Intellectual Property Lawyers for Kansas

A Patent Assignment Agreement transfers ownership of an invention or patent rights from the inventor, known as the assignor, to another party, often a company serving as the assignee. To protect your business and ensure enforceability, the agreement should cover specific provisions that make the transfer clear, complete, and legally sound. What Is the Core Assignment Clause? The assignment clause is the heart of the agreement. It should use present-tense language such as “hereby assigns, transfers, and conveys all right, title, and interest.” Courts and the USPTO treat this as an immediate transfer, while “will assign” is only a future promise. The clause should also cover continuation, divisional, or continuation-in-part applications, along with reissues, reexaminations, and foreign filings. What Rights Should Be Transferred? The assignee should receive the full bundle of rights granted under 35 U.S.C. § 154, including the right to make, use, sell, offer for sale, import, and license the invention. The agreement should also transfer the right to sue for past, present, and future infringement, so the company can recover damages even for activity that occurred before the assignment was signed. Do You Need Consideration? Every contract requires consideration, and patent assignments are no different. Even if the transfer is to your own company, the agreement should recite consideration. This can be nominal, such as “ten dollars and other good and valuable consideration,” or it can be tied to equity or to your role as founder. How Should the Patent Be Identified? The intellectual property should be identified with precision. If a patent has issued, include the number and issue date. For pending applications, list the application number, filing date, and invention title. If no application has been filed yet, provide a detailed description and later update the record once official filing details exist. What Warranties and Representations Are Common? The assignor should warrant ownership of the rights, authority to assign, and absence of liens or conflicting assignments. Over-warranting should be avoided. Do not guarantee novelty or validity, since those are determined by the USPTO and courts. Be cautious about warranting sole inventorship unless you are certain no other inventors contributed, since misstatements on inventorship can create validity problems. What Other Provisions Should Be Included? Other common provisions include further assurances requiring the inventor to assist with future filings, litigation, or USPTO actions, a limited power of attorney for patent prosecution and enforcement, and improvements clauses that attempt to capture future modifications or developments. Improvements provisions must be drafted carefully, as vague scope language can lead to disputes. The agreement should also address corporate authority, ensuring the company has approval under bylaws or state law before accepting the assignment. What Administrative Details Matter? The agreement should contain standard contract terms such as governing law, entire agreement, amendment requirements, successors and assigns, and dispute resolution through arbitration or mediation. Both the inventor and the company should sign, and notarization is advisable because it makes USPTO recordation smoother. Do You Need to Record with the USPTO? After execution, the assignment should be recorded with the USPTO through the Electronic Patent Assignment System. Recordation should occur promptly after execution to establish clear priority and maintain a clean chain of title. While recordation is not required for validity between the parties, it protects ownership against third-party claims. The USPTO currently charges little or no fee for electronic filings, so this step is inexpensive and essential. Should You Assign or License? An assignment transfers complete ownership, which investors generally expect. A license keeps ownership with the inventor while granting defined rights to the company. Licensing may be useful when the inventor wants to retain control, license the technology to multiple companies, or test the market before giving up ownership. For most startups, assignment is the preferred approach. What About Tax Considerations? Assignments can have tax consequences, especially when IP is transferred for equity or other forms of consideration. Professional tax advice is essential to evaluate both immediate tax effects and ongoing obligations. This is particularly important if the company later earns royalties or sells the patent. What Are the Next Steps? The implementation process should include drafting the agreement with qualified legal counsel, executing it with proper corporate authority and notarization where possible, recording it promptly with the USPTO using EPAS, and consulting a tax professional to address both the transfer itself and any ongoing obligations. If you need help drafting or reviewing a Patent Assignment Agreement, the attorneys on Contracts Counsel can guide you through the process so that your company’s rights are fully protected.

Hello, I'd be glad to review the details of the trademark assignment and confirm it properly transfers ownership of your trademark. As a trademark attorney, I have helped clients in similar situations both draft trademark assignments and record them with the USPTO to ensure that the trademark reflects the right ownership information. I would be happy to have a brief free 15 minute consult call to learn more details and see how I can help. Thanks for your consideration. Best, Roman rvayner@vaynerlegal.com 414 628 9099 www.vaynerlegal.com

