An Overview of Intellectual Property Contracts

Intellectual property contract

An Intellectual Property agreement is one of the most common types of commercial contracts. When employees make inventions in the course of their dependent employment, questions arise about the protection of intellectual property rights. One way of providing legal protection is to prepare an Intellectual property contract.

In this article, you will learn more about all types of intellectual property contracts, their use and more.

What is the intellectual property contract and why is it important

An intellectual property contract is a formal agreement between employees and employers that sets out the conditions for protecting the company’s intellectual property when employees make inventions in the course of their work.

Intellectual property (IP) refers to a group of intangible and tangible assets, including patents, trademarks, copyrights and trade dress, all designed to protect the originality of ideas.

Types of intellectual property contracts

To protect intellectual property rights, there are various types of contracts that the owner of intellectual property enters into.

IP Assignment Agreement

An intellectual property transfer agreement transfers all or part of the original creator’s intellectual property rights to another person or entity in exchange for consideration. Through this type of agreement, the original owner transfers his or her right to develop or sell that intellectual property to another person or entity. 

The types of assignments can be:

  • Assignment of patents;
  • Assignment of trademarks;
  • Assignment of designs;
  • Assignment of copyright;
  • Assignment of confidential know-how;
  • Assignment of geographical indications.

Non-disclosure agreement

To protect information that is intellectual property critical to the operation of a business, such as trade secrets, business plans or structures, technology or codes, you may need to sign a confidentiality agreement when considering entering into a business relationship.

Confidentiality agreements are often entered into between parties planning a deeper business relationship (e.g., two parties negotiating a major licensing agreement) to protect future disclosure of confidential information even if the broader transaction proves unsuccessful. 

In this case, the confidentiality obligations in the NDA continue to apply. Clauses included in confidentiality agreements are also often found in other documents such as employment or consulting contracts.

Technology licence or technology transfer agreements

​​Through this agreement, the intellectual property owner allows another person or company to use the rights to the technology he or she has developed in exchange for a remuneration agreed between the parties. In this way, knowledge of the technology is transferred. 

This helps small companies to develop as they acquire licences for the technology from larger companies to produce and bring the product to market.

Trademark licensing and franchising agreement

Trademarks help identify the products and services of a company or organisation through a licensing or franchising agreement. 

Goodwill acquired through such a trademark is transferred to another entity that helps promote the business or operates a business under the same trademark and maintains the same standard of business and its goods and services.

Copyright licence agreement

Through this agreement, the copyright owner may grant a “licence” to other persons or companies to use the copyright in monetary terms, for example by reprinting, reproducing or distributing the original works on the owner’s terms. The licence may be very limited in scope, time or territory.

In exchange for this right, the copyright holder receives a royalty or remuneration agreed upon by the parties. In this case, the copyright is not permanently transferred to another person but is licensed for a specific period.

Invention Assignment Agreement

This contract gives the employer the rights to his employee’s work for the duration of his employment. Usually, the employment contract contains a clause stating that all the employee’s creations are a product of the employer’s company. 

In addition, such contracts and clauses also protect the company’s confidential information. Intellectual property rights in an employment relationship are by default transferred to the employer under the Copyright Act, which is not the case for trademarks and patents. Therefore, a separate agreement on the transfer of inventions is required for this purpose.

Music Licensing Agreement

A music licence agreement is an agreement between a music author and a third party to exchange his or her composition for a fee, giving the third party the right to publish or distribute the music in various forms.

Research and development agreement

These agreements are made between a company and an individual or organisation to conduct research and develop an idea, product or service. They are usually entered into in relation to:

  • research in connection with the manufacture of hardware products; or
  • professors conducting research at universities; or
  • academics working for companies.   

The company or university includes assignment provisions to transfer the developed intellectual property to itself.

Intellectual work

Recruitment agreements

Such agreements are made between companies to commission an artist to create a specific work or to create a work to which the company wants to hold the copyright, such as designs, logos, corporate videos, etc. It is important to define the work to which the intellectual property is transferred.

E-book publishing agreement

Generally, an e-book publisher acquires the rights to publish an e-book written by the author or owners of a written book manuscript. Under this agreement, the e-book publisher receives the right to publish the written manuscript as an e-book. The owner receives a royalty for the sale of these e-books or a certain remuneration. 

Depending on the publisher, this agreement may be combined with a print publishing agreement (for publication in physical format) or be separate from it.

Elements of intellectual property contracts

A properly structured Intellectual Property agreement can save you from exposing your valuable assets to the public without you being aware of it. 

