employee intellectual property assignment agreement template

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

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 agreement s  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

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Intellectual Property Assignment Agreement Template

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An Intellectual Property Assignment Agreement transfers ownership of any IP created by an employee to the employer. Make sure you have your employees sign this document prior to their start.

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Intellectual Property Agreement Template

Prepared by:

​ [Sender.FirstName] [Sender.LastName] [Sender.Company] ​

Prepared for:

​ [Employee.FirstName] [Employee.LastName] ​

​ [Employee.Company] ​

This Intellectual property agreement is entered into on (date) and will be effective from the same date, between [Sender.FirstName] [Sender.LastName] and [Employee.FirstName] [Employee.LastName] (Receiver).

­­As a condition of my employment with the Company, its subsidiaries, affiliates, successors or assigns (hereinafter, the “Company”), and in consideration of my employment with the Company and my receipt of the compensation now and hereafter paid to me by the Company, I agree to the following:

This Property Assignment Agreement will have the effect of transferring ownership in anything created by the employee during the period of his/her employment with the company. Intellectual Property Assignment Agreements are also entered into between business entities and even individuals, where one party is looking to sell the rights to its intellectual property in exchange for something of value — usually money.

​In an employer/employee Intellectual Property Assignment Agreement (which is what this agreement is), the employee may want to limit the intellectual property that would otherwise transfer to the employer. For example, the employee may not want to transfer anything conceived or created by him/her on his/her own time, especially if it does not relate to the employer’s business.

1. INVENTIONS RETAINED & LICENSED.

I have attached hereto, as Exhibit A, a list describing all inventions, original works of authorship, developments, improvements, and trade secrets which were made by me prior to my employment with the Company (collectively referred to as “Prior Inventions”), which belong to me, which relate to the Company’s proposed business, products or research and development, and which are not assigned to the Company hereunder; or, if no such list is attached, I represent that there are no such Prior Inventions.

If in the course of my employment with the Company, I incorporate into a Company product, process or machine a Prior Invention owned by me or in which I have an interest, the Company is hereby granted and shall have a nonexclusive, royalty-free, irrevocable, perpetual, worldwide license to make, have made, modify, use and sell such Prior Invention as part of or in connection with such product, process or machine.

At the time of joining the company, I was the owner of or held proprietary rights in relation to the intellectual property identified herein and related to the company’s business of (description of business), which Intellectual Property was developed in contemplation of being used, either directly or indirectly, by the Company in connection with carrying on the business of the Company.

2. ASSIGNMENT OF INVENTIONS.

I agree that I will promptly make full written disclosure to the Company, will hold in trust for the sole right and benefit of the Company, and hereby assign to the Company, or its designee, all my rights, title, and interest in and to any and all inventions, original works of authorship, developments, concepts, improvements, designs, discoveries, ideas, trademarks or trade secrets, whether or not patentable or registrable under copyright or similar laws, which I may solely or jointly conceive or develop or reduce to practice, or cause to be conceived or developed or reduced to practice, during the period of time I am in the employ of the Company (collectively referred to as “Inventions”), except as provided in “Exception to Assignments” below.

I further acknowledge that all original works of authorship which are made by me (solely or jointly with others) within the scope of and during the period of my employment with the Company and which are protectable by copyright are “works made for hire,” as that term is defined in the United States Copyright Act.

I understand and agree that the decision whether or not to commercialize or market any invention developed by me solely or jointly with others is within the Company's sole discretion and for the Company’s sole benefit and that no royalty will be due to me as a result of the Company’s efforts to commercialize or market any such invention.

3. REMAINDER OF INTELLECTUAL PROPERTY.

I hereby declare that I have assets, rights or interests that go beyond the scope of this agreement, and are not included as a part of this agreement, either in sum or whole. The benefit of such assets may not be used by [Employee.Company] , unless with my expressly stated written permission.

4. MAINTENANCE OF INVENTIONS RECORDS.

I agree to keep and maintain adequate and current written records of all Inventions made by me (solely or jointly with others) during the term of my employment with the Company. The records will be in the form of notes, sketches, drawings, and any other format that may be specified by the Company.

The records will be available to and remain the sole property of the Company at all times.

5. COSTS AND EXPENSES.

If either party incurs any costs, fees, expenses, etc., both parties will be liable to pay for costs and expenses, in full, unless if otherwise mentioned explicitly in this Agreement, any of the other Ancillary Agreements or any other agreement between parties. If any cost was borne by any person on the instance of completing a task for another person, the person who completed the task shall be reimbursed for the amount spent, as long as they can provide receipts.

6. PATENT & COPYRIGHT REGISTRATIONS.

I agree to assist the Company, or its designee, at the Company’s expense, in every proper way to secure the Company’s rights in the Inventions and any copyrights, patents, mask work rights or other intellectual property rights relating thereto, in any and all countries, including the disclosure to the Company of all pertinent information and data with respect thereto, the execution of all applications, specifications, oaths, assignments and all other instruments which the Company shall deem necessary in order to apply for and obtain such rights and in order to assign and convey to the Company, its successors, assigns, and nominees the sole and exclusive rights, title and interest in and to such Inventions, and any copyrights, patents, mask work rights or other intellectual property rights relating thereto.

I further agree that my obligation to execute or cause to be executed, when it is in my power to do so, any such instrument or papers shall continue after the termination of this Intellectual Property Assignment Agreement.

If the Company is unable because of my mental or physical incapacity or for any other reason to secure my signature to apply for or to pursue any application for any United States or foreign patents or copyright registrations covering Inventions or original works of authorship assigned to the Company as above, then I hereby irrevocably designate and appoint the Company and its duly authorized officers and agents as my agent and attorney in fact, to act for and in my behalf and stead to execute and file any such applications and to do all other lawfully permitted acts to further the prosecution and issuance of letters patent or copyright registrations thereon with the same legal force and effect as if executed by me.

7. COOPERATION.

I agree to perform all commercially reasonable acts deemed necessary or desirable by the Company to assist the Company, at the Company’s expense, in obtaining and enforcing the full benefits, enjoyment, rights and titles that come as a part of the Assigned IP. Such acts may include, but are not limited to, execution of documents and assistance or cooperation (i) in the filing, prosecution, registration, and memorialization of assignment of any applicable patents, copyrights, trademark, mask work, or other applications for my invention, (ii) in the enforcement of any applicable patents, copyrights, trademark, mask work, moral rights, trade secrets, or other proprietary rights, and (iii) in other legal proceedings related to the Assigned IP.

In the event that the Company is unable, for any reason, to secure my signature(s) to any document required to file, prosecute, register, or memorialize the assignment of any patent, copyright, trademark, mask work or other applications or to enforce any patent, copyright, mask work, moral right, trade secret or other proprietary right under any Assigned IP, I hereby irrevocably designate and appoint the Company and the Company’s duly authorized officers and agents as my agents and attorneys-in-fact to act for and on my behalf and instead of me, (i) to execute, file, prosecute, register and memorialize the assignment of any such application, (ii) to execute and file any documentation required for such enforcement, and (iii) to do all other lawfully permitted acts to further the filing, prosecution, registration, memorialization of assignment, issuance, and enforcement of patents, copyrights, mask works, moral rights, trade secrets or other rights under the Assigned IP, all with the same legal force and effect as if executed by me.

8. RETURNING COMPANY DOCUMENTS.

I agree that, at the time of leaving the employ of the Company, I will deliver to the Company (and will not keep in my possession, recreate or deliver to anyone else) any and all devices, records, data, notes, reports, proposals, lists, correspondence, specifications, drawings, blueprints, sketches, materials, equipment, other documents or property, or reproductions of any aforementioned items developed by me pursuant to my employment with the Company or otherwise belonging to the Company, its successors or assigns.

9. REPRESENTATIONS.

I agree to execute any proper oath or verify any proper document required to carry out the terms of this Agreement. I represent that my performance of all the terms of this Agreement will not breach any agreement to keep in confidence proprietary information acquired by me in confidence or in trust prior to my employment by the Company. I have not entered into, and I agree I will not enter into, any oral or written agreement in conflict herewith.

10. EQUITABLE REMEDIES.

I AGREE THAT IT WOULD BE IMPOSSIBLE OR INADEQUATE TO MEASURE AND CALCULATE THE COMPANY’S DAMAGES FROM ANY BREACH OF THE COVENANTS SET FORTH HEREIN.

ACCORDINGLY, I AGREE THAT IF I BREACH ANY OF SUCH PROVISIONS, THE COMPANY WILL HAVE AVAILABLE, IN ADDITION TO ANY OTHER RIGHT OR REMEDY AVAILABLE, THE RIGHT TO OBTAIN AN INJUNCTION FROM A COURT OF COMPETENT JURISDICTION RESTRAINING SUCH BREACH OR THREATENED BREACH AND TO SPECIFIC PERFORMANCE OF ANY SUCH PROVISION OF THIS AGREEMENT.

I FURTHER AGREE THAT NO BOND OR OTHER SECURITY SHALL BE REQUIRED IN OBTAINING SUCH EQUITABLE RELIEF AND I HEREBY CONSENT TO THE ISSUANCE OF SUCH INJUNCTION AND TO THE ORDERING OF SPECIFIC PERFORMANCE.

11. GOVERNING LAW.

This Agreement will be governed by the laws of the State of [Employee.State] . I hereby expressly consent to the personal jurisdiction of the state and federal courts with jurisdiction in [Employee.Country] [Employee.State] for any lawsuit filed there against me by the Company arising from or relating to this Agreement.

12. ENTIRE AGREEMENT.

This Intellectual Property Assignment Agreement sets forth the entire agreement and understanding between the Company and me relating to the subject matter herein and merges all prior discussions between us.

No modification of or amendment to this Agreement, nor any waiver of any rights under this agreement, will be effective unless in writing signed by the party to be charged.

Any subsequent change or changes in my duties, salary or compensation will not affect the validity or scope of this Agreement.

13. SEVERABILITY.

If one or more of the provisions in this Intellectual Property Assignment Agreement are deemed void by law, then the remaining provisions will continue in full force and effect.

14. SUCCESSORS & ASSIGNS.

This Agreement will be binding upon my heirs, executors, administrators and other legal representatives and will be for the benefit of the Company, its successors, and its assigns.

15. DISPUTES AND RESOLUTIONS.

Both parties agree that they will try to amicably settle any disputes amongst themselves, or with the help of a third party such as an agent. In case that they are unable to reach a settlement or do not wish to discuss the terms of the settlement with one another, they may approach a court of law situated in [Sender.Country] , [Sender.State] where applicable laws will come into motion.

