Skip to content

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.

0/5000

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

Open the Intellectual Property Assignment Agreement guide

Customize your Intellectual Property Assignment Agreement Template with DocDraft

New York Requirements for Intellectual Property Assignment Agreement

  • Copyright Act Compliance (17 U.S.C. § 204)

    The agreement must comply with the federal Copyright Act (17 U.S.C. § 101 et seq.), which governs the transfer and assignment of copyrights. This includes provisions for written assignments signed by the copyright owner or authorized agent.

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

    The agreement must adhere to the Patent Act requirements for assignment of patent rights, including the requirement that assignments be in writing and properly recorded with the USPTO.

  • Lanham Act Compliance (15 U.S.C. § 1060)

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

  • Defend Trade Secrets Act Compliance (18 U.S.C. § 1836)

    The agreement should address trade secret protections in accordance with the federal Defend Trade Secrets Act, which provides a federal cause of action for trade secret misappropriation.

  • New York State Trade Secrets Protection (New York Common Law)

    The agreement must comply with New York common law protections for trade secrets, as New York does not have a statutory scheme but relies on common law and has not adopted the Uniform Trade Secrets Act.

  • New York General Obligations Law (N.Y. General Obligations Law § 5-701)

    The agreement must comply with New York's laws regarding contractual obligations, including provisions related to the enforceability of contracts and assignments.

  • New York Arts and Cultural Affairs Law (N.Y. Arts and Cultural Affairs Law § 11.01 et seq.)

    For certain creative works, the agreement must consider New York's Arts and Cultural Affairs Law, which includes provisions related to the rights of artists and the transfer of certain artistic works.

  • Work-for-Hire Doctrine Compliance (17 U.S.C. § 101)

    The agreement must properly address the work-for-hire doctrine under federal copyright law, specifying when works created by employees or contractors are considered works made for hire.

  • New York Employment Law Compliance (N.Y. Labor Law § 190 et seq.)

    The agreement must comply with New York employment laws, particularly regarding restrictive covenants and the scope of IP assignments from employees.

  • Federal Preemption Considerations (17 U.S.C. § 301)

    The agreement must account for federal preemption of state laws in certain IP areas, particularly copyright, where federal law expressly preempts state law protections for works within the subject matter of copyright.

  • New York Contract Formation Requirements (N.Y. General Obligations Law § 5-701)

    The agreement must satisfy New York's requirements for valid contract formation, including offer, acceptance, consideration, and the statute of frauds for certain types of agreements.

  • Electronic Signatures Compliance (15 U.S.C. § 7001 (E-SIGN Act) and N.Y. State Technology Law § 301 et seq. (Electronic Signatures and Records Act))

    The agreement should comply with both federal and New York state laws regarding electronic signatures and records if the agreement will be executed electronically.

  • New York Statute of Limitations (N.Y. Civil Practice Law and Rules § 213)

    The agreement should consider New York's statute of limitations for contract actions (six years) and potential claims related to intellectual property rights.

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

    For IP developed with federal funding, the agreement must comply with the Bayh-Dole Act, which governs rights to inventions made with federal assistance.

  • New York Common Law on Restrictive Covenants (BDO Seidman v. Hirshberg, 93 N.Y.2d 382 (1999))

    The agreement must adhere to New York's common law regarding restrictive covenants, which requires that such covenants be reasonable in time, scope, and geographic area.

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

    For visual artworks, the agreement must address the moral rights of artists under the Visual Artists Rights Act, which provides certain non-transferable rights to artists.

  • New York Choice of Law Provisions (N.Y. General Obligations Law § 5-1401)

    The agreement should include proper choice of law provisions that comply with New York's requirements for enforcing such provisions in contracts.

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

    The agreement should address protections consistent with the Economic Espionage Act, which criminalizes the theft or misappropriation of trade secrets.

  • New York Unfair Competition Law (New York Common Law)

    The agreement should consider New York's common law protections against unfair competition, which can provide additional protection for intellectual property rights.

  • Federal Antitrust Compliance (15 U.S.C. § 1 et seq. (Sherman Act) and 15 U.S.C. § 12 et seq. (Clayton Act))

    The agreement must not contain provisions that could be construed as anticompetitive under federal antitrust laws, particularly in the context of technology transfers and licensing.

Frequently Asked Questions