Assignment is a legal term whereby an individual, the “assignor,” transfers rights, property, or other benefits to another known as the “ assignee .” This concept is used in both contract and property law. The term can refer to either the act of transfer or the rights /property/benefits being transferred.
Under contract law, assignment of a contract is both: (1) an assignment of rights; and (2) a delegation of duties , in the absence of evidence otherwise. For example, if A contracts with B to teach B guitar for $50, A can assign this contract to C. That is, this assignment is both: (1) an assignment of A’s rights under the contract to the $50; and (2) a delegation of A’s duty to teach guitar to C. In this example, A is both the “assignor” and the “delegee” who d elegates the duties to another (C), C is known as the “ obligor ” who must perform the obligations to the assignee , and B is the “ assignee ” who is owed duties and is liable to the “ obligor ”.
(1) Assignment of Rights/Duties Under Contract Law
There are a few notable rules regarding assignments under contract law. First, if an individual has not yet secured the contract to perform duties to another, he/she cannot assign his/her future right to an assignee . That is, if A has not yet contracted with B to teach B guitar, A cannot assign his/her rights to C. Second, rights cannot be assigned when they materially change the obligor ’s duty and rights. Third, the obligor can sue the assignee directly if the assignee does not pay him/her. Following the previous example, this means that C ( obligor ) can sue B ( assignee ) if C teaches guitar to B, but B does not pay C $50 in return.
(2) Delegation of Duties
If the promised performance requires a rare genius or skill, then the delegee cannot delegate it to the obligor. It can only be delegated if the promised performance is more commonplace. Further, an obligee can sue if the assignee does not perform. However, the delegee is secondarily liable unless there has been an express release of the delegee. That is, if B does want C to teach guitar but C refuses to, then B can sue C. If C still refuses to perform, then B can compel A to fulfill the duties under secondary liability.
Lastly, a related concept is novation , which is when a new obligor substitutes and releases an old obligor. If novation occurs, then the original obligor’s duties are wiped out. However, novation requires an original obligee’s consent .
Under property law, assignment typically arises in landlord-tenant situations. For example, A might be renting from landlord B but wants to another party (C) to take over the property. In this scenario, A might be able to choose between assigning and subleasing the property to C. If assigning , A would be giving C the entire balance of the term, with no reversion to anyone whereas if subleasing , A would be giving C for a limited period of the remaining term. Significantly, under assignment C would have privity of estate with the landlord while under a sublease, C would not.
[Last updated in May of 2020 by the Wex Definitions Team ]
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- landlord & tenant
- property & real estate law
- trusts, inheritances & estates
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Assignment of IP
Fact sheet: commercialising intellectual property - assignment agreements.
This fact sheet deals with the assignment of Intellectual Property (IP) rights. An assignment can be beneficial in many business circumstances. Examples may include your company not having the means to undertake commercialisation or preferring to receive a once-off lump sum payment for the innovative technology. This implies having no further concerns regarding the maintenance and enforcement of the IP rights.
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Infographic: Commercialising IP - Assignment Agreements
An IP assignment is a transfer of ownership of an intellectual property right, such as a patent, trade mark or copyright, from one party (the assignor) to another party (the assignee). This infographic adds together the benefits, risks and the key elements of assignment agreements.
IP Guide: Your Guide to IP and Contracts
IP can be transferred or licensed, offered to enter into cooperation agreements or contributed as capital in a joint venture. Protecting and managing IP through well-drafted agreements is key for business success. Therefore, the purpose of this guide on IP and contracts is to be a useful tool regarding IP exploitation and management. It aims to help businesses better understand contracts in the IP field and to get an idea on different key points and how these should be drafted.
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Intellectual property assignment: What it is and how to make one
What would you like to protect?
updated September 1, 2023 · 9min read
What is an intellectual property assignment?
Ip assignment pros and cons, how to complete an intellectual property assignment, intellectual property assignment faq.
Just as with buying and selling physical property, transferring the ownership of intellectual property is an important part of doing business. Whether you're starting a new business, buying product rights, or purchasing a company, an intellectual property assignment can help you smoothly transfer IP ownership rights.
An intellectual property assignment is the transfer of an owner's rights in copyrights, trademarks, patents, trade secrets , or other intangible creations. These transfers may take place on their own or as part of a larger transaction.
An intellectual property assignment provides records of ownership and transfer while also protecting the rights of all parties involved in buying or selling IP. This essential documentation helps establish a clear record of the title for intellectual property.
