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Intellectual Property Assignment Agreement (Short Form)

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IP Assignment Agreement

Jump to section, what is an ip assignment agreement.

An IP assignment agreement is an agreement that designates the ownership of intellectual property. Companies often use IP assignment agreements to secure their inventions and developments but also to transfer ownership of intellectual property as needed. These assignment agreements are used for transferring intangible property like a copyright, a trademark, or company trade secrets.

Sometimes referred to as an IP transfer agreement, the IP assignment agreement also ensures that when an employee helps develop an intangible creation on behalf of a company that the company can retain the rights to the creation.

Common Sections in IP Assignment Agreements

Below is a list of common sections included in IP Assignment Agreements. These sections are linked to the below sample agreement for you to explore.

IP Assignment Agreement Sample

Reference : Security Exchange Commission - Edgar Database, EX-10.1 3 v476437_ex10-1.htm EXHIBIT 10.1 , Viewed October 13, 2021, View Source on SEC .

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Attorney with a wide-range of experience

My name is Ryenne Shaw and I help business owners build businesses that operate as assets instead of liabilities, increase in value over time and build wealth. My areas of expertise include corporate formation and business structure, contract law, employment/labor law, business risk and compliance and intellectual property. I also serve as outside general counsel to several businesses across various industries nationally. I spent most of my early legal career assisting C.E.O.s, General Counsel, and in-house legal counsel of both large and smaller corporations in minimizing liability, protecting business assets and maximizing profits. While working with many of these entities, I realized that smaller entities are often underserved. I saw that smaller business owners weren’t receiving the same level of legal support larger corporations relied upon to grow and sustain. I knew this was a major contributor to the ceiling that most small businesses hit before they’ve even scratched the surface of their potential. And I knew at that moment that all of this lack of knowledge and support was creating a huge wealth gap. After over ten years of legal experience, I started my law firm to provide the legal support small to mid-sized business owners and entrepreneurs need to grow and protect their brands, businesses, and assets. I have a passion for helping small to mid-sized businesses and startups grow into wealth-building assets by leveraging the same legal strategies large corporations have used for years to create real wealth. I enjoy connecting with my clients, learning about their visions and identifying ways to protect and maximize the reach, value and impact of their businesses. I am a strong legal writer with extensive litigation experience, including both federal and state (and administratively), which brings another element to every contract I prepare and the overall counsel and value I provide. Some of my recent projects include: - Negotiating & Drafting Commercial Lease Agreements - Drafting Trademark Licensing Agreements - Drafting Ambassador and Influencer Agreements - Drafting Collaboration Agreements - Drafting Service Agreements for service-providers, coaches and consultants - Drafting Master Service Agreements and SOWs - Drafting Terms of Service and Privacy Policies - Preparing policies and procedures for businesses in highly regulated industries - Drafting Employee Handbooks, Standard Operations and Procedures (SOPs) manuals, employment agreements - Creating Employer-employee infrastructure to ensure business compliance with employment and labor laws - Drafting Independent Contractor Agreements and Non-Disclosure/Non-Competition/Non-Solicitation Agreements - Conducting Federal Trademark Searches and filing trademark applications - Preparing Trademark Opinion Letters after conducting appropriate legal research - Drafting Letters of Opinion for Small Business Loans - Drafting and Responding to Cease and Desist Letters I service clients throughout the United States across a broad range of industries.

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Intellectual property lawyers by top cities.

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IP Assignment Agreement lawyers by city

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IP Assignment and Licensing

IP rights have essentially transformed intangibles (knowledge, creativity) into valuable assets that you can put to strategic use in your business. You can do this by directly integrating the IP in the production or marketing of your products and services, thereby strengthening their competitiveness. With IP assignement and IP licensing, IP owners can also use your IP rights to create additional revenue streams by selling them out, giving others a permission to use them, and establishing joint ventures or other collaboration agreements with others who have complementary assets.

  Expert tip: Assignment, license and franchising agreements are flexible documents that can be adapted to the needs of the parties. Nevertheless, most countries establish specific requirements for these agreements, e.g. written form, registration with a national IP office or other authority, etc. For more information, consult your IP office .

IP rights assignment

You can sell your IP asset to another person or legal entity.

When all the exclusive rights to a patented invention, registered trademark, design or copyrighted work are transferred by the owner to another person or legal entity, it is said that an assignment of such rights has taken place.

Assignment is the sale of an IP asset. It means that you transfer ownership of an IP asset to another person or legal entity.

IP for Business Guides

Learn more about the commercialization of patents, trademarks, industrial designs, copyright.

