As an individual or business owner, there may be times when you want to transfer your intellectual property (IP) rights to another individual or business or vice versa. Broadly, IP applies to something that is created, invented, designed or is otherwise ‘property of the mind’. To transfer ownership of this property, it is likely you will need to develop an IP assignment agreement. This article will define an IP assignment agreement and explain its importance in defining and protecting your interests.
What Does an IP Assignment Agreement Do?
An IP assignment agreement is a contractual agreement that facilitates the transfer of IP from one party to another. The party transferring the IP interest is the assignor, and the party receiving the IP interest is the assignee.
For example, if you are an employer, your agreement may outline that any IP your employee (assignor) produces is automatically assigned to you (assignee). Similarly, you may also need a service provider to assign their IP rights to you if you engage them to carry out work for you, such as:
- designing your logo; or
- writing the code for your app.
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What Should I Include in My IP Assignment Agreement?
Beyond the basic transfer of rights, an effective IP assignment agreement must address several key clauses to protect the interests of both parties. These clauses ensure that the assignee inherits the responsibility to uphold these obligations, safeguarding against potential legal and reputational risks. We explain these key provisions below.
Assignment Clause
IP rights may be assigned in return for a sum of money. However, this is not always the case, as in the case of employees automatically assigning their IP rights to their employer. Therefore, the clause should make it clear that all current or future rights, titles, or interests in the IP are conveyed to the assignee.
Assignment Timing
It is important to state that the assignee receives all rights, titles or interest in the IP immediately upon its creation. The assignor must agree to do ‘all things necessary’, including signing required documents, to facilitate a successful transfer.
Moral Right Assignment
One critical aspect is how you handle moral rights associated with the IP. Moral rights grant creators the authority to maintain the integrity of their work. If you have created a work, this includes your right to control, protect and enforce your artistic integrity that subsists in the IP. Therefore, your agreement should include provisions ensuring that the assignor consents to the assignment of these moral rights to the assignee. This includes the right:
- of the assignor to attribute their name to the work;
- against false attribution from other parties; and
- against derogatory treatment.
Third-Party Confidentiality
Furthermore, confidentiality clauses are essential to address any existing obligations the assignor may have under confidentiality agreements with third parties. There may be a situation where the assignor cannot transfer some rights assignor because of a third-party confidentiality agreement. If this is the case, they must agree to hold such rights on trust for the benefit of the assignee.
Warranties
A warranty clause is important. If you are the assignee, this clause protects you from liability if the assignor attempts to transfer IP which belongs to another party. The clause will apply whether this happens intentionally or not. The assignor must represent and warrant that it:
- is the IP’s sole and absolute owner;
- has the authority and capacity to assign the IP in full;
- has not licenced or restricted any right, title or interest in the IP to any third party;
- does not infringe any third-party’s IP rights or moral rights; and
- has no other obligations to any third party which are inconsistent with the rights and obligations set out in the IP assignment agreement.
Key Takeaways
A comprehensive IP assignment agreement is important to define and protect your position in either assigning or receiving IP. Importantly, it may defend you against any claims of IP infringement from third parties and ensure that you have full ownership rights. When drafting your IP assignment agreement, some key clauses you should note are:
- the actual assignment clause
- a clause regarding the timing of the assignment;
- a moral rights assignment clause;
- a Third-party confidentiality clause; and
- relevant warranties.
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Frequently Asked Questions
An IP assignment agreement is a legal contract that facilitates the transfer of intellectual property (IP) rights from one party to another. Importantly, it defines specifics such as what IP is being transferred (e.g., patents, trade marks, copyrights). It also ensures that the assignee receives all rights, titles, and interests in the IP.
This agreement is crucial for both parties involved in transferring or receiving IP rights. It clarifies ownership, protects against disputes over IP ownership, and ensures compliance with legal requirements. It also provides warranties that the assignor is the IP’s rightful owner and has the authority to transfer it.
Essential clauses include specifying the IP being transferred, outlining the assignment process and timing, addressing moral rights consent, managing confidentiality obligations, and providing warranties against third-party claims. These clauses collectively protect both parties and establish a clear framework for the transfer of IP rights.
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