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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 Tennessee, 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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Tennessee Requirements for Intellectual Property Assignment Agreement

  • Federal Copyright Protection (17 U.S.C. § 101 et seq.)

    Compliance with the Copyright Act of 1976, which protects original works of authorship fixed in a tangible medium of expression, including literary, musical, dramatic, and artistic works.

  • Federal Patent Protection (35 U.S.C. § 1 et seq.)

    Compliance with federal patent laws that protect new and useful processes, machines, manufactures, or compositions of matter, or any new and useful improvement thereof.

  • Federal Trademark Protection (15 U.S.C. § 1051 et seq.)

    Compliance with the Lanham Act, which governs the registration and protection of trademarks and service marks used in commerce.

  • Trade Secret Protection (18 U.S.C. § 1836 et seq.)

    Compliance with the Defend Trade Secrets Act, which provides federal remedies for misappropriation of trade secrets and allows for civil actions in federal courts.

  • Tennessee Uniform Trade Secrets Act (Tenn. Code Ann. § 47-25-1701 et seq.)

    Compliance with Tennessee's version of the Uniform Trade Secrets Act, which provides state-level protection for trade secrets and remedies for their misappropriation.

  • Tennessee Right to Inventions (Tenn. Code Ann. § 50-1-105)

    Compliance with Tennessee law regarding employee rights to inventions developed without employer resources and outside the scope of employment.

  • Tennessee Personal Property Law (Tenn. Code Ann. § 66-1-101 et seq.)

    Compliance with Tennessee laws governing the transfer of personal property, which includes intellectual property as intangible personal property.

  • Tennessee Contract Law (Tenn. Code Ann. § 47-50-101 et seq.)

    Compliance with Tennessee contract law principles, including requirements for valid contract formation, consideration, and enforcement.

  • Federal Work Made for Hire Doctrine (17 U.S.C. § 101 and § 201(b))

    Compliance with provisions regarding works made for hire, which automatically assigns copyright ownership to employers for works created by employees within the scope of employment.

  • Tennessee Statute of Frauds (Tenn. Code Ann. § 29-2-101)

    Compliance with Tennessee's Statute of Frauds requiring certain contracts to be in writing, particularly those that cannot be performed within one year.

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

    Compliance with the Electronic Signatures in Global and National Commerce Act (E-SIGN), which validates electronic signatures for IP assignment agreements.

  • Tennessee Uniform Electronic Transactions Act (Tenn. Code Ann. § 47-10-101 et seq.)

    Compliance with Tennessee's adoption of the Uniform Electronic Transactions Act, which governs the use of electronic signatures and records in contractual relationships.

  • Federal Economic Espionage Act (18 U.S.C. § 1831 et seq.)

    Compliance with federal law criminalizing the theft or misappropriation of trade secrets, which may impact how IP assignments are structured and protected.

  • Tennessee Consumer Protection Act (Tenn. Code Ann. § 47-18-101 et seq.)

    Compliance with Tennessee consumer protection laws that may apply to IP assignments involving consumer transactions or unfair business practices.

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

    Compliance with federal law governing intellectual property arising from federally funded research and development, which may affect IP assignments involving government funding.

  • Tennessee Restrictive Covenant Law (Tenn. Code Ann. § 50-1-103)

    Compliance with Tennessee law regarding restrictive covenants that may be included in IP assignment agreements, such as non-compete and non-disclosure provisions.

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

    Compliance with provisions granting certain moral rights to authors of visual works, which may require specific waiver language in IP assignments for visual arts.

  • Tennessee Uniform Commercial Code (Tenn. Code Ann. § 47-1-101 et seq.)

    Compliance with Tennessee's adoption of the UCC, which may apply to IP assignments that involve the sale of goods or security interests in intellectual property.

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

    Compliance with federal law prohibiting unauthorized access to protected computers, which may impact IP assignments involving software or computer-related technologies.

  • Tennessee Digital Signature Law (Tenn. Code Ann. § 47-10-119)

    Compliance with Tennessee laws specifically addressing digital signatures and their validity in legal documents, including IP assignments.

Frequently Asked Questions