Intellectual Property Assignment (New York) — New York, United States | IndexLaw Templates
Intellectual property assignmentNew York, United States
Intellectual Property Assignment (New York)
An assignment of intellectual property rights from an Assignor to an Assignee under New York law: a signed present assignment for copyright, the Labor Law section 203-f limit on assigning employee inventions, assignment rather than work made for hire, authors' rights, completion steps, recording at the federal offices, New York choice of law and forum, and balanced or Assignor- or Assignee-leaning terms on promises, indemnity, retained license, completion steps 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 to a person or company, governed by New York law.
The New York limit on assigning employee inventions developed on own time without employer resources.
Price, handover, authors' rights, completion steps, recording at the Copyright Office, Patent and Trademark Office and other registries, and optional retained license and improvements.
What it does not cover
Employment contracts or full employee invention agreements.
Licenses 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 another state's law, or restrictive covenants.
Document preview15 sections
INDEXLAW / CONTRACT LIBRARYAGREEMENT TEMPLATE
Intellectual Property Assignment (New York)
New York, United States
Highlighted blanks are the details your parties fill in.
Parties
This document is signed on [TO BE CONFIRMED — Date signed] and records the following arrangement.
[TO BE CONFIRMED — Assignor (name and details)], called the "Assignor", and [TO BE CONFIRMED — Assignee (name and details)], called the "Assignee", agree as set out in this document.
Key Terms
"Assigned Property" means the works, inventions, code, designs, marks, data and know-how that this document transfers, namely: [TO BE CONFIRMED — Assigned Property (describe the works, inventions, code, marks, data)].
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"Capacity" means how the Assignor came to create or hold the Assigned Property: an independent contractor of the Assignee.
"Registered Rights" means the issued patents, pending applications, registrations and domain names listed here: [TO BE CONFIRMED — Registered Rights (registration numbers and applications)].
"Reserved Property" means what the Assignor keeps and does not transfer: [TO BE CONFIRMED — Reserved Property kept by the Assignor].
"Price" means the value given for the transfer: [TO BE CONFIRMED — Price].
"Payment Window" means 30 days.
"Handover Window" means 14 days.
"Retained Use" means the use of the Assigned Property the Assignor may continue: [TO BE CONFIRMED — Retained use under the license back].
"Liability Ceiling" means the Price received.
"Forum" means the courts sitting in New York County, New York.
Definitions
"Rights" means every form of intellectual property anywhere in the world: copyright and neighboring rights, patents and invention rights, trade secrets, know-how, trademarks and service marks with their goodwill, design and database rights, domain names, software, and applications, renewals and extensions of any of them, together with the right to bring proceedings for infringement.
"Assigned Rights" means all Rights in the Assigned Property, existing now or arising later, except the Reserved Property and the personal rights of authors dealt with in the Authors' Rights clause.
Transfer of Rights
For the Price, the Assignor now transfers and assigns to the Assignee the entire interest in the Assigned Rights, for their full duration and in every country. Because a transfer of copyright ownership needs a writing signed by the owner, the Assignor signs this document for that purpose.
Rights that come into existence only after this document is signed, such as copyright in unwritten parts of the Assigned Property or rights that arise on registration, pass to the Assignee when they arise, and the Assignor holds them for the Assignee until then.
The Assignee may sue for any infringement of the Assigned Rights, including infringement that happened before this document, and keep what it recovers. The Assignor will lend its name to any proceeding where the court requires it.
The Assigned Rights include the Registered Rights, the right to claim priority from them, and the right to apply for, obtain and renew protection for the Assigned Property in any country.
Each trademark or service mark in the Assigned Rights passes with the goodwill of the business it identifies. The Assignor will cease using it, or a confusingly similar mark, once this document is signed, except as the Retained License permits. An application based on an intention to use a mark passes only when the law allows an assignment of it, and until then the Assignor holds it for the Assignee.
New York Employee Inventions
If the Assignor is or was an employee of the Assignee, nothing in this document requires the Assignor to assign an invention that the Assignor developed entirely on its own time, without using the Assignee's equipment, supplies, facilities or trade secret information, except an invention that relates at the time of conception or reduction to practice to the Assignee's business or its actual or demonstrably anticipated research or development, or that results from work the Assignor did for the Assignee. A term of this document that required assignment of an excluded invention would be against New York public policy and unenforceable.
The Assignee may ask the Assignor to describe, in confidence, any invention made during the Capacity so that the parties can agree whether the employee invention limit applies. The Assignee gives this document to the Assignor so that the Assignor knows of the limit.
The parties do not treat any of the Assigned Property as a work made for hire. The Assignee takes ownership by assignment under this document. The federal definition of a work made for hire covers only works prepared by an employee within the scope of employment or certain specially commissioned works that the parties agree in writing to treat that way, and the parties have chosen assignment so that ownership does not turn on that classification.
Price
The Assignee pays the Price to the Assignor when this document is signed, by transfer to the account the Assignor names. The Assignor acknowledges that the Price is enough and that the transfer is not conditional on anything else.
