An Intellectual Property Agreement (“Intellectual Property Agreement”), also called an Intellectual Property Transfer Agreement or Intellectual Property Assignment Agreement, enacts and formalizes an agreement between two companies for the purchase and sale of intellectual property rights. The Intellectual Property that is purchased may consist of copyrights, trademarks, moral rights and/or patents. (Moral rights are recognized in Europe, but not in the United States. Therefore, a transfer of moral rights would only apply in an international agreement.) Unlike an IP License Agreement, the buyer or transferee in an IP Transfer Agreement takes and has exclusive ownership and control of the IP rights, and is free to use those rights as they wish.
When drafting an IP Agreement, be sure to consider including the following provisions:
1. Assignment and Waiver of Moral Rights. Moral rights, recognized in Europe but not in the US, imply general rights with respect to intellectual property. In this provision, the assignor must irrevocably and in perpetuity waive, in favor of the Assignee, all moral rights in the transferred intellectual property, including the following:
* has. The right to restrict or claim damages for any distortion, mutilation, or other modification of the transferred IP;
*b. The right to be associated with the transferred IP; Y
* against The right to restrict the use or reproduction of transferred IP
*d. This waiver will be binding on the heirs, executors, employees, directors and all successors involved in the creation of the IP.
2. Representations and Warranties. It is important to include a representations and warranties paragraph in the agreement where the transferor promises that they have full authority to assign the transferred intellectual property, free and clear of any material encumbrances, encumbrances or claims against the property. The transferor must also promise that it has full authority to waive all moral rights.
3. Confidentiality. The transferor must promise, by itself, to its officers, directors, shareholders, etc., that it agrees that, except with the express prior written consent of the transferee, it will not disseminate, disclose or use, or allow to be used, any of the intellectual property transferred, since at the signing of the contract the IP is the property of the assignee.
4. Improper damage. The assignee may want to include a provision whereby the assignee must admit that damages by themselves may not be an adequate remedy for a breach of the agreement. In the event of a breach, the assignee’s rights may be enforceable by specific performance, injunction, or other equitable remedy, as opposed to statutory remedies.
5. Assignment of the Contract. The assignee may request your prior written consent before the assignor can assign the agreement to a third party.
6. Applicable law. The parties must agree which state will govern the agreement and, if they wish, may include a binding arbitration provision in an effort to seek a speedy resolution of any dispute.
These are the key provisions that should be included in an Intellectual Property Agreement. To read and download actual intellectual property agreements, please visit the agreements section of this website.