Just as with buying and selling physical property, transferring the ownership of intellectual property is an important part of doing business. Whether you're starting a new business, buying product rights, or purchasing a company, an intellectual property assignment can help you smoothly transfer IP ownership rights.
What is an intellectual property assignment?
An intellectual property assignment is the transfer of an owner's rights in copyrights, trademarks, patents, trade secrets, or other intangible creations. These transfers may take place on their own or as part of a larger transaction.
An intellectual property assignment provides records of ownership and transfer while also protecting the rights of all parties involved in buying or selling IP. This essential documentation helps establish a clear record of the title for intellectual property.
By having an intellectual property assignment in place, you can help keep your intellectual property safe from illegal use, distribution, and more.
What Should an Intellectual Property Assignment Include?
An intellectual property assignment includes important details about the transfer of intellectual property and the parties involved. The contents of an IP assignment can be laid out in 17 different sections.
In the intellectual property assignment, you will find:
- Who is involved in the transfer
- What IP is being transferred
- How much the IP costs
- Why the transfer is valid
When done correctly, an intellectual property assignment provides a written acknowledgment of the rights and responsibilities transferred in the sale.
IP assignment pros and cons
Intellectual property assignments have many advantages, but before transferring your IP in this way, it's important to consider the limitations of IP assignments as well.
Pro: Guaranteed payment at the price negotiated
If a seller decides to give up the ownership rights of their intellectual property using an IP assignment, they can be sure that they will receive the exact compensation stated in the agreement. An IP assignment agreement will also state a strict payment deadline for the buyer, ensuring that the seller is paid by the agreed-upon date.
Pro: No lingering responsibilities
Once an IP assignment agreement goes into effect after being signed by both parties, the seller may no longer have any responsibilities related to the intellectual property involved in the sale. Because of this, the seller can remove themselves from being responsible for any future obligations related to the intellectual property once the agreement has been signed.
Con: One-time payment
Unlike with an IP licensing agreement, the use of an IP assignment transfers all ownership rights of the sellers' intellectual property for a set price. If a seller uses an IP licensing agreement, they will still retain ownership rights, which allows them to control how their intellectual property is used while still receiving income via fees and/or royalties (think renting vs. selling).
Con: Loss of ownership rights
Using an IP assignment agreement, sellers surrender all ownership rights to the intellectual property and no longer have any say over how the IP is used. This gives the buyer complete control and ownership rights of the intellectual property involved.
How to complete an intellectual property assignment
IP assignments aren't inherently complicated, but it's important to include the right information. The following is how an IP assignment agreement can be crafted. Learn about each section in more detail.
1. Introduction of parties
This section identifies the document as an intellectual property assignment. It should include:
- Each of the parties involved
- The date the document will be signed
Each party is given a name (usually “Assignor" or something similar) that will be used throughout the entire document. The assignor is the party giving up its ownership interest and the assignee is the party receiving it.
2. Recitals
Recitals offer up key background information about the parties involved. This section is known as the whereas clause because it explains the intent to transfer intellectual property rights.
3. Assignment of intellectual property
This section covers the agreement and acceptance of the intellectual property assignment. It's important to note that the intellectual property is not described in the agreement itself but in the addendum Exhibit A, which is referenced throughout the assignment.
4. Consideration
This section should cover:
- The amount to be paid for the intellectual property
- The time period in which the payment must be made
The payment's due date and price are only enforceable after both parties have signed the agreement.
5. Assignor's representations and warranties
Here is where you will find the assignor's promises about the property that is being sold. There are often at least seven subsections, each addressing a specific promise made by the assignor.
The assignor swears that:
- They are the owner of the IP.
- They have not sold the IP to any third party.
- They have the authority to enter the agreement.
- They have no knowledge that the IP has been plagiarized or taken from any third party without authorization.
- They do not know of any permissions that must be obtained to complete the IP assignment.
- If the IP involved includes a patent, they are unaware of any existing challenges to the validity of the patent. If the IP doesn't include a patent, patent application, or other patent-related materials, you can delete this provision from the representations and warranties.
- The property was not created while the creator was working on behalf of a third party.
If either party would like to include additional promises and warranties, they may do so here.
6. Assignee's representations and warranties
Here is where you will find the assignee's promises about the transaction.
The assignee swears that:
- They have the authority to enter the agreement.
