IP Assignment
A written instrument transferring all right, title, and interest in identified intellectual property from the assignor to the assignee. Distinct from a license, which merely grants permission to use. Generally must be in writing and signed. Recording with the relevant federal agency is not required for validity, but it protects the assignee against later purchasers.
An IP assignment is a written instrument transferring all right, title, and interest in identified intellectual property from the assignor to the assignee. An assignment differs fundamentally from a license: a license grants permission to use the IP while ownership remains with the licensor; an assignment transfers ownership outright. Most categories of IP require a written, signed assignment for the transfer to be effective.
Writing requirement
The federal statutes require a written instrument: 17 U.S.C. § 204(a) requires a writing signed by the copyright owner, 35 U.S.C. § 261 an instrument in writing, and 15 U.S.C. § 1060(a)(3) an instrument in writing duly executed. An oral assignment of a copyright, patent, or registered trademark is not effective under these provisions. A typical assignment instrument (1) identifies the IP with reasonable specificity; (2) recites consideration; (3) uses present-tense transfer language ("Assignor hereby assigns, transfers, and conveys", not future-tense "will assign"); (4) includes representations as to ownership and lack of encumbrances; and (5) is signed by the assignor, and often by the assignee as well.
Present-tense vs. future-tense language
In Arachnid, Inc. v. Merit Industries, Inc., 939 F.2d 1574 (Fed. Cir. 1991), the Federal Circuit held that a provision that rights "will be assigned" was an agreement to assign, not a present assignment that transferred legal title. In Filmtec Corp. v. Allied-Signal, Inc., 939 F.2d 1568 (Fed. Cir. 1991), a contract that "does hereby grant" rights in future inventions was a present grant, so that title would ordinarily pass once an invention was made, with no further act required. This distinction has decided standing in patent cases involving employee and consultant invention assignments.
Recordation
Under 35 U.S.C. § 261, a patent assignment is void against a later purchaser or mortgagee for value without notice unless it is recorded with the USPTO within three months from its date or before the later purchase or mortgage. Trademark assignments may be recorded with the USPTO under 15 U.S.C. § 1060 with similar protective effect. Copyright assignments may be recorded with the U.S. Copyright Office. If the work is registered and the document identifies it, recordation gives constructive notice and can establish priority over a conflicting transfer (17 U.S.C. § 205(c)-(d)).
Trademark assignment in gross
A trademark assignment is invalid as an "assignment in gross" if it transfers the mark without the goodwill of the business with which the mark is used. Section 1060(a)(1) makes a registered mark assignable with the goodwill of the business in which the mark is used. Assignment instruments commonly recite that goodwill is conveyed with the mark.
Texas businesses face IP assignment issues most frequently in (1) employee onboarding (invention assignment provisions in employment agreements); (2) contractor agreements (work-for-hire plus express assignment as a backstop); (3) M&A transactions (assignment of all IP from target to buyer); and (4) financing transactions (security interests in IP, where the method of perfection depends on the type of asset and on whether a federal statute displaces UCC filing (Tex. Bus. & Com. Code § 9.311(a)(1))). Without a written assignment, or for copyright a qualifying written work-made-for-hire agreement, a contractor generally keeps ownership of its work product even though the client paid for it.