Intellectual Property Assignment (California) — California, United States | IndexLaw Templates
Intellectual property assignmentCalifornia, United States
Intellectual Property Assignment (California)
An assignment of intellectual property rights from an Assignor to an Assignee under California law: present assignment language, the Labor Code section 2870 invention carve-out with the section 2872 written notice, assignment rather than work made for hire for contractors, no holdover or non-compete, delivery, moral rights, further assurance, recordation, and balanced or Assignor- or Assignee-leaning terms on warranties, indemnity, license back, further assurance and liability. How far the hirer may take assignment of the individual's inventions is settled by the decision card (invention_assignment_limits), from the law of the state, not assumed from the draft. Whether a non-compete or similar restraint can be included and enforced is settled by the decision card (restrictive_covenant_enforceability), from the law of the state, not assumed from the draft.
What it covers
Assignments of copyright, patents, trademarks, software and know-how by an employee, contractor, founder or seller to a person or company, governed by California law.
The California invention carve-out and written notice, and the consequence of treating a contractor's work as work made for hire.
Consideration, delivery, moral rights waiver, further assurance, recordation at the federal offices and optional license back and improvements.
What it does not cover
Employment contracts or full employee invention agreements, which need their own terms.
Licenses, options and exclusive distribution arrangements where ownership does not pass.
Assignments inside a share or asset purchase that need a full purchase agreement.
Rights governed by the law of another state or country, or non-compete and non-solicit terms, which this template does not contain.
Document preview18 sections
INDEXLAW / CONTRACT LIBRARYAGREEMENT TEMPLATE
Intellectual Property Assignment (California)
California, United States
Highlighted blanks are the details your parties fill in.
Parties
Date of this assignment: [TO BE CONFIRMED — Date of assignment].
Parties: [TO BE CONFIRMED — Assignor (name and details)] (the "Assignor") transfers rights to [TO BE CONFIRMED — Assignee (name and details)] (the "Assignee") on the terms below.
Key Terms
"Assigned Materials" means the works, inventions, software, designs, data and know-how described here: [TO BE CONFIRMED — Assigned Materials (describe the works, inventions, software, data)].
"Relationship" means the capacity in which the Assignor created the Assigned Materials, which is an independent contractor of the Assignee.
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"Registered Rights" means the patents, applications, registrations and domain names listed here: [TO BE CONFIRMED — Registered Rights (registration numbers and applications)].
"Excluded Inventions" means the inventions and materials that stay with the Assignor and are not transferred, being: [TO BE CONFIRMED — Excluded Inventions and retained prior materials].
"Consideration" means [TO BE CONFIRMED — Consideration].
"Payment Period" means 30 days.
"Delivery Period" means 14 days.
"License-Back Purpose" means the use the Assignor may keep, being: [TO BE CONFIRMED — License-back purpose].
"Liability Cap" means the Consideration received.
"Forum" means the courts sitting in Santa Clara County, California.
Definitions
"Intellectual Property Rights" means copyright and related rights, patents and rights to inventions, trade secrets and know-how, trademarks, service marks, trade dress and domain names together with their goodwill, design rights, rights in data and software, and every similar right anywhere in the world, including applications, renewals, extensions and the right to sue for past infringement.
"Assigned IP" means all Intellectual Property Rights in or arising from the Assigned Materials, whether they exist now or arise later, other than the Excluded Inventions and moral rights, which the Moral Rights clause deals with.
Assignment
In return for the Consideration, the Assignor hereby assigns to the Assignee all of its right, title and interest in the Assigned IP, for the whole life of each right and everywhere in the world. This assignment is made in writing and is signed by the Assignor so that it transfers copyright ownership.
Any part of the Assigned IP that does not yet exist, including copyright in material not yet written and rights that arise only on registration, is assigned to the Assignee by this clause as soon as it comes into being, without another document. The Assignor holds it for the Assignee until then.
The assignment includes the right to sue for infringement of the Assigned IP whenever it happened, and to keep the damages and profits recovered. The Assignor will join in any proceeding if the court needs it to.
