Startup Series Part 2: Using An IP Assignment
By Guya Santomauro, Last updated: 2022-02-07 (originally published on 2019-09-04)
When should an IP Assignment be used by a company?
An an institution should use an Assignment of IP protection whenever an IP right needs to be protected against the potential exploitation from other companies.
The following document should be used mainly when one:
(1) Needs to transfer the IP rights to the company. (The owner will nonetheless receive recognition for his or her creation even when the IP right is transferred to the company.);
(2) A company makes an employee sign an employment agreement that includes an assignment agreement clause. (Giving the company the rightful ownership over any invention created by an employee during the course of their employment.);
(3) A third party develops a separate IP protection on behalf of the company;
(4) The operating company does not want to hold the IP. (A very desirable step taken by companies during their initial stages. It ensures the separation of IP and money, by providing a dual protection of the assets. Thus, there will be a holding company and an operating company.); and
(5) When the IP is licensed. (The original company holds all the rights over the IP, however, if the company decides to make other companies use the IP, the IP must be licensed.)
This article does not constitute legal advice.
The opinions expressed in the column above represent the author’s own.