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As an individual or business owner, there may be times when you want to assign your intellectual property (IP) rights to another individual or business. Alternatively, you may want another entity to assign their IP rights to you. IP is a term which is applied broadly to something which is created, invented or designed. IP is sometimes referred to as ‘property of the mind’. Assigning your IP rights to another party is most often seen in the context of an employment contract, whereby any IP produced in the course of employment is automatically assigned to the employer. You may need another individual or entity to assign their IP rights to you if you engage a service provider to carry out work for you, such as:

  • designing your logo; or 
  • writing the code for your app. 

This article explains: 

  • what an IP assignment agreement is; and 
  • why an IP assignment is important in defining and protecting your rights.

Key Clauses in an Intellectual Property Assignment Agreement

An IP assignment agreement is a contractual agreement which facilitates the transfer of IP from one party to another. The party transferring the IP interest is the assignor. The party receiving the IP interest is the assignee. There are several important clauses which you should include in an IP assignment agreement.

The Assignment Clause

Assignment of IP rights may take place in return for a sum of money. However, this is not always so, as in the case of employees automatically assigning their IP rights to their employer. The clause should make it clear that all current or future rights, titles or interest in the IP are conveyed to the assignee.

Timing of the Assignment

It is important to state that all rights, titles or interest in the IP are conveyed to the assignee immediately upon creation of the IP. The assignor must agree to do ‘all things necessary’, including signing required documents, to facilitate a successful transfer of IP.

Assignment of Moral Rights

The assignor must also consent to the assignment of their moral rights in the IP. Moral rights are the rights of a creator to control, protect and enforce the artistic integrity that subsists in the IP. 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

To the extent that any rights held by the assignor under third-party confidentiality agreements cannot be assigned, the assignor must agree to hold such rights on trust for the benefit of the assignee.

Warranties

The assignor must represent and warrant that it:

  • is the sole and absolute owner of the IP;
  • has the authority and capacity to assign the IP in full;
  • has not licenced or encumbered 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 as set out in the intellectual property assignment agreement.

A warranty clause is important, as it protects the assignee from liability in the event that the assignor attempts to transfer IP which belongs to another party, whether intentionally or not.

Key Takeaways

A comprehensive intellectual property assignment agreement is important to define and protect your position in either assigning or receiving IP. A well-drafted intellectual property assignment agreement will protect you against any claims of IP infringement from third-parties and ensure that you have full ownership rights of the IP. If you have any questions on intellectual property assignment agreements, please contact LegalVision’s intellectual property lawyers on 1300 544 755 or fill out the form on this page.

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