- They have enough funds to pay for the assignment.
If any additional representations or warranties are required, they may be added here.
7. Documentation
This section states the assignor's promise to help with any paperwork needed to complete the assignment. Typical documentation can include:
- Filing information about the assignment with a registry office
- The transfer of document titles
If applicable, the assignor may also promise to help with transfer paperwork for filings outside of the country. This information is only needed if it is relevant to your agreement.
8. Indemnification
Protecting intellectual property is crucial to IP ownership. This section includes each party's future obligations if the intellectual property is found to infringe on a third party's rights.
There are two options provided, and you should choose whichever one works best for your situation.
- The assignor takes all responsibility for the infringement, agreeing to pay all related expenses and costs.
- The assignor makes its responsibilities conditional, greatly limiting their obligations if a claim is brought.
The assignor can't make both promises at once, so only one of these promises should be included in the final agreement.
9. Successors and assigns
If applicable, you may list a successor organization. In the event that a successor is involved, this section will state:
- Who will inherit the IP ownership rights
- Who will be responsible for any ongoing obligations
This section will also state any organizations to which rights and obligations have been permissibly assigned.
10. No implied waiver
In the agreement, one party may allow the other to break an existing commitment in the assignment—for example, if the assignor allows the assignee to make a late payment without penalty.
An attempt to waive a previously agreed-upon commitment is only valid if:
- The waiver is in writing
- The waiver has been signed by the waiving party
If one party allows the other to break a commitment, it does not mean that any other existing commitments are also invalidated.
11. Notice
Here you will list the addresses to which all official and legal correspondence should be delivered.
You will also need to list the mailing address for:
- The assignor
- The assignee
For any digital correspondence, the parties involved may include their email addresses.
12. Governing law
This section grants the parties the option to choose the state laws that will interpret the document. Note that the included language will not affect where a potential claim can be brought.
13. Counterparts and electronic signatures
Both parties may agree to sign the agreement using electronic signatures.
14. Severability
This section allows the agreement to stay valid, even if a part of it is invalidated in the future. For example, if a state law is passed that affects a section of your agreement, only that section will be invalidated.
This will leave the rest of your agreement intact and enforceable.
15. Entire agreement
This section of the document states that the document each party is signing is:
- The official agreement
- Directly related to the issues and IP involved
Even though a party could argue in the future that other enforceable promises may exist, this will provide some protection from those claims.
16. Headings
Here you will find that the headings at the beginning of each section are for organization and should not be interpreted as operational parts of the agreement.
17. Description of intellectual property
Referenced in Section 1, Exhibit A provides a detailed description of all intellectual property involved in the sale. If the description is too vague, the seller may end up giving up more than they intended or vice versa. When completing this section, be sure to be as specific and detailed as possible.
In addition to a detailed description of the intellectual property, note the goodwill that is being sold with the property. Goodwill is the intangible value of the property being sold, often including:
- Reputation with customers
- Relationship with the community
- Brand value that's not tied to a trademark
Don't worry about making the descriptions sound lawyerly—simple, succinct, and complete descriptions should suffice. Attach any relevant registrations or samples (for example, “*See attached drawing").
Intellectual property assignment FAQ
Consider these common questions and answers when completing an intellectual property assignment.
What's the difference between an intellectual property assignment and a license?
The use of a license allows the licensor to maintain ownership of the intellectual property rights. When using an intellectual property assignment, the assignor is giving up all of their ownership rights to the assignee.
What's the difference between an intellectual property assignment and a lease?
When obtaining the use of intellectual property using a lease, the assignee does not receive any ownership rights. Because of this, the assignor retains all ownership and control of the intellectual property and can dictate how it is used. Depending on the specifics of the lease, the assignor may be compensated via royalties and/or fees.
What is a quitclaim assignment?
A quitclaim assignment is an agreement that transfers all of the seller's rights to the intellectual property without any guarantees that the seller has the right to do so. If a third party is to claim ownership of the intellectual property down the road, the buyer will be on their own to defend the claim.
Do copyright assignments need to be notarized?
While copyright assignments must be done in writing to be valid, notarization isn't required. But it is always a good idea to have someone witness the assignor and assignee signing and dating the document.
Ready to get started? Use this form to create an intellectual property assignment in minutes. If you aren't looking to give up ownership rights of your intellectual property, keep it protected.
