Employee Intellectual Property Assignment Agreement for the United States

Employee Intellectual Property Assignment Agreement Template for United States

An Employee Intellectual Property Assignment Agreement is a legally binding document used in the United States that establishes the ownership rights of intellectual property created during employment. It ensures that any inventions, works, designs, or other intellectual property created by an employee in the course of their employment are properly assigned to their employer. The agreement complies with federal IP laws and state-specific requirements, particularly in states with specific statutory protections for employee inventions.

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What is a Employee Intellectual Property Assignment Agreement?

The Employee Intellectual Property Assignment Agreement is essential for companies that rely on innovation, creative works, or proprietary information. This agreement clarifies ownership rights from the outset of employment, preventing future disputes over intellectual property ownership. It's particularly crucial in the United States, where different states have varying requirements for IP assignment, such as California's Labor Code ยง 2870. The agreement typically covers inventions, copyrightable works, trade secrets, and other forms of intellectual property created during employment, while respecting state-specific limitations on employer claims to employee innovations developed outside of work.

What sections should be included in a Employee Intellectual Property Assignment Agreement?

1. Parties: Identifies the employer and employee entering into the agreement

2. Background/Recitals: States the context and purpose of the agreement

3. Definitions: Defines key terms including 'Intellectual Property', 'Inventions', 'Works', etc.

4. Assignment of Rights: Core provision transferring IP rights from employee to employer

5. Scope of Employment: Defines what constitutes work within employment

6. Disclosure Obligations: Employee's duty to disclose inventions and works

7. Assistance with Protection: Employee's obligation to help secure and protect IP rights

8. Moral Rights: Waiver of moral rights where applicable

What sections are optional to include in a Employee Intellectual Property Assignment Agreement?

1. Prior Inventions: Section for listing and excluding pre-existing IP owned by employee from the scope of assignment

2. State-Specific Carve-outs: Special provisions required by specific state laws regarding IP assignment restrictions

3. Third Party IP: Provisions governing the handling of third-party intellectual property in the course of employment

4. Post-Employment Obligations: Provisions covering ongoing duties and obligations after employment ends regarding IP protection

What schedules should be included in a Employee Intellectual Property Assignment Agreement?

1. Schedule A - Prior Inventions: Detailed list and description of employee's pre-existing intellectual property

2. Schedule B - State Law Notices: Required statutory notices and acknowledgments for specific states

3. Schedule C - Form of Invention Disclosure: Template form for reporting and documenting new inventions

4. Schedule D - Excluded Inventions: List of inventions specifically excluded from assignment under state law requirements

Authors

Alex Denne

Head of Growth (Open Source Law) @ Genie AI | 3 x UCL-Certified in Contract Law & Drafting | 4+ Years Managing 1M+ Legal Documents | Serial Founder & Legal AI Author

Jurisdiction

United States

Publisher

Genie AI

Document Type

Agreement Contract

Cost

Free to use
Industries

Federal Patent Act: 35 U.S.C. - Federal legislation governing patent rights, crucial for determining ownership and assignment of patentable inventions created during employment

Federal Copyright Act: 17 U.S.C. - Governs copyright ownership and 'work for hire' doctrine, determining rights to copyrightable works created by employees

Federal Trademark Act: Lanham Act (15 U.S.C.) - Addresses trademark ownership and rights, relevant for employee-created branding and marks

Defend Trade Secrets Act: Federal law providing uniform trade secret protection across states, including remedies for misappropriation and whistleblower protections

National Labor Relations Act: Federal law protecting employees' rights to organize and bargain collectively, affecting terms that can be included in IP assignments

State Trade Secret Laws: State-specific regulations governing trade secret protection, complementing federal DTSA with local requirements and remedies

State Employment Laws: State-specific regulations governing employment relationships and restrictions on employee agreements

State Invention Assignment Laws: State-specific laws (e.g., California Labor Code ยง 2870) limiting scope of invention assignment and protecting employee rights

Work for Hire Doctrine: Legal principle under copyright law determining ownership of works created within scope of employment

Shop Rights Doctrine: Common law principle giving employers non-exclusive rights to use employee inventions created using employer resources

State Non-Compete Restrictions: State-specific limitations on non-compete agreements that may affect IP assignment provisions

Constitutional Considerations: First Amendment and Fifth Amendment implications for IP assignments and restrictions on employee rights

Contract Formation Requirements: Common law principles governing contract validity, including offer, acceptance, and consideration

Unconscionability Doctrine: Legal principle protecting against unfair or one-sided contract terms in IP assignments

Teams

Employer, Employee, Start Date, Job Title, Department, Location, Probationary Period, Notice Period, Salary, Overtime, Vacation Pay, Statutory Holidays, Benefits, Bonus, Expenses, Working Hours, Rest Breaks,  Leaves of Absence, Confidentiality, Intellectual Property, Non-Solicitation, Non-Competition, Code of Conduct, Termination,  Severance Pay, Governing Law, Entire Agreemen

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