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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 Oklahoma, 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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Oklahoma 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.

  • Oklahoma Uniform Trade Secrets Act (78 O.S. §§ 85-94)

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

  • Oklahoma Contract Law (15 O.S. § 1 et seq.)

    The agreement must satisfy Oklahoma's general contract law requirements, including offer, acceptance, consideration, legal purpose, and competent parties.

  • Oklahoma Statute of Frauds (15 O.S. § 136)

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

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

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

  • Oklahoma Employment Law (40 O.S. § 1 et seq.)

    The agreement must comply with Oklahoma employment laws regarding restrictive covenants and employee rights related to intellectual property created during employment.

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

    The agreement must comply with the Electronic Signatures in Global and National Commerce Act (E-SIGN) if electronic signatures are used.

  • Oklahoma Uniform Electronic Transactions Act (12A O.S. §§ 15-101 to 15-121)

    The agreement must comply with Oklahoma's Uniform Electronic Transactions Act if electronic signatures or records are used in the formation or execution of the agreement.

  • Consideration Requirements (15 O.S. § 2)

    The agreement must provide adequate consideration for the assignment of intellectual property rights, particularly for assignments outside the employment context.

  • Federal Preemption (17 U.S.C. § 301; 35 U.S.C. § 1 et seq.)

    The agreement must recognize federal preemption of state laws in certain intellectual property matters, particularly in copyright and patent law.

  • Oklahoma Deceptive Trade Practices Act (78 O.S. §§ 51-55)

    The agreement must not violate Oklahoma's Deceptive Trade Practices Act, which prohibits unfair competition and deceptive practices in business transactions.

  • Moral Rights Provisions (17 U.S.C. § 106A)

    The agreement should address moral rights under the Visual Artists Rights Act for works of visual art, including waiver provisions where applicable.

  • Oklahoma Choice of Law Provisions (12A O.S. § 1-301)

    The agreement must comply with Oklahoma law regarding choice of law provisions, ensuring that the selected governing law has a reasonable relationship to the parties or transaction.

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

    The agreement must comply with the Bayh-Dole Act if the intellectual property was developed under a federal funding agreement, which may affect ownership rights.

  • Oklahoma Restraint of Trade Statutes (15 O.S. §§ 217-219)

    The agreement must comply with Oklahoma laws regarding restraint of trade, which may affect the enforceability of certain restrictive covenants related to intellectual property.

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

    The agreement should recognize 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.

  • Oklahoma Uniform Arbitration Act (12 O.S. §§ 1851-1881)

    If the agreement includes arbitration provisions, it must comply with Oklahoma's Uniform Arbitration Act regarding the enforceability of such provisions.

Frequently Asked Questions