The Intellectual Property Agreement: Elements, example, and optional clauses
What is an Intellectual Property Agreement?
The typical elements of an Intellectual Property Agreement include:
- Definitions: This section defines the terms used in the agreement, such as “intellectual property,” “infringement,” and “licensee.”
- Ownership of Intellectual Property: This section specifies the ownership of the intellectual property created or used in the project, including any existing intellectual property that will be incorporated into the project.
- Confidentiality and Non-Disclosure: This section outlines the confidentiality and non-disclosure obligations of both parties to protect the confidential information shared during the project.
- Intellectual Property Rights: This section details the intellectual property rights being licensed or transferred, including any restrictions or limitations.
- Licensing Terms: This section specifies the terms of the license, such as the scope of the license, duration, and any applicable fees.
- Representations and Warranties: This section includes representations and warranties made by both parties, such as ownership of intellectual property, non-infringement, and accuracy of information.
- Indemnification: This section outlines the indemnification obligations of each party to protect the other party from any claims related to the intellectual property.
- Term and Termination: This section specifies the duration of the agreement and the circumstances under which it can be terminated.
- Governing Law and Jurisdiction: This section specifies the laws that will govern the agreement and the jurisdiction in which any disputes will be resolved.
It’s essential to consult a legal professional to determine which elements are appropriate for your specific situation and to ensure that the agreement complies with all applicable laws and regulations.
The following boilerplate template can be used on SimpleSignRequest.com
INTELLECTUAL PROPERTY AGREEMENT
This Intellectual Property Agreement (“Agreement”) is made and entered into as of [date] (“Effective Date”) by and between [company name], a [state/country] corporation, having a place of business at [address] (“Company”), and [individual name], an individual residing at [address] (“Creator”).
WHEREAS, Creator is an independent contractor who has created certain intellectual property (as defined below) and desires to grant Company certain rights to use such intellectual property, and Company desires to obtain such rights.
NOW, THEREFORE, in consideration of the mutual promises and covenants contained herein, and for other good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged, Company and Creator agree as follows:
(a) “Intellectual Property” means any and all patents, trademarks, copyrights, trade secrets, know-how, and any other intellectual property rights arising under any jurisdiction, whether registered or unregistered.
(b) “Work Product” means any and all intellectual property created by Creator and delivered to Company pursuant to this Agreement, including, but not limited to, any and all writings, software, code, designs, graphics, artwork, and other materials.
(a) Creator hereby assigns and transfers to Company all right, title, and interest in and to the Work Product, including all Intellectual Property Rights therein. Creator agrees to execute any and all documents and take any and all actions necessary to effectuate such assignment and transfer.
(b) Creator acknowledges that all Work Product is a “work made for hire” as that term is defined in the United States Copyright Act, and that Company is the sole and exclusive owner of all rights, title, and interest in and to the Work Product, including all Intellectual Property Rights therein.
(c) To the extent that any of the Work Product is not deemed a “work made for hire,” Creator hereby grants to Company an irrevocable, perpetual, worldwide, royalty-free license to use, reproduce, modify, display, distribute, and otherwise exploit such Work Product in any manner, in any and all media, now known or hereafter devised.
(a) Creator represents and warrants that: (i) Creator has the full right and authority to enter into this Agreement and to grant the rights and licenses granted herein; (ii) the Work Product is original and has not been previously published or distributed in any manner; (iii) the Work Product does not infringe upon any copyright, patent, trademark, trade secret, or other proprietary right of any third party; and (iv) the Work Product does not contain any material that is defamatory, obscene, or otherwise unlawful.
(b) Creator agrees to indemnify, defend, and hold harmless Company and its affiliates, officers, directors, employees, agents, and representatives from and against any and all claims, damages, liabilities, costs, and expenses (including reasonable attorneys’ fees) arising out of or in connection with any breach of the representations and warranties set forth in Section 3(a).
- TERM AND TERMINATION.
This Agreement shall commence on the Effective Date and shall continue until terminated by either party upon [notice period] days’ written notice to the other party. Upon termination, all rights and licenses granted hereunder shall terminate, except as set forth in Section 2(c) with respect to Work Product delivered prior to the effective date of termination.
(a) This Agreement constitutes the entire agreement between the parties with respect to the subject matter hereof, and supersedes all prior negotiations, understandings, and agreements between [names_of_parties]
- SIGNATURE PAGE
What are some optional clauses that might typically be included in a Intellectual Property Agreement?
Intellectual property agreements can be tailored to the specific needs of the parties involved, but here are some common optional clauses that may be included:
- Definition of intellectual property: This clause defines the specific types of intellectual property that are covered under the agreement, such as trademarks, patents, copyrights, and trade secrets.
- Ownership and transfer of intellectual property: This clause specifies who owns the intellectual property and how ownership can be transferred or licensed.
- Confidentiality and non-disclosure: This clause outlines the obligations of the parties to keep confidential information confidential and not disclose it to third parties.
- Non-compete: This clause prohibits one party from competing with the other party in a specific market or industry for a certain period of time.
- Indemnification: This clause requires one party to compensate the other party for any losses or damages that result from a breach of the agreement.
- Term and termination: This clause specifies the length of the agreement and the conditions under which it can be terminated.
- Governing law and jurisdiction: This clause specifies which laws will govern the agreement and which courts will have jurisdiction over any disputes that arise.
- Representations and warranties: This clause requires one party to make certain promises and assurances to the other party, such as promising that they have the right to license or transfer the intellectual property.
- Assignment and delegation: This clause specifies whether the parties are allowed to assign or delegate their rights and obligations under the agreement to third parties.
- Dispute resolution: This clause outlines the procedures that will be used to resolve any disputes that arise under the agreement, such as mediation or arbitration.
Still more clauses might be helpful for your Intellectual Property Agreement, such as:
- Infringement defense: This clause outlines the parties’ obligations to defend against any claims of infringement of intellectual property rights.
- Exclusivity: This clause specifies whether the license is exclusive or non-exclusive.
- Improvement rights: This clause details whether the licensee has the right to make improvements or modifications to the licensed intellectual property.
- Sublicensing: This clause outlines whether the licensee has the right to sublicense the intellectual property to a third party.
- Warranty disclaimer: This clause disclaims any warranties or guarantees related to the intellectual property.
- Limitation of liability: This clause limits the liability of the parties for damages related to the intellectual property.
- Royalties: This clause specifies any royalties or other compensation that will be paid to the owner of the intellectual property.
- Assignability: This clause outlines whether the agreement is assignable or non-assignable.
- Independent contractor status: This clause clarifies that the parties are independent contractors and not partners or joint venture partners.
It’s important to consult a legal professional to determine which additional clauses are appropriate for your specific situation and to ensure that the agreement complies with all applicable laws and regulations.