By having an intellectual property assignment in place, you can help keep your intellectual property safe from illegal use, distribution, and more.
What should an intellectual property assignment include?
An intellectual property assignment includes important details about the transfer of intellectual property and the parties involved. The contents of an IP assignment can be laid out in 17 different sections.
In the intellectual property assignment, you will find:
- Who is involved in the transfer
- What IP is being transferred
- How much the IP costs
- Why the transfer is valid
When done correctly, an intellectual property assignment provides a written acknowledgment of the rights and responsibilities transferred in the sale.
Intellectual property assignments have many advantages, but before transferring your IP in this way, it's important to consider the limitations of IP assignments as well.
Pro: Guaranteed payment at the price negotiated
If a seller decides to give up the ownership rights of their intellectual property using an IP assignment, they can be sure that they will receive the exact compensation stated in the agreement. An IP assignment agreement will also state a strict payment deadline for the buyer, ensuring that the seller is paid by the agreed-upon date.
Pro: No lingering responsibilities
Once an IP assignment agreement goes into effect after being signed by both parties, the seller may no longer have any responsibilities related to the intellectual property involved in the sale. Because of this, the seller can remove themselves from being responsible for any future obligations related to the intellectual property once the agreement has been signed.
Con: One-time payment
Unlike with an IP licensing agreement, the use of an IP assignment transfers all ownership rights of the sellers' intellectual property for a set price. If a seller uses an IP licensing agreement, they will still retain ownership rights, which allows them to control how their intellectual property is used while still receiving income via fees and/or royalties (think renting vs. selling).
Con: Loss of ownership rights
Using an IP assignment agreement, sellers surrender all ownership rights to the intellectual property and no longer have any say over how the IP is used. This gives the buyer complete control and ownership rights of the intellectual property involved.
IP assignments aren't inherently complicated, but it's important to include the right information. The following is how an IP assignment agreement can be crafted. Learn about each section in more detail.
1. Introduction of parties
This section identifies the document as an intellectual property assignment. It should include:
- Each of the parties involved
- The date the document will be signed
Each party is given a name (usually “Assignor" or something similar) that will be used throughout the entire document. The assignor is the party giving up its ownership interest and the assignee is the party receiving it.
Recitals offer up key background information about the parties involved. This section is known as the whereas clause because it explains the intent to transfer intellectual property rights.
3. Assignment of intellectual property
This section covers the agreement and acceptance of the intellectual property assignment. It's important to note that the intellectual property is not described in the agreement itself but in the addendum Exhibit A, which is referenced throughout the assignment.
This section should cover:
- The amount to be paid for the intellectual property
- The time period in which the payment must be made
The payment's due date and price are only enforceable after both parties have signed the agreement.
5. Assignor's representations and warranties
Here is where you will find the assignor's promises about the property that is being sold. There are often at least seven subsections, each addressing a specific promise made by the assignor.
The assignor swears that:
- They are the owner of the IP.
- They have not sold the IP to any third party.
- They have the authority to enter the agreement.
- They have no knowledge that the IP has been plagiarized or taken from any third party without authorization.
- They do not know of any permissions that must be obtained to complete the IP assignment.
- If the IP involved includes a patent , they are unaware of any existing challenges to the validity of the patent. If the IP doesn't include a patent, patent application , or other patent-related materials, you can delete this provision from the representations and warranties.
- The property was not created while the creator was working on behalf of a third party.
If either party would like to include additional promises and warranties, they may do so here.
6. Assignee's representations and warranties
Here is where you will find the assignee's promises about the transaction.
The assignee swears that:
- They have enough funds to pay for the assignment.
If any additional representations or warranties are required, they may be added here.
This section states the assignor's promise to help with any paperwork needed to complete the assignment. Typical documentation can include:
- Filing information about the assignment with a registry office
- The transfer of document titles
If applicable, the assignor may also promise to help with transfer paperwork for filings outside of the country. This information is only needed if it is relevant to your agreement.
Protecting intellectual property is crucial to IP ownership. This section includes each party's future obligations if the intellectual property is found to infringe on a third party's rights.
There are two options provided, and you should choose whichever one works best for your situation.
- The assignor takes all responsibility for the infringement, agreeing to pay all related expenses and costs.
- The assignor makes its responsibilities conditional, greatly limiting their obligations if a claim is brought.
The assignor can't make both promises at once, so only one of these promises should be included in the final agreement.