AGREED AND ACCEPTED.

I ACKNOWLEDGE THAT I HAVE CAREFULLY READ THE FOREGOING INTELLECTUAL PROPERTY ASSIGNMENT AGREEMENT, I AM SATISFIED THAT I UNDERSTAND IT COMPLETELY, AND I AGREE TO BE BOUND BY ITS TERMS AND CONDITIONS.

​ [Sender.Company]

​ [Sender.FirstName] [Sender.LastName] ​

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Intellectual property assignment agreement template

Create and automate intellectual property assignment agreements more efficiently with this free template.

Securing intellectual property rights is crucial for innovators and businesses. Use this free intellectual property assignment agreement template to safeguard your innovations.

Intellectual property (IP) is a valuable asset for businesses, and ensuring its proper transfer and assignment is vital for both the assignor and the assignee.

So, what is an intellectual property assignment agreement? Why is it important, when should you use one, what should it encompass, and how can you manage them efficiently? Let's dive in.

What is an intellectual property assignment agreement?

An intellectual property assignment agreement is a legal document that facilitates the transfer of IP rights from one party (the assignor) to another (the assignee). This could relate to various forms of IP, including patents, trademarks, copyrights, and trade secrets. 

The agreement delineates the terms and conditions under which the IP rights are transferred, ensuring clarity and protection for both parties involved.

How does an intellectual property assignment agreement work?

Once both parties sign the intellectual property assignment agreement, it becomes legally binding. This means that the assignor relinquishes their rights to the specified IP, and the assignee becomes the new owner. 

The agreement should clearly define the IP being transferred, any compensation involved, and the responsibilities of both parties post-transfer.

When do you need an Intellectual Property Assignment Agreement?

Such agreements are essential when:

• A business acquires another company and its assets, including IP.
• An employee or contractor develops an invention or work while under employment and transfers the rights to the employer.
• A business wants to secure rights to a specific IP before commercializing or licensing it.

What should an intellectual property assignment agreement template include?

Identification of parties. Clearly state the assignor and assignee, including their legal names and primary business locations.

Description of the IP. Detail the intellectual property being transferred, ensuring clarity on its scope and nature.

Compensation. Specify any payment or consideration for the IP transfer.

Warranties and representations: The assignor should confirm they own the IP and have the right to transfer it.

Confidentiality. If the IP contains confidential information, this section ensures both parties maintain secrecy.

Liability limitations. Define any limitations on liabilities for both parties.

Termination. Conditions under which the agreement can be terminated should be outlined.

Dispute resolution. Detail the mechanisms for resolving potential disagreements, such as arbitration or litigation.

Governing law. Specify the jurisdiction governing the agreement.

Miscellaneous provisions. Any other terms and conditions pertinent to the agreement.

Traditional intellectual property assignment agreement management process

Managing intellectual property assignment agreements can be cumbersome, especially when relying on traditional methods. Typically, teams:

• Draft the contract in Microsoft Word or Google Docs
• Send the contract for internal review via communication platforms
• Share updated versions with counterparties via email
• Negotiate with redlines in Word
• Convert it to a PDF
• Move it into an eSigning tool
• Upload a copy of the executed contract to a shared drive

This process is repetitive and can be streamlined with modern contract management platforms like Juro. With Juro, you can automate the entire process, from drafting to signing, ensuring efficiency and accuracy.

Automating Your Intellectual Property Assignment Agreement

With platforms like Juro, you can:

• Use automated contract templates .
• Implement conditional logic for specific clauses.
• Integrate with other platforms for seamless data transfer.
• Use bulk actions for mass contract generation.
• Negotiate directly on the platform.
• Utilize built-in eSignature features.
• Store and manage contracts securely in a centralized repository.

Intellectual property is a valuable asset, and its proper assignment is crucial for businesses. By understanding the intricacies of intellectual property assignment agreements and leveraging modern tools, you can ensure a smooth and efficient transfer process.

If you're interested in streamlining your contract management process, book a personalized demo with us today.

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Proprietary Information and Inventions Agreement Template

A PIIA agreement is a specific type of IP assignment agreement often used between an employer and employee. This particular template is a raw output of Ontra's PIIA generator built on Gavel.

Or use a legal app to generate custom documents with your information

Proprietary Information and Inventions Agreement

This PIIA agreement generator generates an IP assignment agreement for the terms of an employee's employment with an employer.

Intellectual Property Assignment Agreement: Templates & More

IP assignment agreement in which the ownership rights of intangible creations of the mind (e.g. art, designs, software, trade secrets) are transferred.

Also known as: IP Assignment

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What is an Intellectual Property Assignment Agreement

Dorna Moini, JD

Founder, Gavel

Dorna Moini is the CEO and founder of Gavel, a no-code platform for building document automation and client-facing web applications for the law. Prior to starting Documate, Dorna was a litigator at Sidley Austin. There, in her pro bono practice, she worked with legal aid organizations to build a web application for domestic violence survivors to complete and file their paperwork, which led to the idea for Documate. Dorna is on the Legal Services Corporation Emerging Leaders Council and a member of LAFLA’s Advisory Board. She was named an ABA Legal Rebel and a Fastcase 50 honoree. She also teaches the Legal Innovations Lab at USC Law School.

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Intellectual property assignment agreement word document, intellectual property assignment agreement pdf, intellectual property assignment agreement to copy/paste.

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Employee proprietary information and inventions assignment agreements: what they do, and what could happen without them

The typical onboarding process for a new employee at nearly all companies in most industries includes a requirement for the employee to sign an agreement regarding confidentiality and ownership of inventions, copyrights and other intellectual property.  This article explains the purpose of such an agreement and consequences that result from a failure to have such agreements signed by each employee.

What is a PIIA?

The agreement goes by many names, but tech-savvy companies often refer to them as PIIAs (or ''Pee-as'' for short). PIIA is the acronym for the most common name for these agreements, ''proprietary information and invention assignment'' agreements.  The typical form of agreement addresses two main areas: confidentiality and ownership of intellectual property. 

The agreement requires that an employee maintain the employer's non-public and proprietary information confidential and contains language similar to what you would see in a non-disclosure agreement ( see more about non-disclosure agreements ). 

The agreement also requires that the employee agree that whatever the employee creates, discovers, develops or invents while employed with the company is owned by the company. Companies that are in the business of developing products or technology that are protectable by copyright (as is the case with most software companies) can rely on the work for hire doctrine under US copyright law, which automatically gives the employer ownership of copyrights in works of authorship ( eg , software, manuals and documentations) written or prepared by an employee within the scope of his/her employment. The work for hire doctrine, however, does not apply and ownership is not automatically vested in the employer in the case of other intellectual property rights, most notably in the case of patents (see our article providing an overview of  intellectual property rights and a more detailed discussion about  copyrights and  patents ). 

Therefore, the PIIA is the employee's agreement that everything created by the employee for the employer is owned by the employer, and if the employer needs the employee to do anything or sign any document to confirm that the employer owns all the rights in the intellectual property developments, the employee agrees in the PIIA to do so.

PIIAs will also often include non-solicitation clauses and, for those employees working in states where non-competition clauses are enforced, the agreement may also include a non-compete clause (see our article discussing  non-solicitation and non-competition clauses ).

Does the company really own everything the employee creates?

If an employee can show that he or she created intellectual property on their own time and without the use of any of the employer's facilities, equipment, supplies or trade secret information and if the intellectual property did not relate at the time of development to the employer's business or actual or anticipated research or development, then the employee would continue to own such intellectual property. 

In some states, such as California, Washington, Texas and Illinois, this exception is expressed in a statute that requires that the PIIA include a notice of the exception.  Such statutes favor the employer in that the burden of showing the exception applies is typically on the employee.

What happens if I don't have my employees sign PIIAs or if the PIIAs don't include all the bells and whistles?

Whenever a company goes through a financing, whether it is a seed round or an institutional VC round, or if the company is going to be acquired, the investors or acquirer will conduct due diligence. One of the issues that they will review is whether or not all the employees have signed PIIAs and whether or not those PIIAs require employees to assign to the company ownership of all intellectual property rights to developments created by the employee. Investors and acquirers want to make sure that the company owns its intellectual property, products and technology. 

Depending on where the company is in its lifecycle, the due diligence may focus on all employees, former and current, or it may just focus on the former and current employees that have been involved in research and development or engineering activities. (The failure of the company to obtain a PIIA from an employee strictly in an administrative capacity will generally not create a material issue). If due diligence identifies a problem with the PIIAs, or reveals that PIIAs were not signed, investors and acquirers may require that the company obtain signed PIIAs (or the equivalent) after the fact, which may necessitate the company having to pay the employees something in exchange for signing the agreement so that it is binding or, worse yet, give a former employee leverage to ask for something more. Giving someone leverage on the cusp of a financing or an acquisition may not end well for the company.

While PIIAs may seem like a routine document that is available from numerous online sources, it is essential that an employer have a form of PIIA that includes provisions that is enforceable and current and will withstand scrutiny from investor and acquirer's counsel. If you have questions about your form of PIIA, or if you want to make sure that you have forms of PIIA that will be enforceable for your employees wherever they may be located, within or outside the United States, please contact a member of our Technology, Data and Commercial practice .

Intellectual Property Assignment Agreement: A Comprehensive Guide for Your Business

LegalGPS : July 25, 2024 at 10:30 AM

Hello there, entrepreneur friend! Today let’s have that coffee chat about Intellectual Property Assignment Agreements. If you're thinking "what's that?" or "why do I need it?" then this is the perfect starting point for you. In today's competitive business world, protecting your intellectual property (IP) is more crucial than ever.

Intellectual Property Assignment Agreement Template

Legal GPS templates are drafted by top startup attorneys and fully customizable.

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!" .

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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]."

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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.

Get Legal GPS's Intellectual Property Assignment Agreement Template Now

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Intellectual Property Assignment Agreement

Nov 2, 2022

An intellectual property assignment agreement is an agreement to transfer intellectual property from one person or company to another.

What is an Intellectual Property Assignment Agreement?

An intellectual property assignment agreement is an agreement to transfer intellectual property from one person or company to another. The agreement may also be referred to as an intellectual property transfer agreement, an IP assignment agreement or an IP transfer agreement.

When should you use an Intellectual Property Assignment Agreement?

