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An assignment of intellectual property agreement is a contract that transfers the intellectual property rights (For example, patents, trademarks, industrial designs, or copyrights.) from the creator to another entity. The intellectual property rights holder may transfer all or part of their rights. The transfer of intellectual property rights is made upon a payment of a lump sum or royalties.
Employees hired for research and development roles or other technical areas sign intellectual property assignment agreements to assign to the company any ideas, work products, or inventions related to the company business that they may create during their employment.
Below is a list of common sections included in Assignment Of Intellectual Property Agreements. These sections are linked to the below sample agreement for you to explore.
THIS ASSIGNMENT OF INTELLECTUAL PROPERTY (this “Assignment”) is entered into effective as of July 1, 2006 (the “Effective Date”), by and between ALLAN D. ANGUS , an individual (“Assignor”), on the one hand, and GABRIEL TECHNOLOGIIES CORPORATION , a Delaware corporation (“Assignee”), on the other hand.
WHEREAS, Assignor owns certain Intellectual Property (the “Assigned Intellectual Property”); andWHEREAS, Assignor has agreed to assign, convey, and set over unto Assignee all of Assignor’s right, title, and interest in and to the Assigned Intellectual Property and certain Intellectual Property developed by Assignor after the Effective Date of this Assignment, all in accordance with the terms and conditions of this Assignment.
NOW, THEREFORE, in consideration of the premises and the mutual covenants herein contained, and other good and valuable consideration (including without limitation the execution of that certain Employment Agreement entered into as of July 1, 2006 between Assignee and Assignor (the “Employment Agreement”)), the receipt and sufficiency of which is hereby acknowledged, the parties hereby agree as follows:
1. Definition of Intellectual Property . As used in this Assignment, “Intellectual Property” means all of the following (directly or indirectly related to, in connection with, or resulting from Assignor’s work as an independent contractor or employee for or with Assignee or any subsidiary or affiliate of Assignee , including without limitation Trace Technologies, LLC ) anywhere in the world and all legal rights, title, or interest in the following (directly or indirectly related to, in connection with, or resulting from Assignor’s work as an independent contractor or employee for or with Assignee or any subsidiary or affiliate of Assignee, including without limitation Trace Technologies, LLC) arising under the laws of the United States, any state, or any other country or international treaty regime, whether or not filed, perfected, registered or recorded and whether now or later existing, filed, issued or acquired, including all renewals:
(a) all patents and applications for patents and all related reissues, reexaminations, divisions, renewals, extensions, provisionals, continuations and continuations in part, including but not limited to the patents and patent applications listed in Appendix A (attached hereto and hereby incorporated by reference into this Assignment);
(b) all copyrights, copyright registrations and copyright applications, copyrightable works, and all other corresponding rights;
(c) all mask works, mask work registrations and mask work applications, and all other rights relating to semiconductor design and topography;
(d) all industrial designs, industrial models, utility models, certificates of invention and other indices of invention ownership, and any related registrations and applications;
(e) all trade dress and trade names, logos, Internet addresses and domain names, trademarks and service marks and related registrations and applications, including any intent to use applications, supplemental registrations and any renewals or extensions, all other indicia of commercial source or origin, and all goodwill of any business associated with any of the foregoing;
(f) all inventions (whether patentable or not and whether or not reduced to practice), invention disclosures, invention notebooks, file histories, know how, technology, technical data, trade secrets, confidential business information, manufacturing and production processes and techniques, research and development information, financial, marketing and business data, pricing and cost information, business and marketing plans, and customer, distributor, reseller and supplier lists and information, correspondence, records, and other documentation, and other proprietary information of every kind, including but not limited to the inventions and invention disclosures listed in Appendix A (attached hereto and hereby incorporated by reference into this Assignment);
(g) all computer software including but not limited to all source code, object or executable code, firmware, software compilations, software implementations of algorithms, software tool sets, compilers, software models and methodologies, development tools, files, records, technical drawings, and data relating to the foregoing;
(h) all databases and data collections and all rights in the same;(i) all rights of paternity, integrity, disclosure, and withdrawal, and any other rights that may be known or referred to as “moral rights,” in any of the foregoing;
(j) any rights analogous to those set forth in the preceding clauses and any other proprietary rights relating to intangible property;
(k) all tangible embodiments of any of the foregoing, in any form and in any media;(l) all versions, releases, upgrades, derivatives, enhancements and improvements of any of the foregoing; and
(m) all statutory, contractual and other claims, demands, and causes of action for royalties, fees, or other income from, or infringement, misappropriation or violation (including past infringement, misappropriation or violation) of, any of the foregoing, and all of the proceeds from the foregoing that are accrued and unpaid as of, and/or accruing after, the Effective Date.
2. Intellectual Property Assignment . Assignor hereby assigns, transfers and conveys, unto Assignee, and Assignee accepts the assignment by Assignor of, all of Assignor’s right, title, and interest, in and to the Assigned Intellectual Property, the same to be held and enjoyed by Assignee for its own use and benefit, and for the use and benefit of its successors, assigns, or other legal representatives, as fully and entirely as the same would have been held and enjoyed by Assignor if this assignment and sale had not been made.
3. Future Intellectual Property Assignment . Assignor hereby further assigns, transfers and conveys unto Assignee all of Assignor’s right, title, and interest in and to any Intellectual Property and other assets developed by Assignor after the Effective Date of this Assignment. For the avoidance of doubt, Assignor and Assignee acknowledge and agree that no assignment, transfer, or conveyance is contemplated under this Section of this Agreement of Assignor’s right, title, and interest in and to any intellectual property conceived or developed by Assignor after the effective date of the termination of Assignor’s work as an independent contractor or employee for or with Assignee; provided, however, that nothing in this sentence shall be interpreted to change or modify the definition of “Intellectual Property” in this Agreement or the terms and conditions of the Employment Agreement.
4. Covenants . Assignor hereby covenants and agrees that he will, at any time upon request, consistent with the terms and conditions of the Employment Agreement, execute and deliver any and all papers that may be necessary or desirable to perfect title to the Assigned Intellectual Property, and all other rights, title, and interests assigned hereunder, to Assignee, its successors, assigns, or other legal representatives. Assignor further covenants and agrees that he will, at any time upon request, consistent with the terms and conditions of the Employment Agreement, communicate to Assignee, its successors, assigns or other legal representatives, such facts as requested by Assignee relating to the Assigned Intellectual Property.
5. Representations and Warranties . To induce Assignee to enter into this Assignment with Assignor, the Assignor, jointly and severally, represents and warrants the following:
(a) Assignor has all requisite capacity and authority to execute and deliver this Assignment and any and all other instruments and agreements required to be executed and delivered by such Assignor pursuant to this Assignment. This Assignment and any other agreements executed in connection herewith by Assignor represent valid and binding obligations of Assignor enforceable against Assignor in accordance with their terms.
(b) Neither the execution and delivery by Assignor of this Assignment, nor the consummation by Assignor of the transactions contemplated herein, will violate, or be in conflict with, or constitute a default (or an event or condition that, with notice or lapse of time or both, would constitute a default) under, or result in the termination of, or accelerate the performance required by, or cause the acceleration of the maturity of any debt, liability, contract, agreement, or other arrangement to which Assignor is a party.