Intellectual Property Assignment
Do you need assistance with Intellectual Property Assignment?
The means by which you can give effect to an Intellectual Property Assignment depends on what sort of intellectual property (IP) you are trying to assign. IP includes:
- Copyright;
- Trade Marks;
- Plant Breeders Rights;
- Patents; and
- Designs.
The most common task we are asked to undertake is the assignment of copyright. That may be in the form of copyright in literary works, including computer code or artistic work including photographs and technical drafts. However, the process is similar for all forms of Intellectual Property Assignment.
Practicalities of Intellectual Property Assignment
IP assignment is often a multi-step process.
The process by which we can give effect to an Intellectual Property Assignment involves at least one or two steps. The number of steps required is dependent on whether that particular type of IP is registered or not. Not all IP is register-able in Australia, examples follow.
Those steps are:
- 1. Preparation of an Intellectual Property Assignment Deed or Agreement.
- 2. Transferring the registration of that ownership (where the IP is registered).
For example:
- Copyright is not registered and therefore only requires the first step.
- Trade marks which are registered with IP Australia, would on the other hand, require both of the above two steps.
However, depending on the value of the IP to the business, there may be some formal corporate requirements, such as obtaining board approval and recording that approval in the minutes of the directors' meeting. Similarly, if the IP is being sold, there may be steps which need to be undertaken as precursors to the registration of the assignment.
Requirement for a written deed or agreement
Whether your Intellectual Property Assignment is unregistered or registered IP you will need to evidence the transfer in writing.
Not only does it give the assignee peace of mind but in most circumstances, it is required by law.
For example:
Trade marks- Before IP Australia will accept a ‘Request For a Full Assignment or Transmission of a Trade Mark’ (the form required to give effect to the transfer), they require written and signed deed or agreement.
Copyright – The ownership of copyright is governed by the Copyright Act 1968 (Cth) (Act). Simply paying for the development or production of some form of literary work, computer code, photograph, drawing or design does not entitle you to ownership. Copyright must be assigned in writing and satisfy the formal requirements of the Act. This can be achieved in a Services Agreement or by an Intellectual Property Assignment Deed.
If you are hiring freelancers, purchasing a business or having software developed for you by a third party, you will likely need to consider a formal IP assignment deed or IP assignment agreement. It is also common to assign the IP to a separate entity for the purposes of Intellectual Property Protection.