An intellectual property assignment agreement should be used whenever transferring the rights in intellectual property ( IP ). There are a number of situations where you may need to do this. The most common for SMEs is where an individual has done work for a company as a consultant without using a consultancy agreement with the result that the consultant and not the company, owns the IP in the work. It is also necessary to transfer IP where founders create IP before incorporating or being employed by a company and, as a result, title to the IP vests in the founder.  

Why is an Intellectual Property Assignment Agreement important and why should you use it?

Investors in early stage companies will often require the company and key employees to give warranties confirming that the company owns all material IP used by the company. Any IP not owned by the company will need to be transferred to the company before the investment is completed. Failing to transfer the IP can materially impact the valuation of the company or, in extreme cases, lead investors to pull out of the transaction.

It is necessary to use a written agreement for an assignment of certain types of IP (such as copyright) to be effective. Further, it is important to ensure that the agreement is an enforceable contract. For the contract to be enforceable there must be some form of consideration paid in exchange for the IP. The amount of consideration payable will depend on the situation in which the IP is being transferred. If a consultant or founder is transferring IP that should have been owned by the company, the consideration should be a nominal amount, e.g. £1, which is deemed to have been received by the assignor (note that some form of consideration is required for the agreement to be an enforceable contract). The IP can, however, be transferred for valuable consideration or as part of an asset sale.

An IP assignment will also include warranties to confirm that the assignor is the owner of the intellectual property being transferred and that the assignor has the right to transfer the intellectual property. Transferring intellectual property without these assurances means that your company will have limited or no recourse should it transpire that the assignor did not own or have the right to transfer the intellectual property.

What are the common pitfalls of an Intellectual Property Assignment Agreement?

Where possible, it is important to clearly describe the IP being transferred. IP by its nature is not physical so failing to accurately describe the IP can result in disputes about what has been transferred. 

Further, there are several different types of IP (copyright, patents, trade marks and designs). Certain IP rights can also be registered. Depending on what is being transferred it may be necessary to take additional steps to perfect the transfer (for example notifying the appropriate register of the transfer). The agreement should include a requirement that the assignor takes the necessary steps to perfect the transfer and specify which party is required to pay any associated costs (such as registration fees).

In addition where copyright is being transferred, the assignor should also ensure that the assignor waives their moral rights (such as the right to attribution) in respect of the copyrighted work.

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Intellectual Property Agreement (Free Sample)

Here is What's in the Agreement for Intellectual Property:

• An easy-to-customize agreement to protect your intellectual property
• Agreements for both employee and contractor business relationships
• Created (and approved) by legal experts

Intellectual Property Agreement

This Intellectual Property Assignment Agreement (the “Agreement”) is entered into ________________ (the “Effective Date”) by and between ____________________________ (the “Employee”) located at _____________________________ and _________________________(the “Employer”) located at ____________________________, individually referred to as “Party” and collectively as “the Parties.”

The Parties agree to the following: 

Intellectual Property. Employee agrees to assign to the Employer all present and future rights, title, and interest to all intellectual property (“Intellectual Property”) created or discovered during the course of Employee’s employment with the Employer.  Intellectual Property includes, but is not limited to, algorithms, code, concepts, developments, designs, discoveries, ideas, formulas, improvements, inventions, processes, software, trademarks, and trade secrets. Intellectual Property also includes the tangible embodiments (e.g. – drawings, notes) of any intangible items.

Prior Inventions. Intellectual Property that existed prior to the Employee’s employment, for which the Employee has a right, title, or interest (collectively the “Prior Inventions”) will remain the exclusive property of the Employee.  The Employee agrees that all Prior Inventions are included in this Section 2.  If no Prior Inventions are listed in this Section 2, the Employee represents that no Prior Inventions exist.

Prior Inventions

___________________________________

Patent and Copyright Registrations. The Employee agrees to cooperate with the Employer to do whatever is reasonably necessary to obtain the patents and copyrights required to secure the Employer’s ownership rights in the Intellectual Property.  The Employee will cooperate with the Employer during the course of the Employee’s employment with the Employer as well as after termination of this Agreement.

Term. This Agreement will commence upon the Effective Date as above-stated and will remain in effect until the Employee is no longer employed by the Employer.  

Following termination of this Agreement, the Employer will have exclusive ownership rights to all of the Employee's post-employment Intellectual Property that arises from or directly relates to the Employee's work for the Employer.

Return of Data and Documents. Upon termination of this Agreement, the Employee agrees to immediately return all tangible embodiments of the Intellectual Property, including but not limited to data, drawings, documents, and notes developed during the course of the Employee’s employment.  The Employee will not make copies or attempt to recreate the tangible embodiments.

Assignment. The Parties may not assign their rights and/or obligations under this Agreement.

Choice of Law. This Agreement will be interpreted based on the laws of the State of _____________________, regardless of any conflict of law issues that may arise.  The Parties agree that any dispute arising from this Agreement will be resolved at a court of competent jurisdiction located in the State of _______________________.

Complete Contract. This Agreement constitutes the Parties entire understanding of their rights and obligations. This Agreement supersedes any other written or verbal communications between the Parties. 

Severability.  In the event any provision of this Agreement is deemed invalid or unenforceable, in whole or in part, that part shall be severed from the remainder of the Agreement and all other provisions should continue in full force and effect as valid and enforceable. 

Successors and Assigns. This Agreement will be binding upon the Employee’s successors, heirs, and assigns for the benefit of the Employer and the Employer’s successors, heirs, and assigns.

Waiver.  Neither Party can waive any provision of this Agreement, or any rights or obligations under this Agreement, unless agreed to in writing.   If any provision, right, or obligation is waived, it is only waived to the extent agreed to in writing.

All notices pursuant to this Agreement must be sent by email with return receipt requested or certified or registered mail with return receipt requested.

All Notices shall be sent as follows:

______________________________

[ Remainder of this page intentionally left blank. Signature page follows. ]

The Parties agree to the terms and conditions set forth above as demonstrated by their signatures as follows:

Signed: _____________________________________

Name: _____________________________________

Date: _____________________________________

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Free Intellectual Property Agreement Sample

• • Prior employee inventions
• • Length of agreement
• • Patent and copyright registrations

What is an intellectual property contract?

An intellectual property agreement is a formal contract between employees and employers that outline the terms and conditions for how an organization’s intellectual property is protected when employees create inventions as a function of their job.

DISCLAIMER : We are not lawyers or a law firm and we do not provide legal, business or tax advice. We recommend you consult a lawyer or other appropriate professional before using any templates or agreements from this website.

Download our Intellectual Property (IP) Agreement

Why is an intellectual property agreement important, best practices to get the most out your intellectual property protection agreement, 1. help protect your employee's prior inventions, 2. get the timing right when presenting your ip agreement, 3. get employees to return materials and data, download our intellectual property agreement, faqs about intellectual property contracts, intellectual property agreement, intellectual property, prior inventions.

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IP Assignment Agreement: Definition & Sample

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ContractsCounsel has assisted 36 clients with ip assignment agreements and maintains a network of 64 intellectual property lawyers available daily. Customers rate lawyers for ip assignment agreement matters 5.0.

What is an IP Assignment Agreement?

An IP assignment agreement is an agreement that designates the ownership of intellectual property. Companies often use IP assignment agreements to secure their inventions and developments but also to transfer ownership of intellectual property as needed. These assignment agreements are used for transferring intangible property like a copyright, a trademark, or company trade secrets.

Sometimes referred to as an IP transfer agreement, the IP assignment agreement also ensures that when an employee helps develop an intangible creation on behalf of a company that the company can retain the rights to the creation.

Common Sections in IP Assignment Agreements

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

IP Assignment Agreement Sample

Reference : Security Exchange Commission - Edgar Database, EX-10.1 3 v476437_ex10-1.htm EXHIBIT 10.1 , Viewed October 13, 2021, View Source on SEC .

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

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Jason has been providing legal insight and business expertise since 2001. He is admitted to both the Virginia Bar and the Texas State Bar, and also proud of his membership to the Fellowship of Ministers and Churches. Having served many people, companies and organizations with legal and business needs, his peers and clients know him to be a high-performing and skilled attorney who genuinely cares about his clients. In addition to being a trusted legal advisor, he is a keen business advisor for executive leadership and senior leadership teams on corporate legal and regulatory matters. His personal mission is to take a genuine interest in his clients, and serve as a primary resource to them.

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.

Anand is an entrepreneur and attorney with a wide-ranging background. In his legal capacity, Anand has represented parties in (i) commercial finance, (ii) corporate, and (iii) real estate matters throughout the country, including New Jersey, Pennsylvania, Delaware, Arizona, and Georgia. He is well-versed in business formation and management, reviewing and negotiating contracts, advising clients on financing strategy, and various other arenas in which individuals and businesses commonly find themselves. As an entrepreneur, Anand is involved in the hospitality industry and commercial real estate. His approach to the legal practice is to treat clients fairly and provide the highest quality representation possible. Anand received his law degree from Rutgers University School of Law in 2013 and his Bachelor of Business Administration from Pace University, Lubin School of Business in 2007.

Oklahoma attorney focused on real estate transactions, quiet title lawsuits, estate planning, probates, business formations, and all contract matters.

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.

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David Alexander advises clients on complex real estate transactions, including the acquisition, disposition, construction, financing and leasing of shopping centers, office buildings and industrial buildings throughout the U.S. An experienced real estate attorney, David reviews, drafts and negotiates all manner of retail, office and industrial real estate agreements, including purchase and sale agreements, construction contracts, leases and financing documentation.

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IP Assignment Agreement

Can an employer enforce an IP Assignment Agreement if it was signed after an employee had already started working for the company?

I recently started working for a tech company and was asked to sign an IP Assignment Agreement, which states that any intellectual property I create during my employment belongs to the company. However, I had already been working on a personal project before joining the company, and now I'm concerned that they might try to claim ownership of it. I want to know if the agreement is enforceable, given that it was signed after I had already started working for them.

I hope that you have not yet signed this agreement, because it may indeed be enforceable. If it has not yet been signed, amend the agreement to exclude the personal project from the agreement before you sign it.

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Free Intellectual Property Agreement Template

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Table of contents

An intellectual property agreement (or IP assignment contract) allows you to license or assign the intellectual property rights (trademarks, patents, or copyrights) of something to another party.

This type of agreement ensures that both parties are clear on who owns what, for how long, and their rights as owner or licensee.

1. Why use an intellectual property agreement template?

Having a written contract in place will help make your business relationships smoother and more straightforward. Dispute resolution and termination clauses have ridden to the rescue for many freelancers and consultants over the years when relationships have broken down.

