any ideas, work products, or inventions of the business.

Type of Intellectual Property Assignment Agreement

Technology assignment agreement.

This assigns your startup any intellectual property before you form the company.

The developer(s) may keep individual intellectual property rights under certain circumstances. Hence, they may even sell the rights to you for equity or cash.

Invention assignment agreement

This assigns new company ownership of any relevant intellectual property created by employees. 

The agreement includes the founder(s) and employees as signatories. So, they become parties to a confidentiality agreement and an invention assignment agreement.

Checklist for Intellectual Property Assignment Agreement

You should include a couple of critical points in the agreement.

• The employee must disclose to your company any inventions, ideas, and products of the firm. These must have been made during the period of employment.
• Your company is the owner of inventions, ideas, discoveries, and work products.

Key Clauses of Intellectual Property Assignment Agreement

Assignment clause.

This requires employees to assign their inventions to your company. This will ensure you have total ownership of the intellectual property.

This could be narrowed to employee inventions only. It could be broadened to include anything the employee creates.

Therefore, your IP lawye r should include the following assignment clause into the IP agreement :

• The actual assignment
• The timing of the assignment
• Already owned IP
• “All things necessary.”
• Moral Rights
• Third-Party Confidentiality/Trust

Warranty Clause

Your IP lawyer should include the following warranties into the IP agreement:

The Assignor represents and warrants that:

• It is the absolute owner of the Property;
• It has the authority to assign the Property in full;
• The Assignor has not licensed any right, title, or interest in the Property to any third party;
• It has procured consent on the infringement of the Moral Rights of every author of the Property.
• The Property does not infringe any Intellectual Property rights or Moral Rights.
• The Assignor has no other obligations to any party inconsistent with the Agreement.
• Power of Attorney Clause

You can get this clause added to the agreement. This is so that the firm can administer the ownership rights without the employee. So, this is regardless of whether the employee is willing and able to assist.

An IP assignment agreement assures investors that the IP has been transferred. It consists of the intellectual property that is required to run the business.

Engage qualified IP counsel at the outset of your company. So, this ensures that you have the freedom to operate your business with your inventions.

With AI Based Assessment Tool, Mitigate Your Risk And Test Your Startup Investability Score Now

• Confidentiality and intellectual property assignment agreement
• Confidentiality and intellectual property assignment agreement sample
• Confidentiality and intellectual property assignment agreement template
• Founder ip assignment agreement
• global investors
• high-end AI platform
• Intellectual property assignment agreement pdf
• ip assignment agreement
• ip assignment agreement india
• ip assignment agreement sample
• ip assignment agreement template
• ip assignment agreement uk
• Pre-screening
• Risk Assessment

Examples of Elevator pitches and How It Can Prove to Be a Game Changer

What is a Business Model Canvas?

What is a Tech Ecosystem and How It Can Be Highly Impactful for Startups

Government Support for Startups: Know The Ways to Help Your Business

How to Successfully Overcome Barriers and Finish Your Projects Smoothly

Ready to talk, download free ebook here, get a free ebook on avoiding 10 startup blunders to achieve 10x growth, why over 98% of businesses fail , and what those who succeed do differently.

Are you an aspiring entrepreneur looking for the secrets to success? Are you struggling to stay focused and motivated while building your business?

Look no further – this book is packed with the insights, tips, and strategies you need to become a successful entrepreneur. Discover the two most significant driving forces of successful entrepreneurship, examples of the best entrepreneurial leaders, and why focus and tenacity matter more than strategies, business plans, and techniques.

Get ready to take your business to the next level! This book contains the knowledge and insight you need to become a successful entrepreneur.

Don’t miss out on this opportunity to learn the secrets of successful entrepreneurship. Buy this book now and start your journey towards success!

Hello there!

Thanks for choosing to download our sample report today.

**This is a free report and does not approve or guarantee funding**

• Practical Law

Assignment of intellectual property rights (pro-assignee)

Practical law uk standard document 0-500-7124  (approx. 29 pages), get full access to this document with a free trial.

Try free and see for yourself how Practical Law resources can improve productivity, efficiency and response times.

About Practical Law

This document is from Thomson Reuters Practical Law, the legal know-how that goes beyond primary law and traditional legal research to give lawyers a better starting point. We provide standard documents, checklists, legal updates, how-to guides, and more.

650+ full-time experienced lawyer editors globally create and maintain timely, reliable and accurate resources across all major practice areas.

83% of customers are highly satisfied with Practical Law and would recommend to a colleague.

81% of customers agree that Practical Law saves them time.

