How to Draft an Invention Assignment Agreement

Note: Want to skip the guide and go straight to the free templates? No problem - scroll to the bottom.
Also note: This is not legal advice.

Introduction

In the fast-paced world of technology, an invention assignment agreement is a key document for any inventor, entrepreneur or business owner. It provides legal protection and ensures that inventors receive a fair return on their inventions. But what exactly is an invention assignment agreement and why do entrepreneurs and business owners need one?

An invention assignment agreement is a legally binding contract that assigns ownership of an invention to another party, such as an employer or investor. The Agreement outlines the inventor’s rights and duties with regards to the use of their intellectual property while protecting them from theft or infringement by other parties. Furthermore, it clearly outlines payment terms, including any royalties or bonuses due to the inventor for their work. Having an Invention Assignment Agreement in place grants inventors peace of mind that their hard work will be rewarded fairly - something which can be invaluable when trying to succeed in the competitive technological landscape.

Business owners too should understand the importance of having a well-drafted Invention Assignment Agreement at hand as it can provide assurance that investments are adequately protected and secure from intellectual property theft. This can be crucial for entrepreneurs wanting to ensure long-term business success without facing costly legal disputes further down the line.

For anyone needing assistance creating an Invention Assignment Agreement, Genie AI offers a comprehensive resource to help you get started with drafting your own legally binding documents - all without paying a lawyer! Genie AI’s open source legal template library harnesses millions of data points to show you what constitutes market standard agreements; allowing users to customize high quality documents in minutes – saving both time and money! Our step-by-step guidance provides all the information needed on how to access our library today so you can get your project off to a strong start - all without needing a Genie AI account! So if you’re looking for reliable advice on how best tackle your next big venture - read on!

Definitions (feel free to skip)

Scope of Assignment – The range and limits of what is being assigned.
Inventor – The person who creates or discovers something new.
Assignee – The person or organization to whom something is assigned.
Trade Secret – Information not generally known that gives a business an advantage over its competitors.
Patent Application – A request to the government for permission to make, use, or sell an invention.
Trademark – A distinctive word, phrase, symbol, or design used to identify a product or service.
Copyright – A legal right that grants the creator of an original work exclusive rights to its use and distribution.
Description of Invention – A detailed explanation of the features and functions of an invention.
Rights of Assignment – The rights given to the assignee, such as the right to use, manufacture, reproduce, or sell the invention.
Payment Terms – The amount and timing of payments made as part of the assignment.
Confidentiality Clause – A clause that prohibits the assignee from disclosing any confidential information relating to the invention.
Warranties – A guarantee that the inventor has the legal right to assign the invention to the assignee.
Disclaimers – A statement that denies or limits a party’s legal responsibility.
Legal Remedies – Ways of seeking legal enforcement of a contract, such as money damages or injunctive relief.
Duration – The length of time that the agreement is in effect.
Termination – The ending of the agreement.
Notices – Written communication from one party to another.
Dispute Resolution – The process of settling a disagreement between two parties.
Governing Law – The set of laws that applies to a particular agreement.
Jurisdiction – The authority of a court or other legal body to interpret and enforce the law.
Sign and Date – To physically write one’s name and the date on a document to show agreement.

Contents

• Define the scope of the assignment
• Identify the inventor and assignee
• Draft a description of the invention
• Establish agreement on the assignment of rights to the assignee
• Set payment terms
• Include a confidentiality clause
• Include warranties and disclaimers
• Specify legal remedies
• Address duration and termination of the agreement
• Outline requirements for notices, including dispute resolution
• Clarify governing law and jurisdiction
• Sign and date the agreement
• Make copies of the agreement for each party

Get started

Define the scope of the assignment

• Determine what invention is being assigned
• Identify who the inventor and assignee are
• Outline the scope of the assignment and what rights the assignee will be granted
• Specify the geographical area where the invention will be used
• Draft language for the assignment that includes the scope and rights of the assignee
• Review the language with both the inventor and assignee to make sure that everyone is in agreement

When you can check this off your list: When you have drafted the language for the assignment and both the inventor and assignee have reviewed and agreed to the language.

Identify the inventor and assignee

• Find out who the inventor is, and who the assignee (the person or company receiving the assignment) is
• Make sure the inventor and assignee are clearly identified in the agreement
• When the inventor and assignee have been clearly identified, you can move on to the next step of drafting a description of the invention.

Draft a description of the invention

• Include a detailed description of the invention, including relevant drawings, diagrams, and other relevant materials.
• Differentiate the invention from prior art if applicable.
• Identify the patent application number and filing date if the invention is already filed.
• If there is more than one inventor, make sure all inventors have agreed to the assignment.
• When the description is complete, you should have a clear understanding of the invention, who owns it and what is being assigned.

Once the description of the invention is complete, you can move on to the next step of establishing agreement on the assignment of rights to the assignee.

Establish agreement on the assignment of rights to the assignee

• Draft a clear agreement specifying the rights being assigned to the assignee
• Include details such as the scope of the rights, the geographic region and term of the assignment
• Make sure the assignee is aware that the invention must be kept confidential
• Include a clause which states that the assignee will not attempt to register the invention in any other country
• Add a clause that the assignor will defend any claims made against the assignee in relation to the invention
• Have both parties sign the agreement

You will know you are done with this step when you have completed the agreement, both parties have signed it, and the assignor and assignee have a copy of the agreement.