Read IP for Business Guides

IP licensing

You can authorize someone else to use your IP, while maintaining your ownership, by granting a license in exchange for something of value, such as a monetary lump sum, recurrent payments (royalties), or a combination of these.

Licensing provides you with the valuable opportunity to expand into new markets, add revenue streams through royalties, develop partnerships etc.

If you own a patent, know-how, or other IP assets, but cannot or do not want to be involved in all the commercialization activities (e.g. technology development, manufacturing, market expansion, etc.) you can benefit from the licensing of your IP assets by relying on the capacity, know-how, and management expertise of your partner.

  Expert tip: Licensing can generally be sole, exclusive or non-exclusive, depending on whether the IP owner retains some rights, or on whether the IP rights can be licensed to one or multiple parties.

Technology licensing agreements

Trademark licensing agreements, copyright licensing agreements, franchising agreements, merchande licensing, joint venture agreements, find out more.

• Learn more about Technology Transfer .

US Judge Shopping Curb Thwarted as Texas Court Resists (3)

By Jacqueline Thomsen

A Northern Texas federal court that has come under fire for judge shopping practices by litigants won’t change its case assignment policies — leaving few other plausible pathways to address the issue.

Majority Leader Chuck Schumer (D-N.Y.) said Monday the “Senate will consider legislative options” after US Chief District Judge David Godbey told him in a letter that Northern District assignment rules would stay in place. However, partisan divisions make it unlikely that Congress could pass a bill addressing judge shopping.

“It’s hard to imagine legislation getting out of Congress—even though it should be a no-brainer,” said Stephen Vladeck, a law professor at the University of Texas at Austin School of Law.

That leaves a Supreme Court decision addressing the topic or a lengthy rulemaking process among the only viable paths for a nationwide curb, and there’s disagreement within the judiciary whether it even have the authority to adopt such a measure.

The Northern District in particular has been criticized for its case assignment policies that result in lawsuits being filed in certain divisions automatically being heard by specific judges. US District Judge Matthew Kacsmaryk, who hears all civil cases filed in Amarillo, in particular has seen his court become the focus of scrutiny over judge shopping, as conservatives file challenges there including one to the abortion pill mifepristone.

The federal judiciary’s policy-making body, the Judicial Conference, last month adopted a policy urging courts to change their case assignment procedures to avoid litigants filing in courts where they think they’re more likely to have a favorable outcome. In guidance issued by a judicial committee, district courts were told that cases seeking national or state-wide relief should be randomly assigned throughout the full district.

In the letter released Monday, Godbey wrote that he and the other judges in his district met on March 27, and the “consensus was not to make any change to our case assignment process at this time.”

Schumer had urged Godbey in a March 21 letter to adopt such a policy “as soon as possible.” The top Senate Democrat referenced a previous letter exchange with the judge, saying the “logistical issues” that were raised then wouldn’t apply here, as only a few civil cases would be affected by the change.

Some top Senate Republicans urged chief judges to ignore the policy when it was initially thought to be mandatory. In a follow-up letter to top judiciary officials also sent last week, Senate Minority Leader Mitch McConnell (R-Ky.) and others said they were “pleased that the judiciary has chosen not to interfere in the legislative process.”

A federal judiciary advisory committee is separately weighing a rule addressing forum shopping. However, during its most recent public meeting in January, members raised concerns that they might lack the authority to pass such a rule, but said they should keep studying the issue in case Congress decides to take action on it. A federal statute currently says that case assignment rules are set by chief district judges.

The Justice Department has pushed back against the idea the committee lacks the authority to create such a rule, and has argued that the courts could adopt a number of proposed policies to address judge shopping worries.

Amanda Shanor, assistant professor of legal studies and business ethics at the the Wharton School of the University of Pennsylvania, has called for such a rule to be implemented. She said that a binding rule can be created under an act that allows the Supreme Court to set the rules of procedure for federal courts.

“The actions of the Northern District of Texas clearly demonstrate that a rule is still needed despite the policy,” Shanor said.

Vladeck said that he thinks the focus might shift to the Supreme Court, either through its rulings or its role in changing the federal rules on how civil cases proceed through courts. “But the more the Northern District becomes an outlier nationwide, the more I have to think it’s only underscoring why random assignment is better for all involved,” he added.

To contact the reporter on this story: Jacqueline Thomsen in Washington at [email protected]

To contact the editors responsible for this story: Seth Stern at [email protected] ; John Crawley at [email protected]

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Intra-group assignment of intellectual property rights | Practical Law

Intra-group assignment of intellectual property rights

Practical law uk standard document 3-422-4542  (approx. 21 pages).

• Practical Law

Intellectual Property Licensing Toolkit

Practical law toolkit 3-569-9765  (approx. 16 pages).