• Trade Marks
• General Commercial

• Law of torts – Complete Reading Material
• Weekly Competition – Week 4 – September 2019
• Weekly Competition – Week 1 October 2019
• Weekly Competition – Week 2 – October 2019
• Weekly Competition – Week 3 – October 2019
• Weekly Competition – Week 4 – October 2019
• Weekly Competition – Week 5 October 2019
• Weekly Competition – Week 1 – November 2019
• Weekly Competition – Week 2 – November 2019
• Weekly Competition – Week 3 – November 2019
• Weekly Competition – Week 4 – November 2019
• Weekly Competition – Week 1 – December 2019
• Sign in / Join

• Featured Student Assignments (LawSikho)

Important Provisions of an IP Assignment Agreement

This article is written by Anurag Mawai, pursuing a  Diploma in Advanced Contract Drafting, Negotiation and Dispute Resolution  from  Lawsikho.com .

Table of Contents

Introduction

India is the seventh largest economy of the world with close to three trillion dollars’ worth in GDP and over a billion strong workforce. It has been regarded for a long time as the next industrial workhorse of the world. And in this Global Fifth Industrial Revolution, a new kind of right has come to dominate other aspects of business, i.e. a right to intellectual property. Intellectual property (“IP”) rights can be defined as the rights acquired by people over various creations and inventions derived by the faculties of their intellect and genius. These intellectual properties are usually classified as Trademark, Industrial Design Copyright, Trade Secrets, Patent etc. which are governed by different statutes promulgated by the respective legislatures. These laws tend to encapsulate different rights associated with these IPs; while some rights can be specific to those with registered IPs, some are available to all owners of IP. These rights which are derived from such IP are, in simple terms, a way to exploit them for commercial gains in terms of its different uses, modifications, enhancements, etc. If there is no written agreement, IP rights usually remain with the creator of the IP, even if they have been paid by another for creation of the said IP. However, there are some exceptions to this general rule e.g. where a joint venture is undertaken and there is no agreement between the parties to cooperate, both the parties can license the IP independently. It is the prerogative of an IP Attorney to safeguard the interest of their clients and to advise them to protect their respective IP rights through various agreements which provide for the safeguarding, selling, transferring or licensing of the said IP rights. One of such important agreements governing the rights and liabilities of Intellectual Property owners is an IP Assignment Agreement.

What is IP Assignment?

Assignment of intellectual property (IP) means the process by which ownership of some creative work made for a company/organisation/person by an innovator is transferred to the entity which commissioned the said work. This is usually done by making the inventor sign an agreement which details an explicit transfer of all rights and authority over the said commissioner IP made during the course of their engagement to the said commissioning company/organisation/person. In case of employees, this IP Assignment clause is usually attached with either a Confidentiality and Inventions Assignment Agreement (CIIAA) or a Proprietary Information and Inventions Assignment Agreement (PIIAA).

The process of intellectual property assignment consists of transfer of an owner’s rights, title and interest vested in the intellectual property rights. The transferring party (Assignor’) of the intellectual property rights may transfer all or part of his rights – e.g. the copyright owner could assign only some of his economic prerogatives. The transfer of intellectual property rights is made upon a payment of a lump sum or royalties. An IP Assignment Agreement is very crucial for any organisation in today’s time when everything is done through contract employment and in this scenario an independent contractor may be paid by the organisation to develop a program or to create a product and in case the organisation does not have an IP Assignment Clause in the said employment or consultant agreement all the IP rights to the said product will be vested with the said individual only. In this matter a landmark case of Preston Vs. Marathon Oil Co.  in the U.S. Court of Appeals is of immense relevance. The facts of the case could be summarized as follows. Yale Preston was an employee of a U.S Oil Company by the name of Marathon Oil Company (“Marathon”), he signed the employment agreements of Marathon. which assigned all intellectual property “made and conceived” during the term of the Agreement to Marathon. The dispute was about a methane extraction device for which Preston claimed to have devised plans before being employed by Marathon, while during the term of the Agreement, Marathon manufactured these devices, obtained a patent for them and deployed them at various plants. Preston contended the ownership and assignment of the device, arguing it to be a prior invention and not covered by the assignment Agreement. The U.S. Court of Appeals conclusively decided the matter on the basis of one simple argument, that the device/invention was not clearly conceived prior to the employment and only a rough idea was drawn, and the full working model was developed during the employment term and so was given in the IP Assignment Agreement which required the invention to be not only conceived but made before the term of the Agreement began. Hence not only do all employers need to have an IP Assignment contract with all employees but they need to have it drafted as astutely as possible to curb any loopholes which may in future cost them billions.

