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Intellectual Property Assignment Agreement Guide: Protecting Your Business Assets

Learn how intellectual property assignment agreements work, why they're crucial for businesses of all sizes, and how to implement them effectively to protect your valuable innovations and creative works.

Introduction

An Intellectual Property Assignment Agreement is a legal document that transfers ownership of intellectual property (IP) rights from one party (often an employee, contractor, or business partner) to another (typically a company). This agreement ensures that the company owns all intellectual property created during the course of employment or a business relationship. Whether you're an established company expanding your supply chain, a startup founder with an innovative product, or a small business owner, understanding how IP assignment agreements work is essential for protecting your business assets and preventing costly disputes down the road. This guide will help you navigate the complexities of IP assignment agreements in plain language, so you can make informed decisions about safeguarding your company's innovations and creative works.

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Key Things to Know

  1. 1

    IP assignment agreements should be signed before work begins to avoid disputes over ownership of intellectual property created during the relationship.

  2. 2

    Different types of intellectual property (patents, copyrights, trademarks, trade secrets) may require specific language in the assignment agreement to ensure proper transfer.

  3. 3

    Some states have laws limiting what intellectual property employers can claim from employees, particularly for inventions created on personal time without company resources.

  4. 4

    For maximum protection, IP assignment agreements should include both present assignments ('I hereby assign') and future assignments ('I will assign') of intellectual property.

  5. 5

    International IP assignments may require compliance with different laws and regulations in each country where protection is sought.

  6. 6

    The work-for-hire doctrine automatically assigns copyright to employers in certain situations, but doesn't cover all creative works or other forms of IP like patents.

  7. 7

    Consideration (something of value) must be exchanged for an IP assignment to be legally binding—this can be money, employment, or other benefits.

  8. 8

    IP assignment agreements should address not just the intellectual property itself, but also related rights like the right to sue for past infringement.

Key decisions before you file

Before you file a Intellectual Property Assignment Agreement in Maine, a few decisions shape the document: which option to choose and what each one means. The Intellectual Property Assignment Agreement guide walks through them.

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Maine Requirements for Intellectual Property Assignment Agreement

  • Federal Copyright Law Compliance (17 U.S.C. § 101 et seq.)

    The agreement must comply with the U.S. Copyright Act, which protects original works of authorship fixed in a tangible medium of expression, including literary, musical, dramatic, and artistic works.

  • Federal Patent Law Compliance (35 U.S.C. § 261)

    The agreement must comply with federal patent laws governing the assignment of patent rights, including requirements for written assignments of patents and patent applications.

  • Federal Trademark Law Compliance (15 U.S.C. § 1060)

    The agreement must comply with the Lanham Act regarding the assignment of trademarks, which requires that trademarks be assigned with the associated goodwill of the business.

  • Trade Secret Protection (18 U.S.C. § 1836 et seq.)

    The agreement must comply with the Defend Trade Secrets Act, which provides federal remedies for misappropriation of trade secrets and requires notices regarding whistleblower immunity.

  • Maine Uniform Trade Secrets Act (10 M.R.S.A. §§ 1541-1548)

    The agreement must comply with Maine's version of the Uniform Trade Secrets Act, which provides state-level protection for trade secrets and remedies for misappropriation.

  • Maine Right to Inventions Law (26 M.R.S.A. § 615)

    The agreement must comply with Maine's law regarding employee rights to certain inventions created without employer resources and outside the scope of employment.

  • Maine Contract Law (Maine common law and 11 M.R.S.A. (Maine Uniform Commercial Code))

    The agreement must comply with Maine's general contract law principles, including requirements for offer, acceptance, consideration, capacity, and legality.

  • Work-for-Hire Doctrine Compliance (17 U.S.C. § 101 (definition of 'work made for hire') and § 201(b))

    The agreement must properly address the work-for-hire doctrine under federal copyright law, which determines initial ownership of copyrightable works created by employees or independent contractors.

  • Maine Statute of Frauds (33 M.R.S.A. § 51)

    The agreement must comply with Maine's Statute of Frauds, which requires certain contracts to be in writing and signed by the party to be charged.

  • Federal Electronic Signatures Compliance (15 U.S.C. § 7001 et seq.)

    The agreement must comply with the Electronic Signatures in Global and National Commerce Act (E-SIGN), which validates electronic signatures for IP assignments.

  • Maine Uniform Electronic Transactions Act (10 M.R.S.A. §§ 9401-9419)

    The agreement must comply with Maine's adoption of the Uniform Electronic Transactions Act, which governs the use of electronic signatures and records in contractual transactions.

  • Federal Bayh-Dole Act Compliance (35 U.S.C. §§ 200-212)

    If the IP was developed under federal funding, the agreement must comply with the Bayh-Dole Act regarding rights to inventions made with federal assistance.

  • Maine Unfair Trade Practices Act (5 M.R.S.A. §§ 205-A to 214)

    The agreement must not contain provisions that would violate Maine's Unfair Trade Practices Act, which prohibits unfair or deceptive acts or practices in commerce.

  • Federal Antitrust Law Compliance (15 U.S.C. §§ 1-7 (Sherman Act) and 15 U.S.C. §§ 12-27 (Clayton Act))

    The agreement must not contain provisions that would violate federal antitrust laws, such as unreasonable restraints on trade or competition.

  • Maine Employment Security Law (26 M.R.S.A. § 1041 et seq.)

    If the agreement involves employees, it must comply with Maine's employment security laws regarding the classification of workers and their rights.

  • Federal Economic Espionage Act (18 U.S.C. §§ 1831-1839)

    The agreement should acknowledge the Economic Espionage Act, which criminalizes the theft or misappropriation of trade secrets with the intent to benefit a foreign entity or cause economic harm.

  • Maine Restrictive Covenant Law (26 M.R.S.A. § 599-A)

    The agreement must comply with Maine's laws regarding restrictive covenants, which limit the enforceability of non-compete and non-solicitation provisions that may accompany IP assignments.

  • Federal Visual Artists Rights Act (17 U.S.C. § 106A)

    For visual artworks, the agreement must address the moral rights granted to artists under the Visual Artists Rights Act, including rights of attribution and integrity.

  • Maine Uniform Commercial Code (11 M.R.S.A. § 1-101 et seq.)

    The agreement must comply with Maine's adoption of the Uniform Commercial Code provisions regarding the sale of goods, which may apply to certain types of intellectual property transactions.

  • Federal Computer Fraud and Abuse Act (18 U.S.C. § 1030)

    The agreement should address compliance with the Computer Fraud and Abuse Act, which prohibits unauthorized access to protected computers and may be relevant for software-related IP assignments.

Frequently Asked Questions