Intellectual property assignment agreement

What it is and when it is used

An IP assignment agreement transfers all right, title and interest in identified intellectual property from one party to another. The defined term "Intellectual Property" is broad: patents and patent applications, copyright, trademarks, trade secrets, know-how, registered and unregistered designs, database rights and domain names.

It is used whenever a business needs to own, and not merely use, something another person created. Typical cases are a start-up taking over code or inventions that a founder built before the company existed, a company acquiring a specific portfolio of rights from another business, and a client securing ownership of work produced by a contractor. Once signed, the Assignor keeps no rights in the assigned IP and may not use, license or exploit it, except as the agreement expressly permits.

Who signs it and in which role

Two parties sign:

• The Assignee, the company that acquires the intellectual property.
• The Assignor, the individual or company that owns or created it and transfers it.

The Assignee may pass the agreement and the assigned IP to a successor or affiliate without the Assignor's consent. The Assignor needs the Assignee's written consent to transfer the agreement.

Key clauses

Scope of assignment

This clause sets how much is transferred. There are three options: all IP related to a defined subject matter or project, including improvements and derivative works; only the items listed in a schedule, with everything else expressly retained; or all IP created during a defined period, limited to what was made with the Assignee's resources or relates to its business. You fill in the subject matter or project, and the start and end dates where the period option is used.

Prior inventions

This clause deals with IP the Assignor already owned before the agreement. It can be listed in a schedule and excluded, with a licence to the Assignee if it is built into the deliverables; the Assignor can state that there are no relevant prior inventions; or prior IP can stay with the Assignor while the Assignee receives a broad, perpetual, royalty-free and sublicensable licence.

Moral rights waiver

Moral rights are the author's right to be named and to object to derogatory treatment of the work. The options are a full waiver (with a promise not to assert rights that cannot be waived), a waiver of the integrity right only, with the Assignor still credited where commercially practicable, or no waiver.

Consideration

The Assignor is paid by a lump sum, by royalties on net revenue with quarterly reports and an annual audit right, or by shares in the Assignee.

Assignor representations and warranties

These are the Assignor's promises about the IP. A comprehensive set covers ownership, originality, non-infringement, absence of liens and claims, and no prior inconsistent grants, surviving for a set period. A limited set covers only ownership and authority, with the IP otherwise transferred "as is". A knowledge-qualified set gives the main promises only as far as the Assignor actually knows after reasonable inquiry.

Cooperation and further assurances

After signing, the Assignor may need to sign documents to record the transfer with patent, copyright and trademark offices or to help enforce the rights. The options are full cooperation backed by an irrevocable power of attorney, reasonable cooperation at the Assignee's expense capped at a number of hours per year, or cooperation limited to registration documents.

Third-party IP and open source

This clause handles components the Assignor does not own. The Assignor can promise there are none; disclose them in a schedule and confirm they use permissive licences only (no copyleft terms such as GPL); or disclose all components of any licence type, with the Assignee accepting the compliance duties.

Reversionary rights (optional)

This optional clause lets rights return to the Assignor if the Assignee does not make real commercial use of the IP within a set number of months, or if the Assignee becomes insolvent or is wound up. The alternative is an absolute and irrevocable assignment.

The agreement also contains standard terms on when title passes, an indemnity from the Assignor for breach of warranties, infringement that existed before the assignment and undisclosed encumbrances, and confidentiality.

What the two sides usually negotiate

The Assignee wants the widest transfer, firm promises and no way back. The Assignor wants a narrow transfer, limited exposure and some protection if the IP is never used. The balanced positions in the skill, which Dealroom proposes as the middle ground when the two sides disagree, are:

• Prior inventions: listing them in a schedule and excluding them, with a licence for anything built into the deliverables, or leaving them with the Assignor under a broad licence.
• Moral rights: waiving the integrity right while the Assignor keeps the right to be credited.
• Warranties: knowledge-qualified representations, described in the skill as an acceptable compromise for most transactions.
• Cooperation: reasonable cooperation at the Assignee's expense, without a power of attorney.
• Open source: disclosed components under permissive licences only.

On scope, listing specific items sits closest to the centre, while an assignment of all related IP leans strongly towards the Assignee. On payment, the three methods lean only slightly one way or the other, so the choice usually follows the deal: a lump sum gives a clean break, royalties share the upside, and equity preserves cash. Reversion is a real point of tension: reversion if the IP is not used favours the Assignor, and an absolute assignment favours the Assignee.

Jurisdictions and languages Dealroom supports for it

Dealroom offers this agreement for California, England and Wales and Spain, drafted in English or Spanish. The California version applies California law and courts and includes the Labor Code section 2870 limit and section 2872 notice. The England and Wales version applies English law and courts and refers to the writing and signature requirement for copyright assignments under the Copyright, Designs and Patents Act 1988 and to registration of patent assignments under the Patents Act 1977. For an assignment drafted natively under the Spanish Intellectual Property Act, see the Spanish IP assignment agreement.

Common mistakes

• A vague scope. The skill warns that the scope must be clearly defined to be enforceable, and that an overly broad scope may be challenged.
• Forgetting prior inventions. Without a schedule, the Assignor may transfer valuable pre-existing IP by accident, or later claim that key IP was never transferred.
• Ignoring employee limits in California. A period-based assignment from an employee cannot reach personal-time inventions protected by section 2870.
• Treating moral rights as transferable. They can be waived, within limits, but not assigned; US visual art rights under VARA cannot be waived.
• Overlooking open source. The Assignor cannot assign what it does not own, and copyleft licences can force the release of proprietary code.
• Not planning for registration. Without a cooperation clause, or with a narrow one, the Assignee may need to go to court to compel the Assignor to sign filings.
• No real consideration. A transfer with no payment and no deed may not be enforceable.

# 1. Read the clauses, options and the facts it needs
curl https://dealroom.todo.law/api/v1/agent/templates/IP_ASSIGNMENT \
  -H "Authorization: Bearer drk_YOUR_KEY"

# 2. Create the contract (clauses you leave out take the default option)
curl -X POST https://dealroom.todo.law/api/v1/agent/deals \
  -H "Authorization: Bearer drk_YOUR_KEY" \
  -H "Content-Type: application/json" \
  -H "Idempotency-Key: $(uuidgen)" \
  -d '{
    "schema": "dealroom.solo-intake/1",
    "contractType": "IP_ASSIGNMENT",
    "governingLaw": "ENGLAND_WALES",
    "language": "en",
    "dealName": "Example IP_ASSIGNMENT",
    "selectionPolicy": "defaults"
  }'