9. Successors and assigns
If applicable, you may list a successor organization. In the event that a successor is involved, this section will state:
- Who will inherit the IP ownership rights
- Who will be responsible for any ongoing obligations
This section will also state any organizations to which rights and obligations have been permissibly assigned.
10. No implied waiver
In the agreement, one party may allow the other to break an existing commitment in the assignment—for example, if the assignor allows the assignee to make a late payment without penalty.
An attempt to waive a previously agreed-upon commitment is only valid if:
- The waiver is in writing
- The waiver has been signed by the waiving party
If one party allows the other to break a commitment, it does not mean that any other existing commitments are also invalidated.
Here you will list the addresses to which all official and legal correspondence should be delivered.
You will also need to list the mailing address for:
- The assignor
- The assignee
For any digital correspondence, the parties involved may include their email addresses.
12. Governing law
This section grants the parties the option to choose the state laws that will interpret the document. Note that the included language will not affect where a potential claim can be brought.
13. Counterparts and electronic signatures
Both parties may agree to sign the agreement using electronic signatures .
This section allows the agreement to stay valid, even if a part of it is invalidated in the future. For example, if a state law is passed that affects a section of your agreement, only that section will be invalidated.
This will leave the rest of your agreement intact and enforceable.
15. Entire agreement
This section of the document states that the document each party is signing is:
- The official agreement
- Directly related to the issues and IP involved
Even though a party could argue in the future that other enforceable promises may exist, this will provide some protection from those claims.
Here you will find that the headings at the beginning of each section are for organization and should not be interpreted as operational parts of the agreement.
17. Description of intellectual property
Referenced in Section 1, Exhibit A provides a detailed description of all intellectual property involved in the sale. If the description is too vague, the seller may end up giving up more than they intended or vice versa. When completing this section, be sure to be as specific and detailed as possible.
In addition to a detailed description of the intellectual property, note the goodwill that is being sold with the property. Goodwill is the intangible value of the property being sold, often including:
- Reputation with customers
- Relationship with the community
- Brand value that's not tied to a trademark
Don't worry about making the descriptions sound lawyerly—simple, succinct, and complete descriptions should suffice. Attach any relevant registrations or samples (for example, “*See attached drawing").
Consider these common questions and answers when completing an intellectual property assignment.
What's the difference between an intellectual property assignment and a license?
The use of a license allows the licensor to maintain ownership of the intellectual property rights. When using an intellectual property assignment, the assignor is giving up all of their ownership rights to the assignee.
It is always a good idea to have someone witness the assignor and assignee signing and dating the document.
What's the difference between an intellectual property assignment and a lease?
When obtaining the use of intellectual property using a lease, the assignee does not receive any ownership rights. Because of this, the assignor retains all ownership and control of the intellectual property and can dictate how it is used. Depending on the specifics of the lease, the assignor may be compensated via royalties and/or fees.
What is a quitclaim assignment?
A quitclaim assignment is an agreement that transfers all of the seller's rights to the intellectual property without any guarantees that the seller has the right to do so. If a third party is to claim ownership of the intellectual property down the road, the buyer will be on their own to defend the claim.
Do copyright assignments need to be notarized?
While copyright assignments must be done in writing to be valid, notarization isn't required. But it is always a good idea to have someone witness the assignor and assignee signing and dating the document.
Ready to get started? Use this form to create an intellectual property assignment in minutes . If you aren't looking to give up ownership rights of your intellectual property, keep it protected .
by Siege Media, contributor to LegalZoom
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Assignment of intellectual property rights (pro-assignee)
Practical law uk standard document 0-500-7124 (approx. 29 pages).
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Assignment of Intellectual Property Rights
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Assignment of Intellectual Property Rights FAQ
What is an assignment of intellectual property rights.
An Assignment of Intellectual Property Rights sets out the transfer of ownership between the seller and the buyer of a company’s intellectual property.
An Assignment of Intellectual Property Rights allows the seller to get paid for the intellectual property rights and the buyer is free to commercialise (or “exploit”) the intellectual property for any purpose. Intellectual property includes patents, trade marks, designs, copyright, goodwill, and rights in know-how and confidential information (also extending to trade secrets) .
An Assignment of Intellectual Property Rights grants the buyer ownership and consequently the right to use the intellectual property. For trade marks, patents, copyright, and designs, the assignment needs to be in writing in order to be effective .
Intellectual property rights are a valuable intangible asset and an integral part of brand identity. Hence, it is important for a business and its stakeholders to have a clear record about the ownership of intellectual property rights. Intellectual property rights may include patent, trade marks, designs, domain names, and (for a software business) source code and documentation about the software.