The Assigned IP includes the Registered Rights and every right to claim priority from them, to file for protection in other countries and to apply for, obtain and renew registrations.
A trademark or service mark in the Assigned IP is transferred together with the goodwill of the business in which it is used. The Assignor will not use the mark or a confusingly similar one after the date of this agreement, except under the License Back clause. A mark that is the subject of an intent-to-use application is not assigned until the law allows it, and the Assignor will hold it until then.
California Employee and Contractor Inventions
The Assigned IP does not include an invention that the Assignor developed entirely on its own time without using the Assignee's equipment, supplies, facilities or trade secret information, unless the invention either relates at the time of conception or reduction to practice to the Assignee's business or to its actual or demonstrably anticipated research or development, or results from work the Assignor performed for the Assignee. If this agreement contained a term that required assignment of such an invention, the term is against the public policy of California and does not bind the Assignor. The Assignee may ask the Assignor to disclose, in confidence, inventions made during the Relationship so that it can check whether they fall within this clause.
The Assignee gives the Assignor this written notice when this agreement is made: the assignment in this agreement does not apply to any invention that qualifies fully under the clause called California Employee and Contractor Inventions above, which follows California Labor Code section 2870. The Assignor acknowledges receiving the notice and keeps a copy of this agreement. If the Assignor says an invention is excluded, the Assignor must show that it meets the conditions.
No Assigned Materials are transferred as a work made for hire, and nothing in this agreement creates an employment relationship between the Assignee and the Assignor or the Assignor's personnel. The Assignee takes title only by assignment. The parties know that, in California, a signed agreement that treats a commissioned work as a work made for hire can make the commissioning party the employer of the individual author for workers' compensation and unemployment insurance, and they have used an assignment to avoid it.
The Assignor does not assign any invention that it conceives after its Relationship with the Assignee ends, and this agreement does not stop the Assignor from working for anyone, including a competitor of the Assignee. The only restriction on the Assignor after the Relationship is the duty to keep the Assignee's confidential information and trade secrets confidential.
Consideration
The Assignee pays the Consideration to the Assignor on signing this agreement, to the account the Assignor names in writing. The Assignor confirms that the Consideration is adequate and that the assignment does not depend on any other promise.
Each party bears its own tax on this transaction. If the law requires the Assignee to withhold tax from the Consideration, it may do so, must pay the amount to the tax authority, and must give the Assignor a receipt. The Assignor will give the Assignee a completed IRS Form W-9 or other tax form before payment.
Delivery
Within the Delivery Period the Assignor delivers to the Assignee the Assigned Materials in the form in which they are held, with source files, drawings, notebooks and records, and the names of the persons who contributed to them.
After delivery the Assignor deletes or destroys its copies of the Assigned Materials, apart from copies it needs under the License Back clause, copies the law requires it to keep and copies of the Excluded Inventions, and each retained copy stays subject to the Confidentiality clause.
Moral Rights
To the extent the law allows, the Assignor waives, and will not assert, any right of attribution, integrity or similar personal right in the Assigned Materials against the Assignee, its successors and licensees. For works of visual art within 17 U.S.C. section 106A, the waiver covers the identified works and their modification, display and reproduction by the Assignee.
Further Assurance
The Assignor will sign the documents and do the things the Assignee reasonably requests, at the Assignee's cost, to record, register, defend or enforce the Assignee's title to the Assigned IP, including a short-form confirmation of this assignment for recording.
If the Assignor does not sign a document the Assignee is entitled to under the Further Assurance clause within 10 business days after a written request, the Assignor appoints the Assignee as its agent to sign that document in the Assignor's name for the purpose of vesting, recording or perfecting title in the Assigned IP, and for no other purpose.
The Assignor will use reasonable efforts to have every employee, contractor and other person who helped create the Assigned Materials sign any document the Assignee reasonably requires to confirm that their rights in the Assigned IP are held by the Assignee. The Assignor represents that each of them has assigned their rights to the Assignor in writing.