The following are the typical elements of an IP agreement:

  • Official names and contact information of the parties involved;
  • Acknowledgement that the continuation of the relationship is dependent on the agreement;
  • Acknowledgement that you intend to share confidential information with the other party;
  • Assurances that derivative works, add-ons, etc. are part of the original property;
  • Prohibition on soliciting additional business based on the use of your intellectual property;
  • Provision binding respective successors and assigns to the same contract;
  • Recognition of the obligations of third parties, including state actors;
  • Applicable contract law;
  • Define the name of the agreement;
  • Exhibits that clearly outline the property disclosed;
  • Relationship of the parties (e.g. typically independent contractor);

These agreements must be carefully thought out to ensure that you take all available precautions to protect your property from the use by a bad actor.

Example

For most purposes, an IP agreement example will give you the protection you need. These stand-alone documents can be used in place of non-disclosure agreements and can be used when hiring a marketing firm or freelancer, or when disclosing trade secrets for funding purposes.

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INTELLECTUAL PROPERTY AGREEMENT

 

This Intellectual Property Agreement is dated________________ and entered into between [COMPANY NAME] (hereinafter together with its affiliates referred to as the “Company”) and [CONSULTANT NAME] (the “Consultant”). 

Intellectual Property

  • The parties hereby agree that the Consultant hereby assigns to the Company all present and future rights, titles and interests in and to all intellectual property created and/or discovered in the course of the Consultant’s work.
  • Intellectual Property includes but is not limited to trademarks, service names, service mark registrations, service names, patents, patent rights, copyrights, inventions, licences, permits, regulatory approvals, trade secrets, algorithms, codes, inventions, processes, software, formulae, ideas, concepts and developments.

Prior Inventions

  • The parties agree that any intellectual property that existed before the consultant’s employment remains the exclusive property of the Consultant to the extent that the Consultant has any right, title or interest in it.
  • This Consultant’’s previous inventions are listed below:

 

1.________________________________

2.________________________________

3.________________________________

4.________________________________

5.________________________________

6.________________________________

7.________________________________

8.________________________________

Applications for patents and copyrights

  • The Consultant hereby agrees to cooperate with the Company under this Contract to the fullest extent possible in obtaining copyrights and patents as may be necessary to secure the Company’s ownership of the Intellectual Property. This cooperation shall continue both during the term of the employment contract and after its termination.

Term

  • The term of this Agreement shall commence at ______________________ and shall continue until ______________________.
  • Upon termination of this Agreement, the Company shall acquire exclusive ownership rights to all post-employment intellectual property of the Consultant arising out of or in connection with the Consultant’s work for the Company under this Agreement.

Return of data and documents

  • The parties agree that upon the termination of this Agreement, the Consultant shall promptly return all tangible manifestations of Intellectual Property as directed by Company. This includes but is not limited to drawings, documents, data and notes developed in the course of employment.
  • The Consultant agrees not to make copies or attempt to reproduce embodiments of the material.

Assignment

  • The parties undertake not to transfer the obligations arising from this Agreement to any third party.

Governing law

  • This Agreement shall be governed by and construed in accordance with the laws of ______________.

Alienability

  • If any provision of this Agreement is held by a court of competent jurisdiction to be invalid and unenforceable, the remaining provisions shall remain in force per the intention of the parties.

Entire Agreement

  • This Agreement contains the entire agreement and understanding between the parties for the subject matter hereof and supersedes all prior agreements, understandings, inducements and conditions, express or implied, oral or written, of whatever nature, for the subject matter hereof. The express provisions of this Agreement shall prevail over any other agreement and/or business practice that conflicts with the provisions of this Agreement.

Successors and assigns

  • The Parties agree that this Agreement shall be binding upon the heirs, successors and assigns of the Consultant in favour of the Company and upon the heirs, successors and assigns of the Company.

Amendments

  • The Parties agree that any amendments to this Agreement shall be in writing and signed by both Parties.
  • Amendments introduced by the Parties shall apply to this Agreement.

Signature and date

  • The Parties agree to the terms and conditions set out in this Agreement as evidenced by their signatures below:

 

Consultant

Name: ______________________

Signature: ___________________

Date: _______________________

 

Company

Name: ______________________

Signature: ___________________

Date: _______________________

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After you have completed the adaptation of your IP agreement template, the agreement should be reviewed by the parties involved. When you are both satisfied with the amended wording of the IP agreement template, it is time to obtain signatures.

Now is the time to collect signatures from both parties. 

Conclusion

How you manage your intellectual property can determine the success or failure of your business. Protecting your ideas gives you a huge competitive advantage, and you need the best team you can get to bring your ideas to life. GM Tax Consultancy can help you put together an intellectual property agreement that you can use repeatedly in your business.

You can contact our tax advisors in Barcelona by email or phone.

Resources: https://signaturely.com/contracts/intellectual-property-agreement-template/

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