Each party bears its own tax on this transaction. If the Assignee must withhold tax from the Price, it may do so, pays the amount over to the tax authority and gives the Assignor proof. The Assignor will provide a completed IRS Form W-9 before payment.
Handover
Within the Handover Window the Assignor gives the Assignee the Assigned Property in the form in which it is held, with source files, notebooks, drawings, records and the names of the people who contributed.
After handover the Assignor erases its copies of the Assigned Property, apart from copies it needs for the Retained License, copies the law requires it to keep and the Reserved Property. Copies it keeps remain subject to the Secrecy clause.
Authors' Rights
As far as the law permits, the Assignor gives up and will not assert against the Assignee, its licensees or successors any right of credit or of objection to changes in the Assigned Property. For a work of visual art within 17 U.S.C. section 106A, this waiver names the works transferred and permits the Assignee to change, show and copy them.
Completing the Transfer
The Assignor will sign the confirmations and other documents the Assignee reasonably asks for, at the Assignee's cost, to record, register, protect or enforce the Assignee's ownership, including a short-form assignment for filing.
If the Assignor fails to sign a document that the Completing the Transfer clause requires within 10 business days of a written request, the Assignor appoints the Assignee as its attorney-in-fact to sign it in the Assignor's name, only to vest, record or perfect the Assignee's ownership of the Assigned Rights.
The Assignor will use reasonable efforts to have every person who helped create the Assigned Property sign what the Assignee reasonably requires to confirm that their rights are held by the Assignee, and states that each such person has assigned their rights to the Assignor in writing.
Recording
The Assignee may record this document, or a short-form assignment, at the United States Copyright Office, the Patent and Trademark Office and any other registry, at its own cost. For copyright, recording gives notice to others only when the work is registered and identified in the document, and the earlier transfer wins if it is recorded within one month after signing in the United States; for a patent or trademark the transfer should be recorded within three months. The Assignor will provide the details needed and will not deal with the Assigned Rights in any other way. The Assignor may sign before a notary, whose acknowledgment is prima facie evidence that the Assignor signed.
Federal copyright law may allow an individual author to terminate a grant of copyright made in this document after a fixed period, despite any agreement to the contrary, but not for a work made for hire. This document does not waive that right and does not limit the Assignee's use of derivative works prepared before termination to the extent that law allows.
Promises
Each party promises that it has the power to sign and perform this document and that doing so breaks no agreement or order that binds it.
The Assignor promises that at signing it owns the Assigned Rights and may transfer them, has not transferred, licensed or charged them except as it has told the Assignee in writing, and knows of no claim that they are invalid or infringe anyone's rights. It does not promise that they are valid or enforceable.
The Assignor will pay the Assignee's losses, including reasonable legal fees, that result from a third party's claim to own or hold a right in the Assigned Rights where the claim follows a breach of the ownership promise. The Assignee must tell the Assignor promptly and let it run the defense.
The Assignor's total liability arising from this document is limited to the Liability Ceiling, except for fraud, willful misconduct and liability the law does not allow to be limited. Neither party is liable for lost profit or indirect loss.
Retained License
The Assignee licenses the Assignor, on a non-exclusive and royalty-free basis worldwide, to use the Assigned Property for the Retained Use only. The Assignor may allow only affiliates and contractors working for it on that use to share the license, and it ends if the Assignor materially breaches this document and does not remedy it within 30 days.
For 6 months after signing the Assignor tells the Assignee of improvements it makes to the Assigned Property using the Assigned Rights, and they form part of the Assigned Rights, except an invention that the employee invention limit or the Reserved Property leaves with the Assignor.
Secrecy
The Assignor will keep the non-public parts of the Assigned Property, and the terms of this document, confidential and use them only as this document permits, for three years from signing and, for trade secrets, 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 government official or an attorney solely to report or investigate a suspected violation of law, or in a lawsuit filing made 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 it is filed under seal and not disclosed except by court order.
General
Notices must be written and delivered to the Assignor at [TO BE CONFIRMED — Assignor notice address] and to the Assignee at [TO BE CONFIRMED — Assignee notice address], or to a replacement address given by notice, by hand, courier or email. Hand and courier notices are received on delivery, email notices on the next business day.
Each party pays its own costs of preparing this document. The Assignee pays the filing and recording fees.
The Assignee may transfer its rights under this document with the Assigned Rights. The Assignor may not transfer its rights or duties without the Assignee's written consent. This document binds and benefits the parties' successors.
This document is the complete agreement about the Assigned Property and replaces earlier discussions about it. Any change must be in writing and signed by both parties. If a term cannot be enforced, the others continue. The parties may sign electronically and in counterparts.
Governing Law and Disputes
New York law governs this document, without regard to its conflict-of-laws rules, except where federal law governs the transfer of a patent, copyright or federally registered trademark. If the transaction is for $250,000 or more, the parties intend New York General Obligations Law section 5-1401 to apply to this choice.
The courts of the Forum have non-exclusive jurisdiction over disputes about this document. A party may ask any competent court for urgent injunctive relief.