Assignment of Intellectual Property From Employee (“Assignor”) To Employer (“Assignee”)

One of the most important assets of a business is its intellectual property (“IP”).  As a business owner, you should make sure all your agreements include an IP clause protecting the IP that is generated by your company.  This may include trademark, trade secrets, copyrights, and patents.  Reproduced-below is a sample IP provision we have drafted in the past that can be helpful in protecting an IP asset of the company.

1. Innovations.  The term “Innovations” shall mean all works, products, developments, concepts, ideas, suggestions and approaches, designs, inventions, improvements, processes, techniques, know-how and data (whether or not patentable, and whether or not at a commercial stage, or registrable under copyright or similar statutes) which are authored, made, conceived, reduced to practice in whole or in part by Assignor, its officers, directors, employees, subcontractors, agents or affiliates. 
2. Intellectual Property. The term “Intellectual Property” shall mean collectively (a) the Innovations, (b) Confidential Information, and (c) all worldwide patents, patent applications, copyrights, mask work rights, trade secrets rights and other intellectual property rights in any Innovations.
3. Assignment. The Assignor hereby assigns and agrees to assign to the Assignee, without royalty or any other consideration except as expressly set forth herein, all worldwide right, title and interest the Assignor may have or acquire in and to all Intellectual Property.  Additionally, the Assignor agrees, at no charge to the Assignee, but at the Assignee’s sole expense, to sign and deliver to the Assignee such documents as the Assignee considers desirable to evidence the assignment of all rights of the Assignor, if any, described above to the Assignee and the Assignee’s ownership of such rights and to do any lawful act and to sign and deliver to the Assignee any document necessary to apply for, register, prosecute or enforce any patent, copyright or other right or protection relating to any Intellectual Property in any country of the world.

DISCLAIMER:  The information provided here is intended for informational purposes only and does not constitute a legal advice. You should not rely on this information as a substitute for a professional legal advice. If you have any concerns or questions about a legal matter, you should consult with a licensed lawyer for direct legal advice. NovoTechIP International is not responsible for any actions or inaction on your part based on the information provided here. Use of or reference to this information does not create an attorney-client relationship with NovoTechIP International or its employees.