Types of IP Assignment Agreement

Assignment of copyright.

The Copyright Act, 1957 is the statute governing assignment of copyrights in India. According to Section 19 of Copyright Act, 1957 the deed of assignment shall specify the `rights assigned’, the duration as well as the territorial extent of the said assignment, and the royalty payable, if any. In case the duration of assignment is not specified, it shall be deemed to be for five years and in case the territorial extent is not specified, it shall be deemed to extend within the entire territory of India as confirmed in Delhi High Court judgement of Pine Labs Pvt. Ltd. vs Gemalto Terminals India Pvt. Ltd & Ors. FAO (OS) 635 & 636 of 2009 . It is mandatory for the assignor or his agent to give written assent, an oral agreement is invalid in this case. If the assignee fails to exercise any of the rights assigned to him within a period of one year of the assignment, the assignment is deemed to have lapsed unless a contrary provision is made in the Assignment Agreement.

Section 19A details provisions regarding dispute in Copyright Assignment . The section states that the assignor has the right to apply for revocation of the assignment with the Copyright Board, in case an assignee fails to sufficiently exercise the rights assigned to them and in the inquiry carried out by the board it the said failure is not attributable to any act or omission of the assignor. The section also makes the provision that the Copyright Board cannot revoke an assignment unless it deems the terms as too harsh for the assignor. And no such revocation shall be made within a period of five years from the date of assignment.

In some jurisdictions, a copyright assignment is even exempt from stamp duty (As provided in Article 25 of Schedule I of Bombay Stamp Act, 1958).

 For an application for changes in registration of Copyright provisions as laid down in Form V under Rule 16 of Copyright Act, 1958 shall be applicable. This application has to be delivered by hand or by post.

Assignment of Patents

The Statute governing patent assignment is Patents Act, 1970. This Statute provides for patents to be assigned in partial manner or complete manner in exclusive as well as non-exclusive. Section 68 of Patents Act, 1970 states that a patent assignment must be made in writing and thereafter it should be registered with the Controller to operate as a legally enforceable contract [ M/s National Research Development Corporation Vs Ineos ABS Ltd (2012) 5 CTC (IP) 8 ].

The controller shall ask to be presented with every document which gives effect to the assignment or it is an evidence of the transfer of the IP or it affects the proprietorship of the IP or creates an interest in the said IP along with two copies of the assignment deed and other ancillary documents certified to be true copies. The Controller may further call for such other proof of title or written consent as he may require.

Assignment of Design

An Assignment of Design can be obtained under provisions of Section 15 of Copyright Act, 1957 or under instrument of design as specified in Rule 37 of Designs Act, 2000. An application for registering the title shall be filed within six months of the execution of the instrument of assignment.

Assignment of Trademark

A Registered trademark can be assigned as per Rule 68 of Trademark Rules, 2003, by making a request under Form TM-23 or 24 depending if assignment is made to the assignee only or assignment is done to assignee along with the proprietor. This application should contain detailed particulars of the applicant’s claim to the trademark and a duly certified copy which has to be produced at the Registry for inspection during the time of application. 

An unregistered Trademark may be assigned or transmitted without goodwill to the business who has devised it as provided under Section 39 of Trademark Act, 1999.

Key Provisions of an Assignment Agreement

Object and scope of the agreement.

The Object and Scope Clause is a vital part of any assignment agreement. The Scope of an assignment clause identifies and specifies the exclusive rights with respect to the IP and the extent to which the assignor shall enjoy them. 

The Object of the IP Assignment defines and elaborates on the purposes for which the said assignment of IP can be used the assignor like in a patent assignment for its object i.e. use of patent in commercial use the additional know how of the patent is also deemed as transferred. It is important to know that the assignor can only transfer those rights which he possesses or shall possess in the future as specified in the agreement and so shall the scope be defined.

Where the Assignor is the innovator of the patent as specified in Annexure to the Agreement and specified in reference in this Agreement.

And whereas the Assignor has agreed to assign, sell and transfer the said patent to the assignees for the use and purposes as laid down under the Agreement.

The Assignment Clause  

The main assignment clause which specifies the transfer or conveyance of ownership of rights over the IP is the keystone to an IP Assignment Agreement.

If a clear outline of the scope of ownership and the procedure of such transfer is not laid out, then the entire IP Assignment Agreement would collapse. 

An IP Assignment clause also details the manner in which such transfer over the right is shifted from the assignor to the assignee e.g. if any particular permission is to be taken and only after such process laid down in the assignment clause is completed does the contract become effective. 