Invention Assignment Agreements usually require employees to hand over rights to any inventions they come up with during their employment. But things can get tricky when the agreement tries to claim ownership of something you created on your own time using your own resources. What’s Generally Enforceable Employers often write these agreements in broad terms, sometimes trying to cover anything you invent while you're employed, even if it’s unrelated to your job. Courts usually uphold fair agreements, but they’ll look closely at anything that seems to overreach. Most states try to strike a balance. If an invention is directly tied to your work or the company’s business, the employer may have a valid claim. But if it’s something truly independent that you built on your own time without company tools or knowledge, you’re more likely to keep it. State Laws That Protect Employees Some states have gone further and passed laws that give employees more protection. California’s Labor Code § 2870 is probably the most well-known. It says employers can’t force you to assign inventions that were developed entirely on your own time without using any company resources. The exception is if the invention is connected to the company’s business, research, or your actual job duties. Other states like Washington, Illinois, Delaware, Minnesota, and North Carolina have similar laws. New York passed its own version in 2023, called Labor Law § 203-f, which follows California’s lead. Most of these laws also require employers to give written notice to employees about their rights. In states without specific laws, courts typically rely on general contract principles and public policy. If a contract tries to claim every idea you’ll ever have, that language probably won’t hold up. But if the invention overlaps with your employer’s field, even if you built it at home, the company could still have a real claim. When Employers Still Have Rights Even with legal protections, there are a few situations where the company can still argue ownership: 1. If the invention is related to the business or current projects. 2. If you used any company tools, software, workspace, or confidential info. 3. If the invention came out of your assigned job duties, even if you worked on it after hours. These carve-outs are broader than most people realize. For example, if you’re a software engineer and your side project uses the same coding language or solves a similar problem as your employer’s product, that could raise red flags, even if you used your own laptop at home. How to Protect Your Own Inventions If you want to make sure you keep the rights to something you’ve created, documentation is key. Keep records of when you worked on it, what tools you used, and how it relates (or doesn’t relate) to your job. Don’t use your work email, computer, or cloud storage. And read your agreement carefully. Some contracts require you to disclose all inventions, even personal ones. Disclosure doesn’t always mean you have to assign it, but it can start a conversation you’d rather avoid. The Shop Right Rule Even if you own your invention, your employer might still be able to use it under what’s called the “shop right” doctrine. This means that if you used company time, tools, or resources, the company may have a free, nonexclusive license to use your invention in its operations. You’d still own it, but you couldn’t stop them from using it. Why Jurisdiction Matters The state where you work usually controls which laws apply to your agreement, not the state where your company is based. That can make a big difference. For example, engineers in California have strong statutory protections. Employees in Texas may need to rely on general contract law instead. The Final Analysis Your best move is to have an employment attorney review your agreement. The details matter, and so does your state's law. A good attorney can explain what's enforceable, help you negotiate better terms (like explicit carve-outs for personal projects), and show you how to protect your own work without violating your contract. If you're looking for this type of guidance, the attorneys on Contracts Counsel are available to help. Whether you need a quick contract review or full representation, you can connect with experienced employment lawyers who understand the nuances of invention assignment agreements in your state.

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You’re not the first to confuse a KISS Note with intellectual property protection, and you definitely won’t be the last. It’s a common mix-up in the startup world. But here’s the truth: A KISS Note has nothing to do with protecting your software. It’s a financing instrument created by 500 Startups, designed as an alternative to convertible notes and SAFEs for early-stage fundraising. It’s a way for investors to give you money now in exchange for equity later. It does not offer any legal protection for your code or ideas. So What Do You Actually Need to Protect Your IP? If you're building software in California, there are several key legal tools you’ll want to have in place. Start with the ones that offer immediate protection and work your way toward longer-term strategies. Always Start with NDAs If you're showing your software to anyone (whether it's a co-founder, a contractor, an investor, or a beta tester) you need a solid non-disclosure agreement in place before you share anything. It’s your first line of defense, especially if you want to preserve trade secret protection. Your NDA should spell out exactly what you consider confidential. This might include your source code, algorithms, user data, business plans, or any other proprietary information. The agreement should also state how long confidentiality lasts and what the other party can and cannot do with your information. One important note here: California law prohibits non-compete clauses under Business and Professions Code Section 16600. Do not include one in your NDA. It won't be enforceable. Instead, focus strictly on confidentiality and use limitations. Copyright is Automatic, but Registration Matters As soon as you write your code, it’s protected under federal copyright law. That protection applies to the actual expression (the specific code) not to your underlying ideas, functionality, or algorithms. Even though protection is automatic, registering with the U.S. Copyright Office gives you significant legal benefits. You can’t file a federal lawsuit without registration. And if your copyright is registered before infringement occurs, you may be eligible for statutory damages of up to $150,000 per work and recovery of attorney’s fees. The process usually costs between $65 and $85 and takes a few months. Trade Secrets Require Real Effort to Stay Protected If your software includes proprietary algorithms, confidential processes, or unique technical methods that provide a competitive edge, you may be eligible for trade secret protection under the California Uniform Trade Secrets Act. But here’s the catch. That protection only lasts as long as you actively protect the information. This includes limiting access to your source code, using secure development environments, marking documents as confidential, and having everyone involved sign NDAs. You need to treat your trade secrets like actual secrets if you want the law to do the same. Considering Patents? Proceed Carefully Software patents are complex, especially following the Supreme Court’s 2014 Alice decision. You can’t patent abstract ideas, mathematical formulas, or generic computer processes. Your software needs to solve a specific technical problem in a novel, non-obvious way or improve the functionality of a computer system itself. If you've developed something truly unique — like a new data compression algorithm, a better machine learning architecture, or a new way to optimize networking — a patent might be worth exploring. Just keep in mind that the process is expensive, often costing $10,000 to $15,000 with legal fees. It can also take several years. Many software companies choose to rely on trade secrets and copyrights instead. How to Put All of This Into Practice Begin with what you can implement right away. Create a strong NDA template and use it consistently. Register your copyright as soon as your codebase is developed enough to be meaningful. Protect your trade secrets by putting real technical and legal safeguards in place. Track your development process carefully. Version control, timestamps, and contributor logs can all serve as useful evidence in a legal dispute. If you’re working with employees or contractors in California, be especially cautious. The state has employee-friendly laws, so your contracts must clearly state that all work product belongs to your company and that all confidential information stays confidential. When Should You Talk to a Lawyer? Once you’re dealing with patents, investor negotiations, infringement threats, or user data privacy, it’s time to bring in professional legal help. These are complex areas, and the risks are too high to wing it.