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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 Oregon, 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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Oregon 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.

  • Oregon Uniform Trade Secrets Act (Oregon Revised Statutes (ORS) § 646.461 to 646.475)

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

  • Oregon Contract Law (Oregon common law and ORS § 71.1101 et seq.)

    The agreement must satisfy Oregon's general contract law requirements, including offer, acceptance, consideration, legal purpose, and capacity of the parties.

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

    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.

  • Oregon Employment Law Considerations (ORS § 653.295)

    The agreement must comply with Oregon employment laws, including restrictions on non-competition and non-solicitation provisions that may affect IP assignments.

  • Inventions Assignment Exception (ORS § 653.750)

    The agreement must comply with Oregon law regarding employee invention assignment agreements, which prohibits requiring assignment of certain inventions developed entirely on employee's own time and without employer resources.

  • 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 Act), which validates electronic signatures for IP assignments.

  • Oregon Electronic Transactions Act (ORS § 84.001 to 84.061)

    The agreement must comply with Oregon's Electronic Transactions Act, which governs the use of electronic records and signatures in contractual relationships within the state.

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

    The agreement should address the waiver of moral rights under the Visual Artists Rights Act for works of visual art, as these rights cannot be transferred but can be waived.

  • 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, which governs rights to inventions made with federal assistance.

  • Oregon Consumer Protection Laws (ORS § 646.605 to 646.656)

    The agreement must comply with Oregon's Unlawful Trade Practices Act if the IP assignment involves consumer transactions or services.

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

    The agreement must comply with federal antitrust laws, ensuring that IP assignments do not create monopolies or unreasonably restrain trade.

  • Oregon Antitrust Laws (ORS § 646.705 to 646.836)

    The agreement must comply with Oregon's antitrust laws, which prohibit restraints of trade and monopolistic practices within the state.

  • Federal Tax Implications (26 U.S.C. § 1001 et seq. (Internal Revenue Code))

    The agreement should address federal tax implications of IP transfers, including potential capital gains treatment and tax reporting requirements.

  • Oregon Tax Considerations (ORS § 316.001 et seq. and ORS § 317A.100 et seq.)

    The agreement should address Oregon state tax implications of IP transfers, including potential state income tax and commercial activity tax considerations.

  • Severability Under Oregon Law (Oregon common law and ORS § 72.3020)

    The agreement should include a severability clause that complies with Oregon law, ensuring that if any provision is found invalid, the remainder of the agreement remains enforceable.

  • Choice of Law and Venue Provisions (ORS § 15.300 to 15.460)

    The agreement should include choice of law and venue provisions that comply with Oregon law regarding forum selection and governing law for contractual disputes.

Frequently Asked Questions