INTELLECTUAL PROPERTY ASSIGNMENT AGREEMENT TEMPLATE
As a condition of my employment with [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 Company, I agree to the following:
PandaTip: As a condition of employment, an employer may want an employee to sign an Intellectual Property Assignment Agreement, which 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.
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.
PandaTip: If the employee has invented, conceived or created anything of intellectual value prior to his/her employment, he/she will want to list that in Exhibit A.
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 right, 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’ 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.
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.
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.
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.
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.
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.
PandaTip: The governing law has significant implications for any agreement. In the case of intellectual property assignment, certain jurisdictions of law will place restrictions on what and to what extent intellectual property may be transferred in an employer/employee relationship. As always, it is advised that both parties consult their lawyer on this and other aspects of this agreement.
This Agreement will be governed by the laws of the State of [STATE]. I hereby expressly consent to the personal jurisdiction of the state and federal courts with jurisdiction in [COUNTY], [STATE] for any lawsuit filed there against me by the Company arising from or relating to this 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.
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.
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.
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
AGREED AND ACCEPTED:
LIST OF PRIOR INVENTIONS AND ORIGINAL WORKS OF AUTHORSHIP
Identifying Number or Brief Description
It's axiomatic that intellectual property rights are transferable. A change of ownership of physical property can be evidenced by a change of possession; not so with intellectual property (IP). For this reason, IP transfers should always be embodied in a written instrument. Indeed it's often is a legal requirement that IP transfers be in writing.
This short post is about the use of such instruments to transfer the IP rights in software.
Transfers of this kind may also be referred to as “assignments”. I use the terms interchangeably in this post.
The first owner of the intellectual property rights in a computer program will usually be the individual or individuals who created the software: the developer or developers, or his or her or their employer. Typical situations where a transfer of rights will be required include:
- where software has been commissioned by a customer on the basis that the customer will acquire ownership;
- where a developer is adapting or creating a module for a pre-existing software owned by the customer;
- where a business or business unit is being acquired (i.e. a business acquisition rather than a share acquisition).
Whatever the circumstances, the first thing you need to do if you are contemplating transferring rights in software is to establish what rights subsist in the software, who owns them, and the extent to which they should be covered by the transfer.
Frequently, different people own different copyrights in a computer program. For example, many software applications incorporate third party libraries, whether commercial or open source, and a software developer will not be in a position to transfer ownership of the copyright in those third party elements to a customer.
The water is further muddied by the fact that a number of different types of legal right may subsist in a single software program.
From a legal perspective, the key intellectual property right will usually be copyright. Literary copyright protects software code as well as normal literary works, while artistic copyright may protect the graphical elements of a computer program (subject in each case to the usual limitations). Legal assignments of copyright must not only be in writing, but must also be signed by or on behalf of the transferor.
Other relevant IP rights may include patents, rights in designs and database rights. Applications for registered rights such as patents are also assignable.
In some cases confidential information may form part of a transfer. This is not an intellectual property rights as such – it's what lawyer's call a "chose in action" – and particular care needs to be taken with this kind of right.
Once you have identified the subject matter of the rights and the rights themselves, you need to decide on what basis the transfer will be made. Will the transferor simply transfer those rights that it actually owns? Will the transferor transfer all rights subsisting in the identified subject matter? Will the transferor guarantee that it actually owns all such rights?
It is possible to assign future rights, including rights in software that does not exist at the date the assignment instrument is entered into.
Most copyright assignments will include a waiver (or assertion) of moral rights, but this is often not necessary where software is concerned, because moral rights do not protect software itself.
Assignments often take the form of a deed rather than a contract. This may be because the parties wish to avail themselves of the extended limitation periods that apply to actions based on deeds, or it may because there is no consideration for the transfer. An alternative to a deed in the latter case is to include nominal consideration under the contract.
In the case of an assignment of registered rights (e.g. a patent), the assignment should be recorded with the relevant authorities.