Assigning intellectual property (IP) rights transfers ownership from one party to another. Harper James is a UK full-service commercial law firm advising businesses on the laws of England and Wales, including intellectual property and trade marks.
Begin by listing each asset covered by the transaction. This may include copyright in software, documents and artwork, registered and unregistered trade marks, patents, design rights, domain names, databases and confidential information. The agreement should identify the assets precisely, using registration numbers, project names, repositories or schedules where appropriate.
The parties should also confirm who currently owns the rights. Employees will generally create copyright for their employer when acting in the course of employment, subject to the circumstances. Independent contractors, agencies and consultants generally retain ownership unless their contract transfers it. A chain-of-title review helps identify missing assignments from founders, employees, contractors or previous businesses.
An IP assignment should state the rights transferred, the relevant territory, the effective date and the payment or other consideration. It should cover the right to use, reproduce, modify, commercialise and enforce the relevant IP where applicable. For copyright, an assignment under the law of England and Wales must be in writing and signed by or on behalf of the assignor. Similar formal requirements apply to several registered rights, and ownership changes should be recorded with the relevant registry where appropriate.
The document should also deal with future rights, further documents, confidentiality, warranties and responsibility for infringement claims. Moral rights are separate from copyright ownership. They generally cannot be assigned, but the creator can usually waive them. The agreement should therefore include an appropriate waiver where the business needs freedom to edit, adapt or publish the work.
An assignment does not automatically transfer rights that the assignor does not own or have authority to transfer. Review employment contracts, consultancy agreements, licences, joint venture documents, funding agreements and previous acquisitions for restrictions or third-party rights. Keep the signed assignment, schedules, registration evidence and supporting ownership records together. Where a licence is intended instead of a transfer, the document should clearly define the permitted uses, term, territory, exclusivity and termination rights.