How To Draft Intellectual Property Assignment Agreement

The IP assignment agreement, also known as an IP transfer agreement, ensures that when an employee works on behalf of a company to generate an intangible property, the corporation retains the rights to the creation.

Types of IP Assignment Agreements

• Copyright Assignment: In India, copyright assignments are governed under the Copyright Act of 1957. According to Section 19 of the Copyright Act of 1957, the deed of assignment must indicate the ‘rights assigned’, the length and territorial scope of the assignment, and any royalty payable. If the duration of the assignment is not specified, it will be deemed to be five years, and if the territorial extent is not specified, it will be deemed to extend throughout India, as confirmed in the Delhi High Court’s decision in Pine Labs Pvt. Ltd. vs Gemalto Terminals India Pvt. Ltd & Ors. FAO (OS) 635 & 636 of 2009. Section 19A describes the provisions for resolving disputes in copyright assignment. According to the section, the assignor has the right to apply for revocation of the assignment with the Copyright Board if an assignee fails to adequately exercise the rights assigned to them and the board determines that the failure was not caused by the assignor’s act or omission.
• Patent assignments: The Patents Act of 1970 is the statute that governs patent assignment. This statute allows patents to be assigned in either a partial or whole manner, both exclusive and non-exclusive. Section 68 of the Patents Act, 1970 says that a patent assignment must be made in writing and then registered with the Controller to function as a legally enforceable contract.
• Design assignment: An Assignment of Design can be obtained under the provisions of Section 15 of the Copyright Act of 1957 or through the instrument of design described in Rule 37 of the Designs Act of 2000. An application to register the title must be filed within six months following the assignment instrument’s execution.
• Assignment of the trademark: A registered trademark can be assigned by Rule 68 of the Trademark Rules, 2003, by submitting a request on Form TM-23 or 24, depending on whether the assignment is made to the assignee exclusively or to the assignee and the proprietor. This application should include complete information about the applicant’s trademark claim, as well as a fully certified copy that must be presented to the Registry for inspection at the time of application.

How to Draft Intellectual Property Assignment Agreement

• The first objective is to assess the scope of the assignment, identify the rights assigned, and determine the extent of the assignment. When establishing the scope of an IP assignment, it is also crucial to specify the status of the associated IP.
• An explicit clause detailing the transfer of ownership of the IP must be included in the agreement. This clause defines the assignment’s scope. When IP is assigned perpetually, the right to sue for infringement of IP before the assignment is likewise transferred. If the assignor is to seek any permissions, the agreement must specify the consequences of failing to secure such consent.
• An assignment might be either perpetual or for a specific amount of time. The same must be included in the agreement transferring IP to the assignee. If the parties have agreed on a procedure for renewing the period of the agreement, this should be indicated in the agreement. If the assignment is for a specified period, the agreement must also explain the consequences of its expiration.
• To minimize confusion, the territory for which the assignee has obtained ownership rights to intellectual property must be clearly defined. Because assignment is a transfer of ownership, the assignor will not be the owner of the intellectual property in the specific territory until the agreement’s term ends.
• Generally, when IP ownership is transferred, the right to make future transfers is included. However, in the instance of a fixed-period assignment, the agreement may include a restriction on the assignee’s authority to make subsequent transfers within the term.
• An assignment agreement must include warranties from the IP owner which state the following:

1. The assignor is the exclusive owner of the IP assigned, and he possesses the power and capacity to assign it.
2. The intellectual property has not been licensed; or no right, title, or interest in the property has been created for any third party.
3. IP is free of any obligations, such as infringement of third-party rights.
4. There are no further responsibilities to any third party that are inconsistent with the rights and obligations specified in the agreement.

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