The same can be said of an IP agreement. In essence, it will help smooth any disagreements over who owns what at the end of a project, and should, in theory, safeguard against the need for costly litigation .

2. What’s the difference between licensing and assigning IP in the intellectual property agreement?

Licensing intellectual property refers to an agreement between the owner of the IP (the licensor) and another party (the licensee). This type of agreement sets out the specific terms around which the licensee can use the form of IP. This might be a logo, a photograph, a tagline, etc.

By licensing instead of assigning IP, ownership is not transferred.

Assigning IP, therefore, works a little differently. The clear difference between the two is that when assigning IP, ownership is transferred from the assignor to the assignee.

3. What’s included in an intellectual property agreement sample?

Your IP agreement should include the following:

• Identification of the parties involved
• An explanation of the IP being licensed or assigned
• Terms of the agreement
• The assigned rights
• The amount to be paid
• Liability and warranties
• Any excluded rights (optional)

Here are a few considerations when creating an IP agreement:

4. Understand who owns the IP in the first place in the intellectual property agreement template

Typically, the individual who created the IP is the owner. However, this isn’t always the case.

• When IP is created by an employee during the course of their job (and it’s understood to have been their job to do so), the IP is presumed to be owned by the employer ;
• And if the IP is already registered, the named person or entity on the register is the official owner of the IP. They are, therefore, the only person or entity with the right to transfer ownership or issue licenses.

Note: In some countries, the transfer of IP from employee to employer is not automatic.

5. Determine what’s being transferred in the intellectual property agreement template

Most IP can be transferred, including trademarks, copyright, patents, and registered and unregistered design rights. But whether you’re assigning ownership or simply licensing the right to use your IP, you must consider what else needs to be shared as part of the transfer.

Licensing a logo, for instance, may require sharing specific sizes and color-variations, but you would retain the master files. But if you were transferring ownership outright, you would need to assign everything related to the IP.

Furthermore, you may need to disclose confidential information when transferring ownership, but in the case of licensing, you may not. Information is not classified as property, but if the information is necessary to the successful implementation of the IP, it should be included in the agreement.

6. Determine how much you wish to transfer in the intellectual property agreement template

Even though IP is intangible, you can, in fact, specify precisely how much of it you wish to transfer.

Take, for example, a novel. You could assign the rights to the film version of your book, but retain the rights to the television and video game adaptations. As the creator and owner of the IP, it’s up to you to decide how your creation is utilized. Follow these tips when you create your intellectual property agreement and you’ll be armed with a contract that protects your rights and safeguards your IP.

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Template preview

Intellectual property agreement.

This Intellectual Property Agreement (the "Agreement") is between Client (the "Company") and Acme LLC , a company (hereafter referred as the "Contractor"), both individually referred to as a "Party", and collectively referred herein as "Parties". This Agreement shall be effective on the date of signing this Agreement (the "Effective Date").

WHEREAS, the Company provides certain services in [SERVICE INDUSTRY] ;

WHEREAS, the Company engaged Contractor to provide services for the Company as an independent contractor;

WHEREAS, the Parties desire to set forth the terms and conditions that will govern the intellectual property and copyright of the work created by the Contractor for the Company during the service relationship ("Service Relationship");

WHEREAS, the Parties hereby represent and warrant to have full legal capacity to enter into this Agreement and execute all obligations provided herein; and that they have complied with all applicable laws;

NOW, THEREFORE, In consideration of the mutual covenants and promises made by the Parties to this Agreement, the Contractor and the Company covenant and agree as follows:

1.1 The Parties agree that the purpose of this Agreement is to set forth the terms and conditions that will apply to the intellectual property and copyright of the work created or developed by the Contractor for the Company under the Service Relationship.

2. COMPANY OWNERSHIP

2.1 Each and every intellectual property right and copyright held by the Company in relation to its commercial name; trademark; trade name; trade dress; designs, logos; trade secrets; business secrets; products; services; marketing campaigns; marketing strategies and techniques; technical data; formulas; customers and suppliers listings; software and hardware; source codes; websites; domain names; contact information; documents (physical and electronic); e-mails; memorandum; notes; reports; products information; production processes; service information; computer and system technology; texts, images, photos and contents of any kind; designs, blueprints, projects, and any information related to customers; policies and price listings; connections; know-how; use license; Confidential Information (as defined in Section 6 below); and any other tangible and intangible asset, among others, that currently exist and/or that have existed in the past and/or that may exist in the future with respect to the Company, including any right related to and/or derived therefrom (hereinafter referred to as "Company Intellectual Property"), are of the exclusive property of, and belong solely to the Company. Likewise, the Contractor accepts that all moral and patrimonial rights to Company Intellectual Property belong solely and exclusively to the Company.

2.2 All intellectual property rights owned or controlled by the Company at the commencement of this Agreement, including any other ownership right, shall remain under the ownership or control of the Company throughout the term of the Service Relationship and this Agreement and thereafter.

2.3 The Contractor expressly undertakes not to copy, reproduce, publish, or disclose or use, for their own benefit or for the benefit of any third parties, in any way, whether directly or indirectly, the Company Intellectual Property and/or not to claim any right or interest of any kind on thereof.

3. CONTRACTOR OWNERSHIP

3.1 Each and every one of the copyright and intellectual property rights, corresponding to any technical and professional knowledge, as well as any work or deliverable created by the Contractor for its own use or for any third party, before, during or after the termination of this Agreement, including but not limited to any idea; text; image; photo; graphic; design; blueprint; material; information; document; report; know-how; marketing campaigns; marketing strategies and techniques; process; and advice; among others, including any right related to and/or derived therefrom (hereinafter referred to as "Contractor Intellectual Property"), are of the exclusive property of, and belong solely to the Contractor. Likewise, the Company accepts that all moral and patrimonial rights to Contractor Intellectual Property belong solely and exclusively to the Contractor.

3.2 Subject to Section 4 below, all intellectual property rights owned or controlled by the Contractor at the commencement of this Agreement, including any other ownership right, shall remain under the ownership or control of the Contractor throughout the term of the Service Relationship and this Agreement and thereafter.

3.3 Notwithstanding Section 4 below, the Company expressly undertakes not to copy, reproduce, publish, or disclose or use, for their own benefit or for the benefit of any third parties, in any way, whether directly or indirectly, the Contractor Intellectual Property and/or not to claim any right or interest of any kind on thereof.

4. INTELLECTUAL PROPERTY ASSIGNMENT

4.1 The Parties agree that any work and/or deliverable created or developed by the Contractor for the Company under the Service Relationship, including but not limited to any improvement, modifications, derived, or similar related thereto and/or the Company's business was created or developed as "work for hire" ("Deliverable(s)") and are exclusively property of the Company, and all rights, title and interest therein shall vest in the Company and shall be deemed to be part and made in the course of the Service Relationship. To the extent that title to any such deliverables may not, by operation of law, vest in the Company or such Deliverables may not be considered as part of the Services, all rights, title and interest therein are hereby irrevocably assigned to the Company by the Contractor.

4.2 The Contractor agrees and acknowledges that the decision whether or not to commercialize or market any Deliverable created by the Contractor under the Service Relationship is within the Company's sole discretion and for the Company's sole benefit and that no royalty will be due to the Contractor as a results of the Company's efforts to commercialize or market any such Deliverables.

4.3 The Contractor hereby grants to the Company a non exclusive, royalty-free, irrevocable, perpetual, worldwide license to make, have mad, exploit, market in any way, use, sell and modify any Intellectual Property owned by the Contractor o in which the Contractor has a interest, which is incorporated by Contractor into any Deliverable created or developed by Contractor under the Service Relationship.

4.4 Upon the request of the Company, or upon the expiration or termination of the Service Relationship and this Agreement, the Contractor will execute any and all documents requested by the Company to transfer to the Company all intellectual property rights of any Deliverable created or developed under this Agreement.

5. COPYRIGHTS REGISTRATIONS

5.1 The Contractor agrees to assist the Company, at the Company's expense, in every proper way to secure the Company's intellectual property rights and copyrights, in all Deliverables created or developed under the Service Relationship, including all patents and other intellectual property rights relating thereto in any and all countries, including the execution of all applications, specifications, oaths, assignments and all other instruments which the Company shall deem necessary in order to apply for and obtain such rights and in order to assign and convey to the Company, its successors and assigns the sole and exclusive rights, title and interest in and to such Deliverables, and any copyrights, patent, and other intellectual property rights relating thereto.

5.2 The Contractor further agrees that its obligations to execute or cause to be executed, when it is the Contractor ́s power to do so, any instrument or document shall continue after the termination of the Service Relationship and this Agreement. If the Company is unable because the Contractor's mental or physical incapacity or for any other reason to secure the Contractor's signature to apply for or to pursue any application for any country patents or copyright registrations covering Deliverables or original works of authorship assigned to the Company in accordance with this Agreement, then the Contractor hereby irrevocably designate and appoint the Company and its duly authorized officers and agents as the Contractor's agents and attorneys in fact, to act and in the Contractor behalf and stead to execute and file any such applications and to do all other lawfully permitted acts to further the prosecutions and issuance of patent or copyrights registrations thereon with the same legal force and effect as if executed by the Contractor.

6. CONFIDENTIALITY

6.1 The Contractor acknowledges that it has received and will continue to receive confidential information and trade secrets ("Confidential Information") from the Company in the course of the Service Relationship, and otherwise carrying out the actions provided in this Agreement. Confidential Information includes any material, data and/or information to which the Contractor has access during the performance of the Service Relationship, including but not limited to, any Company Intellectual Property right and any information regarding the Company's business and customers lists, business strategies, business processes, business plans, financial data and information, reports, statements, technology and software Information, as well as all information collected by the Contractor during the Service Relationship and all documents and files that contain Confidential Information, except for anything designated as not confidential.

6.2 The Contractor agrees that the Confidential Information must be used by it only and exclusively to comply with the services provided to the Company under the Service Relationship.

6.3 The particular terms and conditions of this Agreement are confidential and shall not be disclosed to any third party by the Contractor without the prior, written consent of the Company.

7. TERM AND TERMINATION

7.1 This Agreement shall become effective as of the Effective Date indicated at the beginning of this document and shall remain in force as long as the Service Relationship is in effect.

