Vertalis Business Law Glossary
Intellectual Property
IP Assignment
Also called: Intellectual Property Assignment.
By Tim Nichols
Modern Counsel for Growing Companies
In plain English
A transfer of ownership of identified intellectual property rights from one person or entity to another. It differs from a license, which grants permission to use rights without necessarily transferring ownership. The agreement should identify the rights, exclusions, effective transfer language, and any required further documentation.
Types and key distinctions
Invention Assignment
An agreement transferring rights in specified inventions or requiring their transfer to an employer or other recipient. It should distinguish covered inventions from excluded prior work and address applicable legal limits. Invention ownership, copyright work-made-for-hire rules, and confidentiality are related but different questions.
Confirmatory Assignment
A document used to confirm or clarify a prior transfer of ownership rights, often intellectual property. It can help complete the record needed for diligence or registration. If no effective transfer occurred earlier, a new operative assignment may also be necessary; the document's title alone does not cure the gap.
Background IP
Intellectual property a party already owns or develops independently of a particular engagement. A services agreement should distinguish background IP from newly created deliverables and specify any license the customer needs to use embedded tools or components. Paying for a project does not necessarily purchase the provider's preexisting technology.
Implied License
Permission to use intellectual property inferred from conduct and circumstances rather than set out in an express license. Its existence and scope can be disputed, and it does not necessarily transfer ownership or permit every intended use. A written assignment or license provides clearer evidence of the company's rights.
Chain of Title
The documented history showing how ownership rights moved from the original owner to the current owner. For startup IP, it may involve assignments from founders, employees, contractors, and subcontractors. A gap can leave a company unable to demonstrate that it owns the assets it uses or proposes to sell.