“In pursuance of the Deed/Agreement and in consideration of the payment of consideration in the Agreement, and other good and valid consideration the receipt and validity of which is hereby acknowledged. Assignor hereby conveys, transfers assigns, delivers, and contributes to Assignee all of the Assignor’s right, title, and interest of whatever kind in and to the patent, together with:

• the goodwill of businesses related to the products, services in respect of which the patents are used and for which they are registered.
• all income, royalties and damages hereafter due or payable to Assignor with respect to the patent including damages and payments for future infringement or misappropriations.”

Term of Assignment

Term of an IP Assignment Agreement specifies the time period for which the said assignment over the rights of the IP will operate. This Assignment can be indefinite or for a definite period of time. The Term Clause should also specify the procedure of renewal of the said Agreement, mostly IP Assignment Agreements have an auto renewal clause which states that unless the parties agree to terminate the agreement in writing, it shall renew perpetually for the same term. An assignment can be perpetual in nature or for a fixed definite period of time. 

Territory of Assignment

The territory clause of an IP Assignment Agreement specifies the territorial limits within which said IP ownership operates. The Assignment Agreement shall clearly lay down the areas and boundaries within which the assignor surrenders his proprietary rights as they will not be surrendered till the Agreement is terminated and territorial boundaries can add the specificity to operation of the IP Assignment especially for commercial ventures.

The Clause for Term and Territory is usually drafted together for e.g.:

“Thus as per the conditions laid down in this Agreement, the Assignor hereby makes the patents an absolute property of the Assignee starting from the Execution Date of this Agreement. This Assignment would operate on a worldwide basis and the Assignees shall be empowered to take all necessary actions to effect the registration of this Agreement in the Registrar’s office of the appropriate jurisdiction.”

Future Transfers

Usually in perpetual IP Assignment Agreements right to make any future transfers is also included and parties should specify and clarify their intentions in writing regarding these future rights. In a fixed term assignment future transfer rights are very restricted and practically withdrawn. Any future transfer of right by the assignee is limited to the right acquired by him in the Assignment Agreement only as well as limited to the scope and territory within which such assigned right operated in the original assignment agreement.

An Example of Future Transfer Rights Clause in a limited Assignment Agreement:

“Assignee shall not transfer or assign any right, title or interest in the Intellectual Property, or any ancillary rights derived from them, to any third party without the Assignor’s prior written consent. Any purported transfer or assignment in violation of this Clause shall be deemed as null and void.”

Representations and Warranties

These clauses lay down clear aspects of the Assignor’s liabilities and specify the aspects on which the Assignee can lawfully and easily terminate the Assignment Agreement without much financial hassle.

“The Assignment Agreement should have clear laid out warranties from the Assignor stating various aspects like:

• Assignor represents and warrants to Assignee that: Assignor exclusively owns all right, title, and interest in and to the Assigned Property;
• Assignor has not granted and will not grant any licenses or other rights to the Assigned Property to any third party;
• The Assigned Property is free of any liens, encumbrances, security interests, and restrictions on transfer; 
• To the best of Assignor’s knowledge, the Intellectual Property that is assigned as part of the Assigned Property does not infringe Intellectual Property Rights of any third party; and there are no legal actions, investigations, claims, or proceedings pending or threatened relating to the Assigned Property.”

Confidentiality

A Confidentiality Clause not only serves the Assignor’s interests while the Agreement is in operation but proves to be a vital safeguard in case of termination of Agreement as well. A well drafted confidentiality clause being part of the saving clause in an agreement can prevent losses to Assignor and prevent unauthorized access, use or disclosure of sensitive proprietary information which can prove to be fatal for an enterprise. Confidentiality Clauses paired with a Non-Disclosure Agreement also prove to be an asset in litigation as all the rights which need to be safeguarded are put under the shield of Non-Disclosure and an injunctive order in case of breach is quickly received from the courts.

“The Parties, its agents, employees shall hold and maintain in strictest confidence all Confidential Information, and shall not disclose the said information to any third party, except when necessary for the performance of its obligations under this Agreement, or requested by a statutory, government, or regulatory authority. Notwithstanding the foregoing, Confidential Information shall not include information in public domain or which comes to the knowledge of the public through no fault of the Parties. The Parties agree to enter into a Non-Disclosure Agreement the terms of which shall supersede and which shall survive termination of this Agreement.”

Indemnification

An Indemnification Clause is essential to protect the Assignee from any future losses or litigation expense which they might have to incur on account of any misrepresentation in the Assignment Agreement. Or any other breach of warranties by the Assignor himself or by his officers, shareholders, successors, partners or assigns. The Indemnification clause protects the Assignee from any expense, judgements, penalties, claims or demands which may be imposed on the Assignee through no fault of his and hence a vital protection against fraud or breach. 

