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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 New Jersey, 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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New Jersey Requirements for Intellectual Property Assignment Agreement

  • Federal Copyright Law Compliance (17 U.S.C. § 101-1332)

    The agreement must comply with the Copyright Act of 1976, which governs the protection of original works of authorship fixed in any tangible medium of expression. This includes provisions for work-made-for-hire and written assignments of copyright ownership.

  • Federal Patent Law Compliance (35 U.S.C. § 1-390)

    The agreement must adhere to the Patent Act, which requires that all assignments of patent rights be in writing and properly executed to be valid and enforceable.

  • Federal Trademark Law Compliance (15 U.S.C. § 1051-1141n)

    The agreement must comply with the Lanham Act, which governs trademark assignments and requires that trademarks be assigned with the associated goodwill of the business to which the mark pertains.

  • Federal Trade Secret Protection (18 U.S.C. § 1836-1839)

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

  • New Jersey Trade Secret Act (N.J.S.A. 56:15-1 et seq.)

    The agreement must comply with New Jersey's trade secret law, which protects confidential business information that provides a competitive advantage. The agreement should define trade secrets in accordance with this statute.

  • New Jersey Contract Law (N.J.S.A. 12A:1-101 et seq.)

    The agreement must satisfy New Jersey's requirements for valid contracts, including offer, acceptance, consideration, legal purpose, and capacity of the parties to contract.

  • New Jersey Statute of Frauds (N.J.S.A. 25:1-5)

    The agreement must be in writing to comply with New Jersey's Statute of Frauds, particularly for assignments that may not be performed within one year or that involve significant value.

  • New Jersey Restrictive Covenant Law (New Jersey common law; Solari Industries v. Malady, 55 N.J. 571 (1970))

    The agreement must comply with New Jersey case law regarding restrictive covenants, which requires that any non-compete or non-solicitation provisions be reasonable in scope, duration, and geographic area.

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

    The agreement should acknowledge the federal criminal penalties for theft of trade secrets, which can apply to employees who misappropriate intellectual property.

  • New Jersey Conscientious Employee Protection Act (N.J.S.A. 34:19-1 et seq.)

    The agreement must not contravene New Jersey's whistleblower protection law, which protects employees who disclose illegal activities, including potential IP infringement.

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

    The agreement should address unauthorized access to computer systems that may contain intellectual property, which is prohibited under federal law.

  • New Jersey Computer Related Offenses Act (N.J.S.A. 2A:38A-1 et seq.)

    The agreement should address New Jersey's law prohibiting unauthorized access to computer systems and data, which can include intellectual property stored digitally.

  • Federal Electronic Communications Privacy Act (18 U.S.C. § 2510-2522)

    The agreement should consider federal laws regarding privacy of electronic communications, which may impact monitoring of employee communications containing intellectual property.

  • New Jersey Wiretapping and Electronic Surveillance Control Act (N.J.S.A. 2A:156A-1 et seq.)

    The agreement should consider New Jersey's laws regarding privacy of communications, which may impact monitoring of employee communications containing intellectual property.

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

    The agreement must address moral rights for visual artists, which may require specific waivers for certain types of artistic works.

  • New Jersey Right of Publicity (New Jersey common law; Estate of Presley v. Russen, 513 F. Supp. 1339 (D.N.J. 1981))

    The agreement should address New Jersey's common law right of publicity, which protects against unauthorized commercial use of a person's name, likeness, or identity.

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

    If the intellectual property was developed using federal funding, the agreement must comply with the Bayh-Dole Act, which governs rights to inventions made with federal assistance.

  • New Jersey Uniform Electronic Transactions Act (N.J.S.A. 12A:12-1 et seq.)

    The agreement should comply with New Jersey's law regarding electronic signatures and records, which may be relevant for digital execution of the assignment agreement.

  • Federal Digital Millennium Copyright Act (17 U.S.C. § 1201-1205)

    The agreement should address digital copyright issues, including technological protection measures and copyright management information for digital works.

  • New Jersey Consumer Fraud Act (N.J.S.A. 56:8-1 et seq.)

    The agreement should avoid provisions that could be construed as deceptive or unconscionable business practices under New Jersey's consumer protection law.

Frequently Asked Questions