7.2 Upon any termination or expiration of this Agreement, all Sections and Clauses to this Agreement which by their nature should survive termination or expiration of this Agreement, including but not limited to this Clause 7.2 and Clauses 7.3 and 9.2 as well as Sections 2, 3, 4, 5, 6, 8, 10, 12, 17, 19, 22 and 23 of this document, which shall survive and continue in effect following termination or expiration of this Agreement at any time for any reason or no reason.

7.3 The expiration or termination of this Agreement shall not relieve the Parties of any obligations due at the time of such expiration or termination, nor shall such expiration or termination prejudice any claim of either Party accrued on account of any default or breach by the other.

8. RETURNING COMPANY DOCUMENTS AND INFORMATION

8.1 The Contractor agrees that at the time of termination of the Service Relationship and this Agreement, the Contractor will immediately return the Company or destroy (and will not keep in its possession, re-create, or deliver to anyone else) any and all information, records, data, notes, reports, proposals, lists, document, correspondence, specifications, drawings, blueprints, and materials belonging to the Company, including any Confidential Information and Company Intellectual Property, and any other documents, files or property, or reproductions of any Deliverable created or developed by the Contractor under the Service Relationship or otherwise belonging to the Company, its successors or assigns.

9. DELIVERABLES RECORDS

9.1 The Contractor undertakes to keep and maintain adequate and updated written records of all Deliverables created or developed by the Contractor during the term of the Service Relationship ("Records").

9.2 The Records shall be available and shall remain the sole property of the Company at all times during and after the termination of the Service Relationship and this Agreement.

10. EQUITABLE REMEDIES

10.1 The Contractor agrees that it would be impossible or inadequate to measure and calculate the Company's damages from any breach of this Agreement.

10.2 Accordingly, the Contractor agrees if it breaches any provision of this Agreement, the Company will have available, in addition to any other remedy available, the right to obtain an injunction from a court of competent jurisdiction protecting Company Intellectual Property, including the Confidential Information, and restraining any breach or threatened breach and to specific performance of any such provision of this Agreement.

10.3 The Contractor agrees that no bond or other security shall be required in obtaining such equitable relief and the Contractor hereby consent to issuance of such injunction and to the ordering of specific performance.

11. WARRANTIES AND REPRESENTATIONS

11.1 The Contractor warrants and represents to the Company that:

• The Contractor has the legal right and authority to enter into this Agreement and to perform the obligations under this Agreement;
• Neither the execution of this Agreement, nor the compliance with the obligations hereunder, will conflict with, or result in the breach of, or constitute a default under, any contract, agreement, and/or instrument to which the Contractor be a party; and
• The Contractor shall not violate and shall comply with all applicable laws and regulations.

12. INDEMNITY

12.1 The Contractor agrees to indemnify, defend, and protect the Company including its respective owners, shareholders, founders, officers, directors, managers, employees, successor and assigns ("Related Persons") from and against all lawsuits, claims, actions, damages, losses, expenses and costs of every kind (including paying all reasonable attorney fees and costs of litigation) relating to this Agreement due to (a) the Contractor's infringement of any applicable law or regulation, including any intellectual property and/or any other right of any third party; (b) arising out of the Contractor's breach of any provision of this Agreement; (c) arising from the negligence or willful misconduct from the Contractor; and/or (d) arising from any claims or lawsuits arising out of any local and/or international legislation.

13. INDEPENDENT CONTRACTORS

13.1 The relationship of the Parties agreed under the Service Relationship and this Agreement is that of independent contractors, and nothing contained in this Agreement shall be construed to (a) give either Party the power to direct and control the day-to-day activities of the other; (b)constitute any of the Party as an employee, agent and/or representative of the other Party; and/or (c) constitute the Parties as partners, shareholders, joint venturers, co-owners or otherwise as participants in a joint or common undertaking.

13.2 The Parties agree that nothing in this Agreement is intended to allow either Party to create or assume any obligation on behalf of the other Party for any purpose whatsoever, unless as expressed in this Agreement or or is expressly agreed upon in writing between the Parties.

14. NO ASSIGNMENT

14.1 The Contractor may not assign the rights and obligations under this Agreement to any third party, without the prior written consent of the Company.

15. ENTIRETY

15.1 This Agreement, including any other agreement or document entered into or signed between the Parties under the Service Relationship, constitutes a single, individual and entire agreement between the Parties and shall supersede and supersede all prior written or oral agreements.

16. AMENDMENTS

16.1 This Agreement may only be modified in writing and by mutual agreement between the Parties.

17. SEVERABILITY

17.1 If any of the provisions of this Agreement is considered invalid, illegal or impossible to execute, the other clauses shall not be affected by such invalidity, illegality or impossibility of execution, and therefore, shall remain valid and in force.

18. BINDING EFFECT

18.1 This Agreement is binding between the Parties and shall inure to the benefit of the Parties and their respective successors and assigns.

19. INTERPRETATION

19.1 The headings in this Agreement do not affect its interpretation. The use of any gender includes all genders. The singular includes the plural and vice-versa. This Agreement was originally prepared in the English language and such English version will be the governing version of this Agreement in case of any conflict, claim, dispute or discrepancy. In the event that an ambiguity or question of intent or interpretation arises, in any judicial proceeding or otherwise, the terms and conditions of this Agreement will be construed as having been drafted jointly by the Parties, and no presumption or burden of proof will arise favoring or disfavouring any Party by virtue of the authorship of any clause and/or provision of this Agreement.

20. NOTICES

20.1 Any communication or notification that is necessary between the Parties, due to this Agreement, must be sent to the following mailing and/or email addresses:

The Company 

[MAILING ADDRESS]

[EMAIL ADDRESS]

The Contractor  

20.2 The Parties by mutual consent may modify the notification addresses described above.

21. COUNTERPARTS

21.1 This Agreement may be executed in any number of counterparts and delivered electronically with the same effect as if the signature to each counterpart were original and on the same document, and all such counterparts will be deemed one and the same agreement; however, this Agreement shall be of no force or effect until executed by both Parties.

22. DISPUTE RESOLUTION

22.1 Any controversy or claim arising out of or relating to this Agreement ("Disputes") which cannot be resolved amicably between the Parties within thirty (30) continuous days from the date this is being caused, shall be submitted to the exclusive jurisdiction of Courts of the United States of America.

23. GOVERNING LAW AND JURISDICTION

23.1 This Agreement shall be governed by and construed in accordance with the laws in force in the United States of America, without regard to conflict of laws provisions or principles that may result in the application of the laws of any jurisdiction other than the United States of America, and regardless of the nationality of the Parties.

23.2 Both Parties hereby submit to the exclusive jurisdiction and venue of any Courts of the United States of America.

THE PARTIES HERETO AGREE TO THE FOREGOING AS EVIDENCED BY THEIR SIGNATURES BELOW.

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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.

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• Intellectual Property Law

What is an employee intellectual property agreement

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

Table of Contents

Introduction

Innovative minds often come up with innovative ideas and intellectual property is a creation of such ideas in the mind. As per law, the owner of such an idea is the person which brings it into existence unless there is a contract to the contrary. Many of us think that the employer owns the intellectual property that an employee creates in the course of his employment. However, an employer assuming that all rights of the employee over such intellectual property are extinguished might be careless in his approach. The employee still owns the claim rights of an author, moral rights and rights to object to alterations to work. So, it becomes crucial to include the conditions determining the ownership of intellectual property in the contracts of employment, agreements of independent contractors or in agreements of a designer or consultant.

Hence, it becomes critical to include terms determining the ownership of intellectual property in employment contracts, independent contractor agreements or agreements with a consultant or designer. In this article, we will understand the concept of an employee’s intellectual property and what are the important clauses that should be drafted in an employee’s intellectual property agreement. 

What is the meaning of “in the course of employment?”

If an employee brings any innovative ideas in the course of business or employment, the employer can claim the same if it was already mentioned in the contract and the employee also agreed to the same. But in case the intellectual property is created outside the course of the employment, an employer cannot claim the rights over it. For example, if an employee is hired in the accounting team of a designing company and if that employee designs a new pattern for a product of the company, he can be entitled to the intellectual property right in that design as he has done something outside the course of his employment, i.e. he has done something outside the terms of the employment of an accountant post. So it is necessary to have clarity on the duties of the employees to differentiate the scope of and what will constitute “in the course of employment” in the agreement agreed upon by both the parties. 

Now let’s see what all should be stated in the terms of an agreement between the employer and the employee. 

It should be always remembered that an agreement with an employee should not be an oral agreement, it should always be a written agreement. It will be always best if the employer gets the agreement signed by the employee before the date of commencement of the employment. Most of the companies have their own standard template of employment agreements for various kinds of jobs in the company. For example, the agreement for a designer will be different from that of a developer or a tester.

In a case where the employment agreement is not signed before the commencement of the employment due to any valid reasons, all the rights and liabilities will be affected from the date of commencement of the employment.

Terms that must be included employee intellectual property agreement

Now let’s look into the broad terms that must be included in any agreements that define intellectual property right:

• The intellectual property created by an employee or by an independent contractor or a consultant during the course of employment  will be owned by the employer;
• Terms to the effect that the employee/independent contractor/consultant will sign any documents reasonably required (such as a deed of assignment) to record the employer’s ownership of the intellectual property created during his employment. This obligation should continue during and after employment. An employer should ensure that any assignment or license deals with existing rights and future rights;
• The confidentiality clause requires the employee or the consultant or the independent contractor to keep any information of the employer to be confidential and neither disclose the same nor use it in any matter outside the course of the employment;
• A clause should also be drafted for the employee or the consultant about whether they should disclose the new inventions and should a record be maintained to prove the originality of the work and the date of its creation;
• A clause where all the scope and definition of confidential information must be mentioned in the agreement. It must include the intellectual property created by the employee in the course of their employment, all the business information and any other intellectual property of the employer itself. The business information includes business plans, marketing strategies and plans, the company’s financial information, customer lists and any other details of the company necessary to be stated in the agreement. 
• It must also include a term which states whether there is any waiver of moral rights by the employee during the employment over the intellectual property.
• It must be made sure that a term for restraining the former employee on the competition for a specified period of time and in a specific geographical area. It should be made sure that such restraints are reasonable.

Key points for drafting the agreement

For the best legal document it should be kept in mind to draft the agreement with the following key points:

• Any ideas, discoveries or inventions must be properly disclosed to the company by the employee if such ideas, discoveries or inventions are related to the business of the company and is during the course or period of employment.
• The company will be considered as the owner of such ideas, discoveries or inventions.
• If an employee is hired particularly for any invention, or for developing a work product, then the right on such invention or work products are the employers since it was created out of the employer’s expense and request.

