Colorado Chapter

KILPATRICK TOWNSEND & STOCKTON

Kilpatrick_Townsend-LOGO-CMYK-314x141Tips from Kilpatrick Townsend & Stockton -

Example of standard IP language found in many employment onboarding paperwork and employment contracts that can be problematic for companies that employ individuals generating IP

By: Karam Saab (ksaab@kilpatricktownsend.com)  

Bad

1. Assignment. For good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged, the inventor agrees to convey, transfer, and assign to assignee all of inventor’s right, title, and interest in and to the following (the "Assigned IP"): …

The Problem

In the above clause, the inventor is only agreeing to assign the IP at some indeterminate time in the future and is not actively completing the assignment. That is, a mere statement of an agreement to assign “reflects a mere promise to assign rights in the future, not an immediate transfer of expectant interests.” IpVenture, Inc. v. Prostar Computer, Inc., 503 F.3d 1324, 1327 (Fed.Cir.2007) This language leaves a window open for the inventor, for example, to either intentionally or inadvertently assign his rights to another party. The language included in such an assignment clause should rather actively effect the assignment, as noted below.

Good Rewrite

1. Assignment. For good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged, the inventor hereby conveys, transfers, and assigns to assignee  all of inventor's right, title, and interest in and to the following (the "Assigned IP"): . . .



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