Dominic is the CEO of Lawpath, dedicating his days to making legal easier, faster and more accessible to businesses. Dominic is a recognised thought-leader in Australian legal disruption, and was recognised as a winner of the Australian Legal Innovation Index and recently a winner of the LexisNexis 40 Under 40 (APAC).
💡 Key insights
- An intellectual property agreement should clearly identify the specific IP being licensed or assigned so both parties know exactly what rights are being transferred or shared.
- The agreement must state whether the rights are exclusive, non-exclusive or limited in scope, including territory, duration and permitted uses, because these terms determine how the IP can be used.
- Defining payment terms such as upfront fees, royalties or milestone payments ensures both parties understand the financial arrangements tied to the IP rights.
- Including warranties, indemnities and confidentiality obligations helps protect against infringement, misuse of IP and unauthorised disclosure of sensitive information.
Intellectual Property v Intellectual Property Rights
Intellectual Property, commonly shortened to ‘IP’, is the property of your mind. This includes inventions, trademarks, designs or processes that you come up with.
Intellectual Property Rights are rights given to you over the property of your mind. They protect your Intellectual Property, giving you exclusive rights for a restricted duration and within certain boundaries. The four main sources of Intellectual Property Rights are copyright, trademarks, patents and trade secrets.
Intellectual Property in Businesses
Intellectual Property holds substantial value for a business. Branding, logos and processes generated are the essence of a business’s value proposition.
Many start-up businesses fail to attribute their newly created Intellectual Property to their company. The neglect of Intellectual Property protection in start-ups is evident, 67.1% of businesses with 0 to 4 employees use no form of Intellectual Property protection methods (Australian Bureau of Statistics 2012). As an owner of a new venture, it is crucial to safeguard your Intellectual Property assets to secure the value of your company and protect your company’s proprietary interest.
What is an Intellectual Property Agreement?
An Intellectual Property Agreement is a document transferring ownership of Intellectual Property from the initial owner/creator to an individual or entity. A transfer of ownership of Intellectual Property includes the IP Rights.
When should I use an Intellectual Property Agreement?
An Intellectual Property Agreement is effective when you want to:
- Transfer ownership of Intellectual Property in writing;
- Transfer ownership of newly created Intellectual Property Rights when joining a company as a co-founder or during the start-up phase;
- Transfer ownership of Intellectual Property Rights from new employees to your company;
- Transfer ownership of Intellectual Property Rights from your business as a sole trader/partnership to your new company.
Can I transfer future Intellectual Property?
An Intellectual Property Agreement generally includes the assignment of all future rights to the individual or company.
Here are three questions you should consider when using the LawPath Intellectual Property Agreement:
1. What is being assigned?
It is important to know, specifically, which Intellectual Property Rights you wish to transfer.
2. When is the Intellectual Property going to be assigned?
You can choose a particular date for transfer of ownership of the Intellectual Property Rights to be effective.
3. Is the person signing over ownership of Intellectual Property bound by third party clauses?
In some cases, the supposed owner/creator of Intellectual Property is bound by third party clauses, meaning that their Intellectual Property Rights are owned by another entity. This is very common in employment contracts, which often state that Intellectual Property developed in the course of employment is owned by the employer.
If the person transferring the Intellectual Property is bound by a third party clause, the transfer of the Intellectual Property will be ineffective. It is very important to check this before attempting to transfer any Intellectual Property!
Transferring IP is easy with the LawPath Assignment of Intellectual Property Agreement.
“Unsure where to start? Contact a LawPath consultant on 1800LAWPATH to learn more about customising legal documents, obtaining a fixed-fee quote from our network of 1000+ expert lawyers or to get answers to your legal questions.”