Let’s look into an example: If an app developer is strictly appointed by an employer for the development of a particular app, then once the app is developed and the course of employment of the employee has come to an end, the intellectual property right belongs to the employer.

It should be also kept in mind by the employer to get the signature of the employee appointed in an intellectual property assignment agreement to avoid any future problem of the same. 

• In the case of a startup company, in order to protect the important assets and to inform the investors of a startup company, which has an intellectual property which will be used as the pillar of the company for its success, the start-up must draft an intellectual property clause in its agreement which will be signed by everyone involved in the start-up which will also include the promoters, developers and the employees. 

Now let’s see some of the provisions that must be included in the employee intellectual property agreement:

Provisions to be included in the employee intellectual property agreement

First of all, we should understand that there is no standard form for employee intellectual property agreement. So it must be carefully drafted and signed by the employee for its legal binding. No matter what the situation is, or where the agreement is made it should be made legally binding

Mostly the employee intellectual property agreement has at least the following three clauses in common:

1. Assignment clause

Generally speaking, an assignment clause is where the rights, duties, or contractual obligations are transferred from one party/person to another person/party. The assignment may be wholly or partly. The clause must also mention the conditions under which a party/person can assign these rights, duties or obligations. 

In an employee, intellectual property agreement the assignment provision, the employee assigns to the employer his/her inventions/discoveries/ideas and also transfer the true and total ownership of the intellectual property. In this provision, it can either narrow down or broaden any inventions/ discoveries/ ideas or nearly anything the employee creates.

Example of an assignment clause in employee intellectual property agreement:

“I agree that all inventions that are (a) developed using equipment, supplies, facilities, or trade secrets of the company; or (b) result from work performed by me for the company; or (c) related to the Company’s current or anticipated research and development will be the Company’s sole and exclusive property and are hereby assigned by me to the Company.”

2. Disclosure clause

A disclosure clause in an employee intellectual property agreement is drafted in such a way that the employee informs the employer of the intellectual property that was developed as per the assignment clause. It should be noted that everything must be clearly and properly disclosed in this clause.

Example of a disclosure clause in employee intellectual property agreement:

“While I am employed by the Company, I will promptly inform the Company of the full details of all inventions, discoveries, improvements, and innovations, whether or not patentable, copyrightable, or otherwise protectable, that I conceive, complete, or reduce to practice (whether jointly or with others) and which: (a) relate to the Company’s present or prospective business, or actual or demonstrably anticipated research and development or (b) result from any work I do use any equipment, facilities, materials, trade secrets, or personnel of the Company or (c) result from or are suggested by any work that I may do for the Company.”

3. Power of attorney clause

Finally, there’s a clause where the employee appointed in the company appoints the company as an employee’s power of attorney to execute documents or take actions on behalf of them. The benefit of this clause is that the company will then have the power to sign documents or execute any other agreements on behalf of the employee to assign the intellectual property right to the business.

Usually, every company have this clause as a fairly standard one. The power of attorney provision guarantees the employer can register and administer the ownership rights without the employee, regardless of whether the employee is willing and able to assist.

Example of the power of attorney clause in employee intellectual property agreement:

“If the Company is unable to secure my signature on any document necessary to obtain or maintain any patent, copyright, trademark, or other proprietary rights, whether due to my mental or physical capacity or any other cause, I hereby irrevocably designate and appoint the Company and its duly authorized offers and agents as my agents and attorneys-in-fact to execute and file such documents and do all other lawfully permitted acts to further the prosecution, issuance, and enforcement of patents, copyrights, and other proprietary rights with the same force and effect as if executed by me.”

Sample of an employee intellectual property agreement

Employee confidentiality and intellectual property assignment agreement

This EMPLOYEE CONFIDENTIALITY AND INTELLECTUAL PROPERTY ASSIGNMENT AGREEMENT (the “Agreement”) is made and entered into by and between [Company name] and [NAME] (“Employee”), as of [DATE] (the “Effective Date”). 

Each of Company and Employee hereinafter may be referred to individually as a “Party” or, collectively, as the “Parties.” 

In consideration of Employee’s employment with Company, the compensation Employee will earn in connection with such employment, Company providing Employee with access to Confidential Information (as defined below), and other good and valuable consideration, the sufficiency and receipt of which Employee acknowledges, Employee agrees as follows:

• Confidential Information:

i. Confidential information and trade secrets defined . Employee hereby acknowledges and understands the term “Confidential Information” means any data, information, or material of Company or its owners or its affiliates relating directly or indirectly to Company or its owners or Affiliates: clients and customers or potential clients and customers (collectively “Customer(s)”); competitors; vendors; advertisers; employees; contractors; suppliers; or business partners, that is discovered or developed by, or disclosed to, Employee through Employee’s relationship with Company, that is not generally ascertainable from public information, whether it is expressly identified as “confidential” or “trade secret,” that includes, but is not limited to: financial information; invoices; business plans; business and contract applications; contracts; forms; research; price lists; marketing materials; advertising materials and developments; sales materials and reports; copyrighted materials; Trade Secrets; the particular needs and requirements of Customers; identities of potential Customers; and all accompanying Customer data. Employee hereby acknowledges and understands the term “Trade Secret(s)” includes, but is not limited to, a confidential, proprietary, and/or sensitive: formula; software; methodology; model; architecture; pattern; compilation; program; device; method; technique; or process, that is discovered, developed in whole or part by Employee, or disclosed to Employee, through Employee’s relationship with Company, including any information, data, or material concerning the business of the Company, and all other information related to Company and its owner and Affiliates businesses, that is not generally known and readily ascertainable by proper means by any other person and/or Employee. This includes, but is not limited to, all inventions or discoveries made by Employee and/or Company (or its owners or Affiliates) resulting in whole or part from Employee’s relationship with Company. The term “Trade Secret(s)” also includes, but is not limited to, Customer lists, invoices and reports containing specifically developed information, such as the name, address, phone number, buying history and other traits of Customers, along with any other information that Company derives a competitive advantage from and that Company makes reasonable efforts to maintain a secret. For purposes of this Agreement, “Affiliates” means an individual, a partnership, a corporation, a limited liability company, an association, a joint-stock company, a trust, a joint venture, or an unincorporated organization, that directly, or indirectly through one or more intermediaries, controls, or is controlled by, or is under common control with, Company.

ii. Use and restriction . Employee acknowledges that Employee will have access to and be provided with Confidential Information in connection with performing services for Company. Employee expressly recognizes that the efficacy and profitability of Company and its owners and Affiliates is dependent in part upon Employee’s protection of the Confidential Information. Employees may use the Confidential Information solely in connection with performing services for Company and its owners and Affiliates. To ensure the continued confidentiality of the Confidential Information, the Employee agrees to hold the Confidential Information in strict confidence. Employee shall not, either during Employee’s relationship with Company or for such period as such information remains Confidential Information after termination, disclose or use for Employee’s own benefit or for the benefit of any other individual or third party, directly or indirectly, any of the Confidential Information, except as such disclosure or use is expressly authorized by Company in writing. Employee hereby agrees to adhere to the method and form of protection of Confidential Information required by Company, subject to change at Company’s sole discretion. Employee shall not communicate any Confidential Information, even in furtherance of Company’s business, to any individual or third party not privy to the Confidential Information, without express consent by Company and the individual or third party’s agreement to be bound by confidentiality terms that adequately protect Company’s Confidential Information.

iii. Exceptions . The confidentiality and restriction on the use of Confidential Information under this Agreement shall not apply to Confidential Information to the extent that such Confidential Information: is now, or hereafter becomes, through no breach of this Agreement by Employee, generally known or available to the public; was known to Employee without an obligation to hold it in confidence prior to the time such Confidential Information was disclosed to Employee by Company; is disclosed or used, as applicable, with the prior written consent of Company and in accordance with any limitations or conditions on such disclosure or use that may be imposed in such written consent; or was or is independently developed by Employee without any use of or reference to the Confidential Information. In addition, notwithstanding any other language in this Agreement to the contrary, Employee understands that Employee may not be held criminally or civilly liable under any federal or state trade secret law for the disclosure of a trade secret that is made (a) in confidence to a federal, state or local government official, either directly or indirectly, or to an attorney if such disclosure is made solely for the purpose of reporting or investigating a suspected violation of law or for pursuing an anti-retaliation lawsuit; or (b) in a complaint or other document filed in a lawsuit or other proceeding, if such filing is made under seal and Employee does not disclose the trade secret except pursuant to a court order.

iv. Required disclosure . The confidentiality obligations under this Agreement shall not apply to Confidential Information to the extent that such Confidential Information is required to be disclosed pursuant to the order or requirement of a court, administrative agency, or other authority, or otherwise by operation of applicable law. In the event of such order or requirement, Employee, if and to the extent permitted by law, shall give Company written notice thereof and of the Confidential Information to be disclosed as soon as practicable prior to the disclosure of such Confidential Information and shall provide such reasonable assistance as Company may reasonably request, at Company’s sole expense, in seeking a protective order or other appropriate relief in order to protect the confidentiality of the Confidential Information.

v. Other Nondisclosure Agreements . In the event that Company is subject to the terms of any confidentiality or nondisclosure agreement relating to some or all of the Confidential Information that imposes greater restrictions on the disclosure and/or use of such Confidential Information, then Employee shall comply with such greater restrictions to the extent that Employee is made aware of them in advance and in writing.

vi. Property of Company . Employee specifically acknowledges and understands that all Confidential Information and all of Company’s and its owners and its Affiliates strategies and files, including, but not limited to, computer data, reports, materials, records, documents, notes, memoranda, and other items, and any originals or copies thereof, related to the business of Company or its owners or its Affiliates, which Employee either is provided, prepares, uses, or simply acquires during the term of this Agreement, are and shall remain the sole and exclusive property of Company and, to the extent applicable, shall not be removed from Company’s premises without the prior consent of Company.

vii. Return or Destroy Confidential Information. Employee agrees, immediately upon the termination of the relationship between Employee and Company for any reason or upon earlier request by Company to make a diligent search for any and all documents, computer discs, electronic files, software, tapes, computer printouts, or any other material constituting Confidential Information described in this Section 1, and shall: cease using the Confidential Information; promptly return to Company or destroy all Confidential Information and any copies thereof; certify in writing (if requested in writing by the Company) that Employee has complied with the obligations of this Subsection vii.

viii. Return of Company Property . Employee agrees, immediately upon the termination of the relationship between Employee and Company for any reason or upon earlier request by Company to promptly deliver to Company all Company property not covered by Subsection vii.

