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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 Washington, 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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Washington 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 Law Compliance (35 U.S.C. § 1 et seq.)

    Adherence to federal patent laws that protect inventions and grant inventors exclusive rights for a limited time in exchange for public disclosure of the invention.

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

    Compliance with the Lanham Act, which governs trademarks, service marks, and unfair competition, protecting distinctive 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 seizure in extraordinary circumstances.

  • Washington Uniform Trade Secrets Act (RCW 19.108.010 et seq.)

    Washington's state-specific implementation of trade secret protection, defining trade secrets and remedies for misappropriation under state law.

  • Washington Electronic Signatures (RCW 19.34.010 et seq.)

    Compliance with Washington's Electronic Authentication Act, which governs the use of electronic signatures in legal documents, including IP assignments.

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

    Compliance with the Electronic Signatures in Global and National Commerce Act (E-SIGN), which facilitates the use of electronic records and signatures in interstate commerce.

  • Washington Contract Law (RCW Title 62A (Washington Uniform Commercial Code))

    Adherence to Washington state contract law principles, including requirements for offer, acceptance, consideration, and mutual assent in the formation of valid contracts.

  • Washington Employment Relationship Laws (RCW 49.44.140 et seq.)

    Compliance with Washington state laws governing employer-employee relationships, including restrictions on non-compete agreements and employee rights regarding inventions.

  • Washington Employee Invention Assignment Limitations (RCW 49.44.140)

    Specific provisions under Washington law that limit an employer's ability to claim ownership of certain employee inventions developed entirely on the employee's own time and without employer resources.

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

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

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

    Compliance with federal law criminalizing the theft or misappropriation of trade secrets, including provisions relevant to IP assignment and protection.

  • Washington Consumer Protection Act (RCW 19.86.010 et seq.)

    Compliance with Washington's consumer protection laws, which 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.

  • Washington Uniform Declaratory Judgments Act (RCW 7.24.010 et seq.)

    State law providing procedures for parties to seek judicial determination of their rights under contracts, including IP assignment agreements.

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

    Compliance with federal law granting certain moral rights to visual artists, which may affect the assignment of rights to certain artistic works.

  • Washington Statute of Frauds (RCW 19.36.010)

    Compliance with Washington's requirement that certain contracts, including those that cannot be performed within one year, must be in writing to be enforceable.

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

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

  • Washington Digital Signature Law (RCW 19.34.010 et seq.)

    Compliance with Washington's specific provisions regarding digital signatures and their legal validity in contracts and assignments.

  • Federal Intellectual Property Rights in Data (48 C.F.R. § 27.4)

    Compliance with federal regulations governing rights in data and software developed under federal contracts, which may affect IP assignments involving government contractors.

Frequently Asked Questions