It is not uncommon for an individual or a business to want to assign their intellectual property (“IP”) rights to another individual or entity. This might be in the context of employment or otherwise, but in any case, an Intellectual Property Assignment Agreement is a useful contractual agreement used to facilitate the assignment of IP. It is worth noting that these agreements are also known as Rights Agreements or IP Transfer Agreements.
The intention behind the Agreement is to transfer ownership of specific intellectual property from one party to another. The party transferring the interest is known as the assignor. The party receiving the interest over the intellectual property is known as the assignee. It is always best to speak to an IP lawyer about drafting such a contract on your behalf. IP Lawyers are the experts in all things intellectual property and will be able to explain the intricacies of the Agreement so you know exactly what the process is and how such an agreement can impact upon your rights.
Assignment Clause
There are several important provisions that an IP lawyer should draft into the Assignment Clause, including the following:
1. The actual assignment – In consideration of $_, the Assignor assigns, transfers and conveys to the Company/Individual any and all current or future rights, title, and interest in the Property.
2. The timing of assignment – In consideration of $_, the Assignor agrees to assign all future rights to the Company/Individual immediately upon their creation. The Assignor will do all things necessary to assign any Intellectual Property it creates or obtains to the Company/Individual.
3. Previously owned IP – The assignment includes any and all rights that the Company/Individual has with respect to infringement of the Intellectual Property in the Property before the date of this Agreement.
4. “All things necessary” – The Assignor must do all things necessary (including signing documents) to ensure that the Company obtains full ownership of the Property.
5. Moral Rights – The Assignor consents to the infringement by the Company of any Moral Rights that the Assignor may have in any of the Property.
6. Third Party Confidentiality/Trust – To the extent any rights held by the Assignor under third party confidentiality agreements cannot be assigned, the Assignor agrees to hold such rights on trust for the benefit of the company.
To guarantee the safety of your business’ IP, advice from an IP lawyer should be obtained. An IP lawyer will ensure the safety of your valuable intellectual property.
Warranties Clause
There are several important warranties that your IP lawyer should insert into the Intellectual Property Assignment Agreement, including:
The Assignor represents and warrants that:
- It is the sole and absolute owner of the Property;
- It has the authority and capacity to assign the Property in full;
- The Assignor has not licenced or encumbered any right, title or interest in the Property to any third party;
- It has procured consent with respect to the infringement of Moral Rights of every author or joint author of the Property;
- The Property does not infringe any third party’s Intellectual Property rights or Moral Rights; and
- The Assignor has no other obligations to any third party that are inconsistent with the rights and obligations set out in this Agreement.
If you are the Assignor (or Assignee), make sure your IP lawyer reviews or drafts these warranties. Your IP lawyer will be able to explain the importance of these warranties and how they indemnify the Assignee from liability in the event that the Assignor attempts to transfer (intentionally or otherwise) Intellectual Property that belongs to another party.
Conclusion
Speak with an IP lawyer before you sign any Intellectual Property Assignment Agreements. If you feel uneasy about assigning over your IP rights to the company you work for, contact an IP lawyer and have a discussion about your rights.
At LegalVision, we have a team of excellent IP lawyers who can assist you with all of your IP legal needs, including trademarking, patenting and copyright.