2. Intellectual Property

i. Prior Inventions . Any intellectual property, including, but not limited to, any ideas, inventions, patents, trademarks, service marks, copyrights, creations, know-how, work product, and other developments or improvements, if any, patented or unpatented, that Employee, alone or with others, conceived, created, invented, developed, reduced to practice, or caused to be conceived and or caused to be reduced to practice prior to the earlier of (a) commencement of Employee’s employment with Company or (b) when Employee first provided services to Company, is listed on  Schedule I  attached hereto (“Prior Inventions”).

ii. Pre-Existing Work . If, in the course of Employee’s relationship with Company, Employee uses, relies upon, provides, or incorporates any Prior Invention or any other intellectual property Employee owns, or in which Employee has an interest, into any idea, invention, patent, trademark, service mark, copyright, creation, know-how, work product, and other development or improvement conceived, created, invented, written, developed, furnished, produced, or disclosed in whole or in part, alone or with others, whether or not during working hours, by Employee during the term of Employee’s employment with Company, Employee hereby grants Company, under all of Employee’s intellectual property and proprietary rights, the following worldwide non-exclusive, perpetual, irrevocable, royalty free, fully paid up rights: (a) to make, use, copy, modify, create derivative works of such intellectual property; (b) to publicly perform or display, import, broadcast, transmit, distribute, license, offer to sell, and sell, rent, lease or lend copies of the intellectual property, and derivative works of the intellectual property; and (c) to sublicense the rights in this Subsection 2(iii) to third parties.

iii. Work made for hire. Any work of Employee for which copyright could be claimed developed in the course of Employee’s employment with Company will be deemed “work made for hire” under federal copyright law and all ownership rights to such work belongs exclusively to Company. To the extent any invention does not qualify as a work for hire under applicable law, and to the extent, any invention is subject to copyright, patent, trade secret, or other proprietary right protection, Employee hereby assigns, and agrees to assign, all rights therein to Company.

iv. Required undertakings . Employee agrees, both while an employee of Company and thereafter, to assist Company and its owners and Affiliates, at Company’s sole expense, in any and all attempts to obtain patents, copyrights, and/or trademarks or other intellectual property protection on any work Employee participated in developing and agrees to execute all documents necessary to obtain such rights in the name of or to transfer such rights to Company. If, because of Employee’s mental or physical incapacity or for any other reason whatsoever, after the Company’s reasonable effort to secure Employee’s signature, Company is unable to secure Employee’s signature to apply for or pursue any patents, copyrights, or other protection for any invention assigned to Company under this Agreement or otherwise, Employee irrevocably designates and appoints Company and its duly authorized officers as Employee’s agent and attorney-in-fact to act for Employee and on Employee’s behalf and stead to file any applications and to do all other lawfully permitted acts to further the prosecution and issuance of any patents, copyrights, or other protections with the same legal force and effect as if executed by Employee.

v. Limited Exclusion . This Section 2 does not apply to any inventions or intellectual property for which no equipment, supplies, facility or Confidential Information of Company was used, and which was developed entirely on Employee’s own time, and (a) which does not relate (i) directly or indirectly to the business of Company or (ii) to Company’s actual or demonstrably anticipated research or development, or (b) which does not result from any work performed by Employee for Company.

3. Non-disparagement

Subject to Section 5, Employee agrees that during and after Employee’s period of employment with Company Employee will not, publicly or privately, disparage or defame Company or its Affiliates, or any of Company’s or its Affiliates’ employees, officers, governors, members or agents.

4.  Injunctive Relief

In the event of a breach or threatened breach of any covenant in Sections 1, 2, or 3, Employee agrees that Company will be irreparably harmed, that money damages alone cannot adequately compensate Company, and that Company shall be entitled to temporary and injunctive relief as well as all applicable remedies at law or in equity available to Company against Employee including if the Company is the prevailing party in an action to enforce the terms of this Agreement, reasonable attorneys’ fees and costs incurred in bringing any action against Employee or otherwise enforcing the terms of this Agreement. Employee further agrees that in any such action, Company shall be entitled to relief without posting any bond or security.

  5.  No Unlawful Restriction  

Employee understands and agrees that nothing in this Agreement or otherwise is intended to or will prevent or interfere with Employee’s ability or right to (a) provide truthful testimony if under subpoena to do so, (b) file any charge with or participate in any investigation or proceeding before the U.S. Equal Employment Opportunity Commission or any other federal, state or local governmental agency, (c) engage in any conduct protected under the National Labor Relations Act, or (d) respond to a subpoena, court order or as otherwise provided by law.

  6.  Miscellaneous

i. At-will employment . Employee’s employment with Company is “at will,” which means it may be terminated at any time and for any or no reason, at the option of either Employee or Company.

ii. Assignment . All of the terms and provisions of this Agreement shall be binding upon and inure to the benefit of and be enforceable by the respective heirs, executors, administrators, legal representatives, successors and assigns of the Parties, except that the duties and responsibilities of Employee under this Agreement are of a personal nature and shall not be assignable or delegable in whole or in part by Employee.

iii. Severability . If any provision of this Agreement or application thereof to anyone or under any circumstances is adjudicated to be invalid or unenforceable in any jurisdiction, such invalidity or unenforceability shall not affect any other provision or application of this Agreement which can be given effect without the invalid or unenforceable provision or application and shall not invalidate or render unenforceable such provision or application in any other jurisdiction. If any provision is held void, invalid or unenforceable with respect to particular circumstances, it shall nevertheless remain in full force and effect in all other circumstances.

iv. Entire agreement . This Agreement together with the Employment Agreement effective as of [DATE] sets forth the entire agreement of the Parties and supersedes any and all prior agreements and understandings concerning Employee’s employment by Company. This Agreement may be changed only by a written document signed by Employee and an authorized representative of Company.

v. Governing law . This Agreement shall be governed by, and construed and enforced in accordance with, the substantive and procedural laws of the State of Minnesota without regard to rules governing conflicts of law.

vi. Jurisdiction . Employee irrevocably and unconditionally (a) agrees that any legal proceeding arising out of this Agreement shall be brought in a court of general jurisdiction in the State of [JURISDICTION], (b) consents to the non-exclusive jurisdiction of such court in any such proceeding, and (c) waives any objection to the laying of the venue of any such proceeding in any such court. The employee also irrevocably and unconditionally consents to the service of any process, pleadings, notices or other papers.

vii. Attorneys’ Fees . In the event of any litigation or other proceeding concerning any controversy, claim or dispute between the parties hereto, arising out of or relating to this Agreement, the breach thereof or the interpretation hereof, the prevailing party will be entitled to recover from the other party reasonable expenses, attorneys’ fees, and costs incurred therein or in the enforcement or collection of any judgment or award rendered therein. The “prevailing party” means the party determined by the court to have most nearly prevailed, even if such party did not prevail in all matters, not necessarily the party in whose favour a judgment is rendered. Further, in the event of any breach by Employee under this Agreement, Employee shall pay all the expenses and reasonable attorneys’ fees incurred by Company in connection with such breach if the Company is the prevailing party.

viii. Counterparts . This Agreement may be executed in any number of counterparts (including facsimile counterparts or counterparts delivered by electronic transmission (e.g., PDF attachment)), each of which shall be an original, but all of which together shall constitute one instrument.

IN WITNESS WHEREOF, the Parties have executed this Agreement as of the Effective Date first above written.

Employee Name

Company Name

So, now we understand the importance of an employee intellectual property agreement and how it can affect the company if such an agreement is not drafted. This agreement acts as a layer of protection to the company especially a new company in avoiding any future problems. Much care must be given to the intellectual property of an employee. It can either help in the growth or destruction of the company.

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Employee-Created Intellectual Property: Protecting Employer Ownership

Contributor.

• HR is essential in ensuring employer ownership of intellectual property through carefully crafted employee agreements.
• Strong confidentiality agreements and regular training are key to protecting trade secrets and sensitive information.
• Effective IP management involves not just securing new hires but also carefully managing departing employees.

The rules governing the ownership of employee-created intellectual property are simple once you know them. A company's human resources (HR) team is often in the best position to make sure these rules are followed so that the company owns all of the intellectual property it pays its employees to create.

Generally, employees own the inventions they make while employed, except where the employee was specifically hired or is later assigned the duty of making the particular invention, or where the employee has expressly agreed (preferably in writing) to assign the invention to the employer.

The same rules apply to employee inventions and developments that the employer decides to treat as trade secrets, although the employer should have a confidentiality agreement in place with the employee.

Copyrightable works of authorship made by employees in the scope of their employment belong to the employer – and, in fact, the employer is considered the author of those works. However, employee works made outside the scope of their employment, on their own initiative and on their own time, belong to the employee, so the employer should address this possibility in a written agreement with the employee.

Because trademark rights are established by use, trademarks created by an employee belong to the employer that uses them.

Drafting Employee Agreements

An employee agreement needs to address ownership of innovations. Ideally, it will:

• Require prompt disclosure of innovations.
• Require assignment of innovations to the employer.
• Comply with applicable employee-inventor laws. 1
• Require the employee to execute additional documents.
• Provide a solution if the employee is unwilling or unable to sign additional documents.
• Authorize the company to file applications on the employee's invention.
• Prohibit the employee from challenging patents issued on the employee's invention.

An employee also needs to protect the confidentiality of the employer's information. This is important not only to prevent employee disclosures but also to demonstrate that the employer has taken reasonable steps under its confidential information – a critical element of a trade secret misappropriation claim. Thus, the agreement ideally will:

• Include a confidentiality agreement identifying the information covered.
• Be consistent with the Defend Trade Secrets Act (including the employee whistleblower notification).
• Require return of the employer's property and information.

Generally, the agreement should protect the employer and facilitate enforcement of the agreement. The agreement should:

• Not guarantee employment for a specific term.
• Restrict solicitation of other employees.
• Require the employee to disclose subsequent employers.
• Restrict use of the employer's computers, computer systems and networks, and data.
• Authorize monitoring of the employee (as permitted by state law).
• Restrict use of the company email.
• Restrict references to the company's name and products on social media without permission.
• Contain a choice-of-law clause selecting the law that governs the agreement.
• Contain a choice-of-venue clause selecting the place where any related litigation will occur.
• Address prior inventions by the employee.
• Address agreements the employee may have made with previous employers.
• Address the ability to get a court order to enforce the agreement.
• Include an integration clause that prevents the employee from contradicting the terms or adding additional terms from prior agreements.

