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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.
Download the Sample intellectual property assignment template
Read next: Sample funding templates for Ontario investors and entrepreneurs
This sample legal document has been made available by MaRS Discovery District for informational purposes only and does not constitute advertising, a solicitation, or legal advice. Neither the transmission of this sample legal document nor the transmission of any information contained in this website is intended to create, and receipt hereof or thereof does not constitute formation of, a lawyer-client relationship. Internet subscribers and online readers should not rely upon this sample legal document or the information contained in this website for any purpose without seeking legal advice from a qualified lawyer practicing in the reader’s province.
The information contained in this website is provided only as general information and may or may not reflect the most current legal developments; accordingly, information on this website is not promised or guaranteed to be correct or complete. MaRS Discovery District expressly disclaims all liability in respect to actions taken or not taken based on any or all the contents of this website.
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IP Assignment Agreement: Definition, Terms, Example
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ContractsCounsel has assisted 37 clients with ip assignment agreements and maintains a network of 65 intellectual property lawyers available daily. These lawyers collectively have 5 reviews to help you choose the best lawyer for your needs. 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 .
Who Helps With IP Assignment Agreements?
Lawyers with backgrounds working on ip assignment agreements work with clients to help. Do you need help with an ip assignment agreement?
Post a project in ContractsCounsel's marketplace to get free bids from lawyers to draft, review, or negotiate ip assignment agreements. All lawyers are vetted by our team and peer reviewed by our customers for you to explore before hiring.
ContractsCounsel is not a law firm, and this post should not be considered and does not contain legal advice. To ensure the information and advice in this post are correct, sufficient, and appropriate for your situation, please consult a licensed attorney. Also, using or accessing ContractsCounsel's site does not create an attorney-client relationship between you and ContractsCounsel.
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I am an attorney located in Denver, Colorado with 13 years of experience working with individuals and businesses of all sizes. My primary areas of practice are general corporate/business law, real estate, commercial transactions and agreements, and M&A. I strive to provide exceptional representation at a reasonable price.
Christopher R.
Corporate and transactional attorney in sixth year of practice. Focus areas include general corporate counsel, labor and employment law, business partnership matters, securities matters related to privately-held companies, and regulatory compliance in securities and finance matters.
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.
Ms. Tanu Chaturvedi Esq. brings vast experience: experience as Corporate Counsel at a multi-million dollar international corporation, experience as a legal & business leader in the legal department at the world's leading mission capability integrator in the nation's capital that has been named a Top 100 Employer Forbes by state & Top 25 Defense Contractor in the world & named Top 7 in the Washington Technology Top 100 2022 & one of the largest defense contractors in the marketplace & has also been named as Top Managed Company by The Wallstreet Journal & included in the Inc. 500, experience as the sole Attorney at a national company that was recognized in 2017 as a top employer in the capital by "The Washington Post" & has also been listed on the Inc. 5000 more than once as one of the fastest growing companies in the nation, & in 2019, & named as a Finalist for the DC Moxie award: for businesses that demonstrate significant boldness & innovation in business strategy, experience working at one of the world's largest insurance brokerage firms, one of the largest law firms in the capital, a boutique start-up that specializes in investigations, security, & risk, the world’s largest professional service firm (largest of the “big 4” companies) in conjunction with the nation’s executive law enforcement agency, experience working at a corporation with global reach that was lead by a former cabinet member of the Clinton administration, experience working at a Fortune 500 in one of the world's largest insurance markets, at an internationally recognized boutique law firm, experience as the only female legal professional in the felony division of a criminal department in the nation's most dangerous jurisdiction as an undergrad, & experience working in the offices of public officials. She is also a graduate from two different internationally recognized institutions that have a record of turning out graduates with the skill to lead in their industries & distinguished law school graduate from an ABA accredited law school that received recognition for academic & leadership achievement. She is an invited contributor to legal blogs, and she enjoys advocating for increased literacy. Notably, she also supports advocacy for the performing arts as a former graduate of a magnet school for the performing arts. Please don’t hesitate to reach out to her with any questions, and she looks forward to hearing from your team.
I am an attorney licensed in California with particular experience in local policy work, workplace justice, and environmental law. I have authored or co-authored over 30 amicus briefs (including one for which I received an Amicus Service Award from the International Municipal Lawyers Association), have extensive experience researching state law across the country and across issue areas, and pride myself in clearly and concisely distilling complex and/or technical legal concepts for lawyers and non-lawyers alike.
Courtney A.
Hello! I am a transactional attorney enthusiastic about helping entrepreneurs launch and protect their businesses. Let me know how I can support you with drafting and negotiating contracts, setting up your LLC, copyrighting creative content, or trademarking your brand. I am experienced with drafting and negotiating business contracts, including service/vendor agreements, NDAs, marketing agreements, licensing agreements, terms & conditions, terms of use, and many more! I have helped companies develop strong template agreements and strategies for contract management. My goal is to deliver a simple, stress-free client experience!
As a multilingual attorney, Rudy Cohen-Zardi holds multiple degrees from several institutions worldwide. He has gained experience in leading firms, including Eversheds Sutherland, LLP and Bank of China (NY). He is licensed to practice in New York.
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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.
Quick, user friendly and one of the better ways I've come across to get ahold of lawyers willing to take new clients.
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Intellectual Property Assignment Agreements: The Ultimate Business Guide
LegalGPS : Jul 25, 2024 10:30:00 AM
When you’re building a business, protecting your intellectual property (IP) is one of the most important steps you can take. That’s where an Intellectual Property Assignment Agreement comes into play. This agreement ensures that any IP created—whether it’s a product design, software, or even a brand logo—belongs to your business, not the individual who created it. We'll cover everything you need to know in this guide!
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Intellectual Property Assignment Agreement Template
Legal GPS templates are drafted by top startup attorneys and fully customizable.
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:
Defining the Purpose
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!" .
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.
Step 1 - Identify the Parties Involved
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."
Step 2 - Specify the Assigned Intellectual Property
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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Step 3 - Describe the Transfer of Rights
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."
Step 4 - Detail Compensation and Payment Terms
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]".
Step 5 - Include Confidentiality Clauses
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."
Step 6 - Determine Governing Law and Dispute Resolution Process
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]."
Tips for Avoiding Common Mistakes and Pitfalls
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
Do I need a business lawyer?
The biggest question now is, "Do I need a business lawyer?” For most businesses and in most cases, you don't need a lawyer to start your business. Instead, many business owners rely on Legal GPS Pro to help with legal issues. Legal GPS Pro is your All-In-One Legal Toolkit for Businesses. Developed by top startup attorneys, Pro gives you access to 100+ expertly crafted templates including operating agreements, NDAs, and service agreements, and an interactive platform. All designed to protect your company and set it up for lasting success.
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