Set payment terms

• Determine the payment method for the assignor in exchange for assigning the rights.
• Agree on a total sum for the payment or a payment plan.
• Include payment details in the agreement, such as the date of payment and any interest rates or fees.
• Have both the assignor and assignee sign off on the payment terms.

When this step is complete, the payment terms in the agreement should be agreed upon and documented in the agreement.

Include a confidentiality clause

• Explain what a confidentiality clause is and why it’s important
• Identify the parties to the agreement, and include a definition and scope of confidential information
• Set out the duration of the confidentiality obligation
• Specify the permitted uses of confidential information
• Outline the remedies available to the parties in the event of a breach
• Include a clause permitting the parties to disclose confidential information to their advisors
• When complete, the confidentiality clause should provide a legally binding agreement between the parties that protects the confidential information disclosed
• When done, you can check this off your list and move on to the next step which is to include warranties and disclaimers.

Include warranties and disclaimers

• Include a clause in the agreement that states the assignor warrants that it owns the invention and has the right to assign it to the assignee
• Include a clause that the assignor has not previously assigned the invention to anyone else
• Include a clause that the assignor has not made any other agreement regarding the invention that would conflict with the assignment
• Include a disclaimer that the assignee is not receiving any implied warranties or guaranties with the assignment
• Include a clause that the assignor will indemnify the assignee in the event of any third-party claims
• Once you have included these warranties and disclaimers in the agreement, you can check this step off your list and move on to specifying legal remedies.

Specify legal remedies

• Identify the legal remedies that each party would have if the other party breaches the agreement
• Consider what remedies are available in your jurisdiction and which are most appropriate for the situation
• Include remedies such as specific performance, liquidated damages, or other equitable relief
• Specify that the non-breaching party shall be able to seek all available remedies, including but not limited to damages and/or injunctive relief
• Indicate that the non-breaching party shall be entitled to recover all costs, including attorney fees, incurred in enforcing the agreement
• When complete, you can proceed to the next step, which is addressing duration and termination of the agreement.

Address duration and termination of the agreement

• Determine the effective date of the agreement.
• Decide the duration of the agreement, including any applicable renewal options.
• Specify the circumstances under which the agreement can be terminated.
• Include provisions for either party to terminate the agreement with a certain amount of notice.
• Outline a timeline for any payments that need to be made upon termination.

Once you have determined the effective date, duration, termination, notice and payment requirements, you can check this step off your list and move on to the next step of outlining requirements for notices, including dispute resolution.

Outline requirements for notices, including dispute resolution

• Identify the parties to the agreement and their contact information
• Specify who will send and receive notices
• Outline the process for dispute resolution (e.g. arbitration, litigation)
• Establish a timeframe for notices to be sent and received
• Include language about compliance with applicable laws
• Include a clause that allows the parties to modify or amend the agreement
• Include a clause that allows the parties to assign their rights and obligations
• When complete, review the agreement and make sure it is legally sound
• When complete, sign and date the agreement
• When complete, get the agreement notarized, if required

Clarify governing law and jurisdiction

• Identify the governing law of the agreement and the jurisdiction in which it will be interpreted and enforced
• Include the applicable state or country’s laws into the agreement
• Specify the court or other dispute resolution forum where any dispute or claim arising out of the agreement can be litigated
• Confirm that both parties agree to be bound by the governing law and jurisdiction chosen
• Once the governing law and jurisdiction is clarified, you can move on to the next step: signing and dating the agreement.

Sign and date the agreement

• Have both parties sign the agreement and include the date
• Make sure both parties include a witness to the agreement
• Have each party keep a copy of the signed agreement
• When done, you can check this off your list and move on to making copies of the agreement for each party.

Make copies of the agreement for each party

• Ensure you have enough copies of the agreement for all parties
• Make sure to print out all copies of the agreement
• Make sure to provide copies for all parties to the agreement
• Once all parties to the agreement have a copy, you can check this off your list and move on to the next step.

FAQ:

Q: What are the differences between a US, UK and EU Invention Assignment Agreement?

Asked by Abigail on June 5th 2022.
A: An Invention Assignment Agreement is an agreement between two parties, typically an employer and an employee, whereby the employee assigns all rights in any invention made during the course of their employment to the employer. The differences between US, UK and EU Invention Assignment Agreements mainly come down to the laws of the particular jurisdiction where the agreement is being used. US laws on invention assignment agreements are found in Title 35 of the United States Code, which covers patent law. In the UK, patent law is covered by The Patents Act 1977, while in the EU it is covered by Regulation (EU) No 1257/2012. Each jurisdiction will have different requirements for an Invention Assignment Agreement, so it is important to ensure that you are familiar with the laws of your jurisdiction when drafting an agreement.

Example dispute

Suing a Company for Breach of an Invention Assignment Agreement

• Plaintiff should be able to provide evidence of the invention assignment agreement between the parties, as well as any other relevant documents and communications.
• Plaintiff should be able to demonstrate that the terms of the agreement have been breached, e.g. by showing that the defendant has failed to pay royalties or has used the invention without permission.
• Plaintiff may be able to request an injunction against the defendant, requiring them to stop using the invention and/or pay back royalties.
• Plaintiff may be able to claim damages for any losses suffered as a result of the breach, for example, lost profits or other financial harm.
• Plaintiff may be able to negotiate a settlement including a payment from the defendant in exchange for dropping the suit.

Templates available (free to use)

Confidential Information And Invention Assignment Agreement
Confidentiality And Invention Assignment Agreement
Employee Invention Assignment Agreement
Invention Assignment Agreement

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