Special Attention to Confidential Information

An important part of every trade secret case is demonstrating to the court that the owner has taken reasonable steps under the circumstances to protect the confidentiality of the trade secret. Basic security measures, employee education and, of course, employee confidentiality agreements are crucial to proving the existence of a trade secret, particularly since most trade secret disputes involve former employees.

Periodic reminders in the form of posters, written warnings and training sessions can help ensure that employees appreciate the protected status of the information to which they have access.

An exit interview gives an employer one last chance to remind a departing employee of the continuing obligation to protect the employer's confidential information.

Addressing Confidentiality with a Remote Workforce

A remote workforce presents many challenges to employers, not the least of which is the protection of the employer's confidential information. Remotely working employees may not appreciate the vulnerability of confidential information they handle. Improperly disposing of documents, leaving computers and cell phones unattended, and taking telephone calls in front of others all put confidential information in jeopardy.

Employers should implement policies that:

• Require employees to secure documents containing confidential information and properly dispose of them when they are no longer needed.
• Restrict employees from putting employer confidential information on their personal devices.
• Require employees to ensure that their telephone communications (including Teams and Zoom meetings) are secure.

In addition, employers should password-protect key documents and monitor remote workers' document downloads.

Preparing for Transactions

An employee agreement is critical to ensuring that an employer owns the intellectual property created by the workforce it employs, and to protecting the employer's confidential information, including that of the employer's suppliers and customers. Human resources staff should maintain signed copies of these critical agreements in a secure location, and should periodically review them for changes in circumstance, including the employee's status and changes in the law.

Several years ago, the Defend Trade Secrets Act extended federal protection to trade secrets but required specific language in employee agreements that protect whistleblowers who disclose secrets while reporting allegations to authorities. 2 An ever-increasing number of states also are enacting employee-invention laws that should be accounted for.

Finally, the Federal Trade Commission and many states are imposing limitations on non-compete agreements, which should also be taken into account.

The employer should organize employee agreements, invention assignments and other relevant documents to be ready for due diligence investigations relating to financing or transactions. It is much easier to correct defects while the parties are still employed than after they have departed.

Dealing with a Fluid Workforce

A fluid workforce is a business reality that must be addressed. A business must be sure that new employees do not have obligations to previous employers or other parties that would bar or interfere with their new employee's work.

The business must also make sure that new employees are instructed not to use any of their previous employers' confidential information. Whenever a business considers hiring a competitor's employee, it should conduct a thorough risk-benefit analysis to reduce the likelihood of complications with the former employer.

When a current employee departs, the employer should:

• Recover all company equipment, documents and confidential information.
• Hold an exit interview to ensure that all information and equipment have been recovered and remind the departing employee about their continuing obligations to the business.
• Contact the new employer solely to make them aware of the departing employee's continuing obligations (although be aware that this can result in a tortious interference claim that the employer improperly interfered with its ex-employee's new employment).

It is very important that management take the high road with conduct beyond reproach. This can be difficult because a departing employee's manager may feel betrayed and be tempted to act vindictively. However, even entirely legal actions that appear to be harsh can make the employer appear to be the wrongdoer. Court cases over employer-employee relationships are very much about who appears to be the "good guy," and the best thing the employer can do is act reasonably and avoid any action that would appear underhanded to a judge or jury, even if the employer is within its rights to take such action – just because you can doesn't always mean that you should.

The HR department's responsibility for the protection of its company's intellectual property starts with a good employee agreement that ensures that the employer owns the intellectual property that it pays its employees to create. Careful organization of agreements and assignments keeps the business ready to enforce its rights or use those rights in business transactions. A set of intellectual property policies and regular employee training ensure that employees remain on mission. Finally, due diligence with new hires and an established exit interview process protects the business as employees come and go.

1. California, Delaware, Illinois, Kansas, Minnesota, Nevada. North Carolina, Utah, and Washington have such statutes, and employers operating in these states or having employees in these states should take those statutes into account.

2. "Pursuant to 18 USC § 1833(b), an individual may not be held criminally or civilly liable under any federal or state trade secret law for disclosure of a trade secret: (i) made in confidence to a government official, either directly or indirectly, or to an attorney, solely for the purpose of reporting or investigating a suspected violation of law; and/or (ii) in a complaint or other document filed in a lawsuit or other proceeding, if such filing is made under seal. Additionally, an individual suing an employer for retaliation based on the reporting of a suspected violation of law may disclose a trade secret to his or her attorney and use the trade secret information in the court proceeding, so long as any document containing the trade secret is filed under seal and the individual does not disclose the trade secret except pursuant to court order."

Originally Published by HR.com

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

Intellectual Property

United states.

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The University of Chicago The Law School

Kirkland & ellis corporate lab clinic—significant achievements for 2023-24.

Founded in 2009, the Kirkland & Ellis Corporate Lab (the “Lab”) provides students with “real-world” experience and context to prepare them to become well-rounded attorneys with sound knowledge and judgment.

Lab students undertake a wide variety of assignments from the legal and business teams of significant publicly traded and privately held corporations, many of which are household names. Through this work and through classroom instruction, students in the Lab acquire the necessary legal and interpersonal skills and knowledge to excel in their future legal practice.

During the 2023-2024 academic year, Lab students successfully completed in excess of 100 projects for more than thirty largely publicly traded companies across a wide range of legal disciplines—e.g., contract drafting and corporate transactions, labor and employment, intellectual property and copyright, artificial intelligence, litigation risk assessment, and legal research. Specific examples include the following:

Contract Drafting and Corporate Transactions

• Drafting of template agreements on behalf of a global consulting firm;
• Revision of standard license agreements to address AI concerns for multinational software development company;
• Preparation of a cease-and-desist letter for a sports agency;
• Preparation of risk factor section of 10-K for a global specialty retailer’s 10-K;
• Detailed analysis of master terms and conditions for a national retailer, and resulting revision of same;
• Preparation of data and retention policy for an investment advisory firm;
• Preparation of code of conduct and code of ethics for financial services firm re compliance with recent Canadian labor legislation;
• Presentation to leadership team of global consulting firm re the European Union’s Whistleblower Directive;
• Board presentation to a multinational computer and information technology company addressing the European Union’s Digital Operational Resilience Act;
• Presentation to the Board of a national logistics company addressing director duties; and
• Presentation to an international specialty retailer addressing the legal consequences of implementing session replay technology and detailing modifications to privacy policy and popup banners to ensure compliance.

Labor and Employment

• Preparation of employment agreements and stock option and stock grant terms for multiple Booth New Venture clients;
• Revision of employee manual for global telecom company; and
• Presentation to the legal department of a national logistics company detailing OSHA violations and factors informing calculation of fines.

Intellectual Property and Copyright

• Memorandum assessing the current and potential future states of IP protection afforded to AI-generated work product;
• Guidance memoranda to several startup companies on the difference between copyrights, trademarks and trade secrets, and which categories of protectability their IP portfolios fall under; and
• FAQ and quick reference guide on the NCAA’s name, image and likeness rules for a sports agency to distribute to its clients.

Litigation Risk Assessment

• Review of commercial contracts and related communications for multiple publicly traded companies to address likely litigation success.

Artificial Intelligence

• Preparation of draft generative AI legal terms for subsidiary of a global consulting firm; and
• Presentation to the legal department of a global telecom company re ethical issues in popular, open-source datasets used for training AI models.

Legal Research

• Research memorandum for a multinational computer and information technology company exploring copyright of algorithm terms;
• Research memorandum for knowledge management team of global law firm re “assignment by operation of law” provision in reverse triangular mergers across multiple states;
• Research memorandum for a global consulting firm addressing the enforceability of contingent fee agreements under laws of various states;
• Research memorandum for a multinational food company re compliance with food and drug laws in the United States and the European Union;
• Memorandum to a multinational IT services provider discussing key contract terms related to generative AI;
• Memorandum to a multinational financial services provider researching data and document retention, which resulted in a drafted outline of corporate policy;
• Research memorandum to global telecom company re SEC swap rules Memorandum to a global leader in business and financial information comparing SEC swap rules;
• Research memorandum for a national sporting goods retailer regarding compliance with ESG regulations;
• Research memorandum for a global footwear and apparel retailer re compliance with the Central America-Dominican Republic Free Trade Agreement;
• Research memorandum for medical device company re compliance with advertising regulations in the United States, United Kingdom, and Spain;
• Memoranda to multiple clients discussing data privacy laws in the European Union, Asia-Pacific, and Latin America;
• Memorandum to a multinational technology corporation addressing current and proposed legislation in the United States and multiple foreign jurisdictions re launch and disposal of satellites;
• Research memorandum for multinational healthcare and consumer goods manufacturer assessing the risk of omni-channel distribution of professional products that reach consumers;
• Research memorandum for a global professional services company exploring the implications of the Regional Internet Registries’ promulgated guidelines on IP addresses; and
• Research memorandum for an energy infrastructure startup exploring the regulatory landscape of Texas’s energy regulation.

Included in the Lab’s client roster are the following:

• Academy Sports + Outdoors
• A.T. Kearney
• Base Power Company
• Jones Lang LaSalle
• Kirkland & Ellis
• Koch Industries
• Kraft Heinz
• The Motley Fool
• NSi Insurance Group
• Owens Corning
• Schneider National
• Ulta Beauty
• Unison Risk Advisors
• Vayner Sports
• Victoria’s Secret
• WEC Energy Group

The Lab also worked with more than twenty entrepreneurs on an individual basis and through an ongoing collaboration with the Booth School’s New Venture Challenge and Social New Venture Challenge. Specific assignments included the following:

• Instruction to Booth students on options for entity formation, stock grants and options, and required organizational documents; and
• Preparation of employment agreements, non-disclosure agreements, founders’ agreements, and other documents for launching a startup business.

Beyond the essential clinic training, the Lab hosts an ongoing speaker series throughout the year that brings to campus experienced practitioners, business leaders, and other esteemed guests to discuss topical business and legal issues, substantive areas of law, and other topics of interest to the speakers and students. Recent speakers have included senior executives from Amazon, Coinbase, Google, IBM, the Illinois Gaming Board, Meijer Microsoft, Victoria’s Secret, WTW and partners from Kirkland & Ellis, Cleary Gottlieb, Dechert, Morgan Lewis, and Sidley.

Other enrichment activities include our cross-border negotiation training exercises with the law schools of Tel Aviv University and Reichman University.