Recordation
The Assignee may record this assignment, or a short-form of it, at the United States Patent and Trademark Office and the United States Copyright Office and at any other registry, at its own cost. A copyright transfer is best recorded against an identified registered work so that the record gives notice to others, and a patent or trademark assignment should be recorded within three months to protect against a later purchaser. The Assignor will give the Assignee the information it needs to do so. The Assignor will not assign, license or charge the Assigned IP to anyone else, and if the Assignor acknowledges its signature before a notary, the acknowledgment is evidence that it signed.
The parties know that federal copyright law may let an individual author terminate a grant of copyright made in this agreement after a statutory period, whatever the agreement says, and that this does not apply to a work made for hire. Nothing in this agreement is a waiver of that right, and it does not limit the Assignee's right to use derivative works prepared before termination as that law allows.
Warranties
Each party warrants that it has the power and authority to enter into and perform this agreement and that signing it breaches no agreement or order that binds it.
The Assignor warrants that on the date of this agreement it is the owner of the Assigned IP and entitled to assign it, has not assigned, licensed or charged it except as disclosed in writing, and knows of no claim that it is invalid or infringes any right. It does not warrant that the Assigned IP is valid or enforceable.
Indemnity
The Assignor will pay the Assignee's losses, including reasonable legal fees, that arise from a third party's claim that it owns or has a right in the Assigned IP, if the claim results from a breach of the title warranty. The Assignee must tell the Assignor promptly of the claim and let it control the defense.
Limitation of Liability
The Assignor's total liability arising out of this agreement is limited to the Liability Cap, except for fraud, willful misconduct and any liability that cannot lawfully be limited. Neither party is liable for loss of profit or indirect loss.
License Back
The Assignee grants the Assignor a non-exclusive, royalty-free, worldwide license to use the Assigned IP only for the License-Back Purpose. The license cannot be assigned or sub-licensed, except to affiliates and contractors working for the Assignor on that purpose, and ends if the Assignor materially breaches this agreement and does not remedy it within 30 days.
Improvements
For the Improvement period of 6 months after the date of this agreement the Assignor tells the Assignee about improvements to the Assigned Materials that it makes using the Assigned IP, and the Assigned IP includes them, except an invention that the Excluded Inventions clause or the California invention clause leaves with the Assignor.
Confidentiality
The Assignor will keep confidential the non-public parts of the Assigned Materials and the terms of this agreement, and will use them only as this agreement permits, for three years after the date of this agreement and for trade secrets for as long as they remain trade secrets.
Under 18 U.S.C. section 1833(b), an individual is not criminally or civilly liable under any federal or state trade secret law for disclosing a trade secret in confidence to a federal, state or local government official or to an attorney solely to report or investigate a suspected violation of law, or in a lawsuit document filed under seal. An individual who sues for retaliation for reporting a suspected violation may disclose the trade secret to his or her attorney and use it in the proceeding if the filing is under seal and no disclosure is made except by court order.
General
A notice under this agreement must be in writing and sent to the Assignor at [TO BE CONFIRMED — Assignor notice address] and to the Assignee at [TO BE CONFIRMED — Assignee notice address], or to a new address a party notifies. A notice by hand or courier is received on delivery, and one by email on the next business day.
Each party pays its own costs of preparing and signing this agreement. The Assignee pays the official fees for recording the assignment.
The Assignee may transfer its rights under this agreement with the Assigned IP. The Assignor may not transfer its rights or duties without the Assignee's written consent. This agreement binds and benefits the parties' successors.
This agreement is the whole agreement about the Assigned IP and replaces earlier discussions about it. A change must be in writing and signed by both parties. If a provision is unenforceable, the rest stays in force. The parties may sign electronically and in counterparts.
Governing Law and Disputes
This agreement is governed by the law of the State of California, without regard to its conflict-of-laws rules, except where federal law governs the transfer of a patent, copyright or federally registered trademark.
The courts of the Forum have non-exclusive jurisdiction over any dispute about this agreement. Either party may ask any competent court for urgent injunctive relief to protect its rights.