If you wish to assign intellectual property rights in the course of a working relationship, such as from an employee or consultant to the company they work for, clauses to that effect are included in our Employment Contract and Consultancy Agreement . If you have already used those documents, you may not need a separate Assignment of Intellectual Property Rights . If you are unsure, we recommend that you seek legal advice before proceeding.
In this Assignment of Intellectual Property Rights , we have assumed that:
- the rights to be assigned fall into six different categories, namely Patents, Registered Trade Marks, Unregistered Marks or Trade Names, Registered Designs, Domain Names, and Software, Source Code and Documentation;
- the founder makes a number of warranties about the rights to be assigned, e.g. he has not previously licensed or assigned any of those rights, and he is not aware of any infringement of those rights; and
- the founder will (at the company’s cost) take any further action required such that the ownership of the rights to be assigned is effectively transferred to the company.
In describing the rights to be assigned, please be as clear and accurate as possible. The transfer of ownership may not be effective if the description is not accurate or clear enough. If you have any uncertainties, please seek legal advice.
Key points included
- Types of intellectual property assigned;
- Intellectual property derived from project-based work;
- Unregistered intellectual property rights (if any); and
- Price of assignment.
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Home / Shop / Assignment of Intellectual Property Rights
Assignment of Intellectual Property Rights
This product constitutes an easily adaptable and comprehensive IP assignment letter agreement, together with a guide that aims to set out how to correctly fill-out the intellectual property assignment letter template and explain all significant provisions so as to allow you to put into effect a valid and legally binding confirmation of intellectual property assignment letter.
A form of this document was originally produced to give comfort to an institutional investor before making a £1 million investment in a UK startup and will be useful when giving notice to an assignee that IP rights have been transferred, providing both parties with peace of mind and a document to refer to as proof of assignment.
The detail below represents the start of the guidance document you will also receive on paying for the template letter agreement.
Clause 1 (Agreement to Execute the Letters Contents) Clause 1 confirms that the assignor of the IP rights has agreed to execute the assignment of their IP rights in accordance with the terms of the letter and the terms of any prior engagement between the assignor and assignee.
Clause 2 (Definitions) Clause 2 defines key terms of the letter that will apply throughout the process of assigning IP rights to another legal person. The definitions of intellectual property rights, intellectual property, and materials are all standard interpretations that are widely used in most IP agreements.
Clause 3 (Assignment of Current IP Rights) This clause relinquishes the assignor of any IP rights that have not already been provided to the assignee over the course of a contract of employment or consultancy.
Clause 4 (Assignment of Future IP Rights) This clause confirms that any future IP rights arising from any materials created by the assignor during their contract of employment or consultancy with the assignee are relinquished.
Clause 5 (Disclosure of Materials) Clause 5 requires the assignor provides the assignee with all materials and data which the assignee deems necessary for the effective use of the assigned IP rights.
Clause 6 (Waiver of Moral Rights) This clause relinquishes any of the moral rights creators of copyrighted works are entitled to for the result of allowing the assignee to freely use the works for any purpose.
Clause 7 (Compulsion to Act for the Fulfilment of This Letter) Clause 7 compels the assignor to take any and all actions to pursue the fulfilment of the clauses within this agreement, whether these actions are necessary or merely desirable, and to ensure that the IP rights transferred in this agreement are vested absolutely with the assignee or the assignee’s successors.
Clauses 8-9 (Boilerplate clauses) Clauses 8-9 are called “boilerplate” clauses. These kinds of provisions are repeated in all kinds of contracts and are responsible for regulating the operation of the contract.
Boilerplate clauses are often standard, and most are not typically heavily negotiated. They are nevertheless important as many contractual disputes depend on the drafting of boilerplate clauses such as entire agreement clauses.
All of the boilerplate clauses contained within this template use standard wording and are drafted as they would be for most agreements.
Where your input is required on the template
All areas that require your input have been highlighted in yellow within the template (except for the execution page). By way of summary, you will need to insert or amend the following information:
- Date the agreement has been validly executed (please see page one);
- Name of assignee company (please see page one);
- Address of the assignee company (please see page one).
- The nature of the individual’s engagement with the company (please see page one).
Execution page (please see page three)
- The signature and name of the assignor;
- The signature of the witness to the agreement;
- The printed name of the witness;
- The address of the witness; and
- The Witness’s occupation.