Transfer of Intellectual Property: Everything You Need to Know
The transfer of intellectual property can seem like a difficult process due to the intangible nature of the property. 3 min read
2. What Does a Valid Assignment of Intellectual Property Rights Require?
3. What Are Typical Form Requirements for Assignments?
4. Why Are Assignments Important?
The transfer of intellectual property can seem like a difficult process due to the intangible nature of the property. One of the most important things to remember when transferring IP is that you cannot transfer what you do not technically own.
By creating a license or assignment, you are essentially promising to transfer your ownership rights of the intellectual property. These agreements can often be necessary due to the fact that employees may believe that they own the rights to the intellectual property they create, while the employer may feel they own it as part of the employee's scope of work.
The rules regarding employee ownership of intellectual property can vary by the type of property that is being protected. In general, the employer will own all
- Trade secrets
This ownership extends to work that was specifically created during the course and under the scope of the worker's employment.
Since the rights of ownership typically have to do with the employee/employer relationship, the general rules do not necessarily apply to independent contractors that work for the company. The rules and laws of intellectual property and ownership can be complex, so if you are trying to obtain rights for work by an independent contractor, it is best to contact a lawyer before attempting to transfer the intellectual property yourself.
Intellectual property copyrights are extremely important in the growing global economy. The rights were created to help encourage businesses to invest in both innovation and marketing, which are the foundations of capitalism. Intellectual property is so important that it is often traded and used to secure investors and financing.
What Is the Assignment of Intellectual Property Rights?
An assignment to intellectual property rights refers to the act of transferring ownership from the assignor to the assignee. The document that creates this transfer is often referred to as the "assignment."
The two parties entering into the assignment can either be legal entities or individuals. The assignment will include language in which the assignor will transfer over their intellectual property rights such as:
- Industrial Designs
The rights can be full rights or can have limitations to what the assignee is allowed to do or gain from the intellectual property. When intellectual property is transferred, it is most often done for one lump sum of royalties.
When creating an assignment, it is essential to include all of the rights on a country-by-country basis to make sure that each of the country's national assignment requirements are met. Most intellectual property can be freely transferred by an assignor.
In some cases, you can also execute a nunc pro tunc which will assign the rights over to the other party with an earlier date than the assignment was executed. The date will need to be specified in the agreement.
What Does a Valid Assignment of Intellectual Property Rights Require?
The laws for transferring intellectual property will vary from country to country and be subject to a wide range of rules depending on the national, regional, or international authorities where it is recorded. Since country regulations can vary as well as the type of intellectual property being assigned, it is virtually impossible to have a single set of regulations. The best thing to do is seek out a national representative where you are performing the transfer to ensure that you are complying with all necessary rights.
What Are Typical Form Requirements for Assignments?
While it is hard to find a one-size-fits-all agreement, there are some basic rules and requirements that should be followed when creating an intellectual property agreement. You should always:
- Put the assignment in writing
- Require both the signature of the assignor and assignee or authorized signer for either party
- Have it signed in ink
- Keep the originals stored in a safe place
- Get it notarized if the county requires it
- Use a specific form if the county dictates
Why Are Assignments Important?
The proper assignment of intellectual property is important to ensure the timely recording and transfer of rights. It is also essential for claiming priority rights. As soon as an assignment has been recorded the assignee may begin exercising their recently obtained rights.
If you need help with the transfer of intellectual property, you can post your legal need on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.