“Assignor agrees to indemnify, defend and hold harmless Assignee and its employees, officers, directors, representatives, and agents against any claim, loss, damage, settlement, cost, expense, or other liability including without limitation attorney’s fees arising or relating to:

• Assignee’s actual or alleged breach of any obligations in this Agreement.
• Any actual or alleged infringement of any intellectual property rights of any third party’s rights infringed by the Assignor or its employees, representatives, agents, directors or employees.

Assignor shall use a counsel reasonably satisfactory to the Assignee to defend each indemnified Claim, if at any time Assignee should reasonably determine that any indemnified Claim might adversely affect the Assignee, he may take control of the defense at its expense.”

Further Assurances

In a Further Assistance Clause, the Assignor assures the Assignee to assist in any further procedural clearances or regulatory permissions which may include registration of documents, defense of any judicial opposition or any other proceedings to effectuate and fully complete the ownership of the IP rights for their complete use and enjoyment Assistance. This clause also enables the Assignee to complete the transfer procedure to use the IP rights seamlessly and make effective use instead of being entangled in legal or procedural hurdles.

“The Assignor further covenants that on the request of the Assignee, it will execute all documents, papers, forms and authorization that may be necessary for securing, completing or vesting in the Assignee full right, title and interest in the Patent.”

Power of Attorney

Power of attorney is also one of the vital clauses for seamless transfer of the assigned IP rights supposedly if at any time after the assignment agreement is executed Assignee is unable to secure Assignor’s signature on any letters patent, copyright, or trademark assignments or applications for registrations, or for filings relating to the Assigned Property, the assignor can appoint assignee and his authorized officers or agents as his agents, to act for and on its behalf and stead to execute and file any and all such applications, registrations, and other documents with their authorisation having the same legal force and effect as if executed by Assignor himself.

“The Assignor hereby appoints as their true and lawful attorney-in-fact who may for Assignor and in their name, place and stead, and for their use and benefit, may sign acknowledge, swear to, deliver, file or record at the appropriate public offices, any and all documents, certificates, and instruments as may be deemed necessary or desirable by the Assignee to carry out fully the provisions of this Agreement and the law, in accordance with the terms laid down hereunder. This power shall survive the death, dissolution or legal incapacity of the Assignor, and shall be valid for all obligations of the Assignor as laid down in this Agreement.”

Remedy Provisions

A clause providing for an Injunctive relief/Specific relief or liquidated damages detailing the right of parties under certain conditions to approach the court of law can provide a boon in time of litigation as it would reduce the burden on the parties and reduce time for getting a court order at the time of breach of the Agreement. The Remedy Clause can be adjusted to provide for injunctive remedy as well as liquidated damages as per the finally negotiated remedies between the parties.

“Assignor agrees that any material breach of this Agreement or breach of [imp. Clauses can be added] would cause Assignee irreparable injury hence in addition to any other remedies under the law, Assignee shall have the right to bring to court a suit for specific performance of this Agreement.”

We are all living in the golden age of IP, with close to 3.3 billion patents being filed in the year 2019 alone, these patents would require suitable and adequate legal documentation in order to successfully commercialize and give any benefits to their owner because any innovation without adequate safeguards is a treasure trove for infringers which disrupts the genuine claims of the rightful owner of the IP and causes loss of value to the economy.

Hence, a clearly drafted agreement which leaves no room for misinterpretation is a must for every organisation as well as individuals who venture in the field of innovation and discovery as seen in the Marathon Case, because in the end it can prove to be the only shield for protecting rights worth millions.

Students of  Lawsikho courses  regularly produce writing assignments and work on practical exercises as a part of their coursework and develop themselves in real-life practical skill.

LawSikho has created a telegram group for exchanging legal knowledge, referrals and various opportunities. You can click on this link and join:

https://t.me/joinchat/J_0YrBa4IBSHdpuTfQO_sA

Follow us on  Instagram  and subscribe to our  YouTube  channel for more amazing legal content.

RELATED ARTICLES MORE FROM AUTHOR

Impact of ai on data and privacy protection laws, what you need to know about cyberbullying and its legal remedies, principle of privity of contract, leave a reply cancel reply.

Save my name, email, and website in this browser for the next time I comment.

3-Day Bootcamp on (LIVE only)

How to kickstart your international IP law career today

Register now

Thank you for registering with us, you made the right choice.

Congratulations! You have successfully registered for the webinar. See you there.