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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 Pennsylvania, 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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Pennsylvania 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.

  • Pennsylvania Uniform Trade Secrets Act (12 Pa. C.S. §§ 5301-5308)

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

  • Pennsylvania Contract Law (Pennsylvania Common Law)

    The agreement must satisfy Pennsylvania's general contract law requirements, including offer, acceptance, consideration, legal purpose, and capacity to contract.

  • 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.

  • Pennsylvania Employment Law (Pennsylvania Common Law and Statutory Employment Law)

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

  • Pennsylvania Electronic Transactions Act (73 P.S. §§ 2260.101-2260.5101)

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

  • Inventions Assignment Exception (Pennsylvania Common Law)

    The agreement must comply with limitations on employee invention assignment agreements, excluding inventions developed entirely on an employee's own time without employer resources.

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

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

  • Pennsylvania Uniform Written Obligations Act (33 P.S. § 6)

    The agreement should comply with Pennsylvania's Uniform Written Obligations Act, which provides that a written promise shall not be unenforceable for lack of consideration if the writing contains an express statement that the signer intends to be legally bound.

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

    The agreement should acknowledge federal protections against economic espionage and theft of trade secrets, particularly if the intellectual property has international implications.

  • Pennsylvania Unfair Trade Practices and Consumer Protection Law (73 P.S. §§ 201-1 to 201-9.3)

    The agreement should comply with Pennsylvania's consumer protection laws if the intellectual property assignment involves consumer transactions or marketing practices.

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

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

  • Pennsylvania Fiduciary Duty Law (15 Pa. C.S. § 1712 (for corporate directors) and Pennsylvania Common Law)

    The agreement must comply with Pennsylvania law regarding fiduciary duties of employees, officers, and directors when assigning intellectual property created in fiduciary capacities.

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

    The agreement should address unauthorized access to computer systems and data, particularly for software-related intellectual property assignments.

  • Pennsylvania Statute of Frauds (33 P.S. § 1 et seq.)

    The agreement must comply with Pennsylvania's Statute of Frauds requirements for certain contracts to be in writing, particularly for assignments that may take more than one year to complete.

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

    The agreement must comply with federal antitrust laws, avoiding provisions that could be deemed anticompetitive, particularly in intellectual property licensing arrangements.

Frequently Asked Questions