• Generating revenue through commercial exploitation of IP.
• geographically; or
• into new product lines.
• Settling infringement claims.
• Selling a business or assets, where the seller continues to need the IP for its retained business.
• Evaluation and Option Agreement for a Patent License
• Patent and Know-How License Agreement (Pro-Licensor)
• Patent and Know-How License Agreement (Short Form)
• Patent License Agreement (Pro-Licensee)
• Patent License Agreement (University Licensor, Pro-Licensee)
• Patent Sublicense Agreement
• Patent Sublicense Agreement (Pro-Sublicensor, Short Form)
• Product License and Commercialization Agreement
• Patent License Agreement: Earned Royalties Clause
• Patent License Agreement: Minimum Royalty Clause
• Patent License Agreement: Patent Challenge Clause
• Patent License Agreement: Up-Front Payment Clause
• Patent License Agreements
• Patent Licensing: Negotiating a Reasonable Royalty
• Standard-Essential Patent Licensing Management
• Patent License Checklist
• Patent Licensee Standing and Enforcement Rights Analysis Charts
• Key Negotiating Points in Academic IP Licenses
• Trademark License Agreement (Pro-Licensee)
• Trademark License Agreement (Pro-Licensor)
• Trademark License Agreement (Short Form)
• Trademark Permission-to-Use Letter
• Trademark License Agreement: Trademark Use Guidelines
• Co-Branding Trademark Cross-License Agreement
• Merchandising License Agreement
• Product Placement Agreement (Pro-Advertiser)
• Product Placement Agreement (Pro-Producer)
• Trademark License Agreements
• Merchandise Licensing: Overview
• Product Liability of Trademark Licensors
• Trademark Licensing in the Cannabis Industry
• Drafting and Negotiating a Trademark License Chart
• Trademark License Checklist
• Co-Branding Agreement Checklist
• Expert Q&A: Trademark Licensing and Accidental Franchises
• Copyright License Agreement (Pro-Licensee)
• Copyright License Agreement (Pro-Licensor)
• Book Publishing Agreement (Trade Books)
• Clip License (Pro-Licensee)
• Clip License (Pro-Licensor)
• Electronic (E-Book) Publishing Agreement
• Intellectual Property License for Advertising (Pro-Licensor)
• Master Use License Agreement (Motion Picture Use)
• Materials License (Pro-Licensee, Audiovisual Work)
• Materials License (Pro-Licensor, Audiovisual Work)
• Music Synchronization License Agreement (Motion Picture Use)
• Non-Objection (Limited Waiver) Letter
• Photograph/Image License Agreement (Pro-Licensee)
• Program License Agreement (Pro-Licensee)
• Quitclaim Intellectual Property License Agreement (Work of Authorship)
• Website Content License Agreement (Pro-Licensor)
• Copyright License Agreements
• Book Publishing Contracts (Trade Books)
• Creative Commons Licensing
• Music Licensing
• Copyright License Checklist
• Music Licensing Chart
• Negotiating a Book Publishing Contract (Trade Books) Checklist
• Program License Agreement Chart
• Music Licensing: A Practical Guide

Trade Secret

• Trade Secret and Technology License Agreement
• Trade Secret License Agreements
• Data License Agreement (Pro-Licensee, Short Form)
• Data License Agreement (Pro-Licensor, Short Form)
• Data as IP and Data License Agreements

Right of Publicity

• Appearance Release
• Appearance Release (Minor)
• Interview Release
• Model Release
• Model Release (Minor)
• Publicity Waiver and Release

Intercompany

• Intercompany Copyright License Agreement
• Intercompany Intellectual Property License Agreement
• Intercompany Patent License Agreement
• Intercompany Trademark License Agreement

Special Considerations

• Intellectual Property Cross-License Agreement (Carve-Out or Spin-Off)
• Licensor Consent to Assignment of Intellectual Property License
• IP License Clauses: Effect of Licensor Bankruptcy
• IP License Agreement: Alternative Dispute Resolution Clause (Multi-Tiered)
• IP License Agreement: Sublicensing Clause
• IP License Agreement: Taxes Clause
• Antitrust Issues in Intellectual Property Licensing: Overview
• Arbitration Clauses in Patent License Agreements
• Intellectual Property: Sublicensing
• IP Licenses and Bankruptcy
• IP Licenses: Restrictions on Assignment and Change of Control
• Terminating Licenses of IP Rights (US)
• IP Licenses: Restrictions on Assignment and Change of Control Flowchart
• Expert Q&A on Artificial Intelligence (AI) Licensing
• Trade Marks
• United States