Intellectual Property Lawyers for Wyoming

As a legal entity, a joint venture (JV) can own a patent. Given the temporary nature of JVs and the fact that there will be multiple owners of any patents, there is a complex mix of intellectual property (IP) ownership rights, dispute resolution, and enforcement issues that need to be agreed upon in order to properly protect everyone's intellectual property rights. Consideration will need to be given to what IP ownership and rights will look like during and after the JV and it may be easier to have both companies listed as the patent authors for inventions from the outset (versus naming the JV as the author). A joint IP agreement is the best solution to outline the rights of each party, the process for developing patentable technologies sufficient to be a patent author, filing and prosecuting patents, and future licensing and exploitation of the patent.

Here’s how I’d approach structuring an Employee IP Agreement if your goal is to protect your company’s intellectual property without running into enforceability issues under U.S. law. Covering Core IP OwnershipCovering Core IP Ownership First, start with a “work made for hire” clause. It’s a good foundation, but it’s not enough on its own. Under U.S. copyright law (17 U.S.C. § 101), only certain types of work qualify as “made for hire,” and many employee-created assets may fall outside that definition. So you’ll want to pair it with a present-tense assignment clause. Be specific here. Use language like “the employee hereby assigns” rather than “will assign.” That slight shift matters. It ensures the company owns the rights immediately when the work is created. Also, define “intellectual property” broadly. Don’t just list patents or source code. Include software, algorithms, documentation, trade secrets, databases, and anything tied to your business. The scope should clearly include anything created during work hours, using company tools or systems, or connected to your current or future business operations. Disclosure and Documentation You’ll want to require employees to promptly disclose any inventions or creative works they produce. Put it in writing. This gives your company the chance to evaluate whether the work is covered under the agreement. It’s also a good idea to require them to maintain proper documentation. Accurate records can make a real difference in patent filings or if a dispute ever comes up. Pre-Existing IP and Legal Carve-Outs There should be a section where employees list anything they’ve developed or own before joining the company. If they don’t list anything, the agreement should include language confirming they’re representing that no such prior inventions exist. This prevents claims down the road that something developed during employment was actually theirs from before. Now, depending on your state, you may need to include statutory carve-outs. California, Illinois, and Washington all have laws that limit how far IP assignment clauses can go. For example, in California, you’re required to carve out inventions developed entirely on the employee’s own time, without company resources, and unrelated to your business (see California Labor Code § 2870). Without that carve-out, your entire assignment provision could be thrown out. Confidentiality Obligations Make sure there’s a strong confidentiality section. This should cover source code, technical documentation, designs, product plans, customer lists, financial data, and anything else proprietary. Make it clear that the obligation continues even after the employee leaves. You’ll also want to require that all company property and digital assets are returned at the end of employment, including devices, credentials, and files. Ongoing Cooperation and Enforcement Mechanisms Include a clause requiring employees to cooperate in IP protection efforts even after they leave. That could mean signing patent paperwork or providing testimony if needed. To make that enforceable, add a power of attorney clause. This gives the company the authority to act on the employee’s behalf if they’re unwilling or unreachable. It’s a simple way to prevent delays when you’re trying to secure or enforce rights. It’s also smart to include a waiver of moral rights where allowed. This is especially useful for creative works and software. It gives the company full freedom to modify or use the work without needing future approval. Legal Remedies and General Terms Be clear that the company can pursue equitable relief, like an injunction, if there’s a violation. Sometimes monetary damages aren’t enough to prevent harm. Include a severability clause so that if one part of the agreement is invalidated, the rest still stand. Don’t forget to specify the governing law and venue for any disputes. As for restrictive covenants, keep in mind that non-compete clauses are unenforceable in California and heavily restricted elsewhere. Non-solicitation clauses may still be allowed, but they need to be narrowly written. You should have your legal team confirm their enforceability based on your state. Finally, think about consideration. For new hires, the job offer itself usually counts. But for existing employees, you’ll likely need to offer something extra, like a bonus or promotion, to make the agreement stick.

You will need a design patent

Whether you need a Work For Hire Agreement really depends on the project and what both sides are trying to get out of it. You’re not automatically required to sign one, but saying yes or no to that clause can completely change who owns the work and what rights you’ll have moving forward. Just because a client calls something “work for hire” in a contract doesn’t mean it actually qualifies under the law, especially when it comes to freelance design work. Here’s the thing. Under U.S. copyright law, “work made for hire” is a specific exception to the general rule that the creator owns the work. For a freelance project to qualify, two conditions have to be met. First, both parties need to sign a written agreement that says the work is considered “made for hire.” Second, the type of work has to fall into one of nine defined categories under 17 U.S.C. § 101. These include things like contributions to collective works, audiovisual pieces, instructional texts, or compilations. The list is pretty narrow. Standard marketing materials, logos, brochures, or campaign graphics usually don’t make the cut. Courts take a strict approach here, so just checking a box in a contract doesn’t magically make it enforceable. If your project doesn’t meet both requirements, labeling it “work for hire” doesn’t hold legal weight. In that case, the default is that you, the designer, own the copyright unless there’s a separate written agreement transferring it to the client. That leads us to ownership. If there’s no valid Work For Hire clause and no assignment of rights, you retain full copyright. That gives you control over how the work is used beyond whatever license you’ve granted. So if you created a logo and the contract only licenses it for digital use, the client can’t later slap it on T-shirts or license it to a partner without getting your permission first. But if there is a valid Work For Hire clause or an explicit copyright assignment, then the client becomes the legal owner. That means they can use it, change it, resell it, or do whatever they want with it, without needing to pay you again or ask for further approval. You’d have no say over how the work is used, and unless the agreement gives you permission, you wouldn’t even be able to include it in your portfolio. If you want more flexibility, there are alternatives. You can structure the deal with a copyright assignment that still reserves certain rights for you. For example, you could keep the right to show the work in your portfolio or limit resale to direct competitors. Or you could stick with licensing. An exclusive license gives the client broad rights but you still own the work. A non-exclusive license is more limited and usually makes sense for templates or assets used with multiple clients. Portfolio rights, by the way, are often negotiable. Even in exclusive arrangements, you can add a clause that lets you show the work on your website, social profiles, or print materials. Just make sure it’s clearly spelled out. Some corporate clients won’t allow it at all unless it’s written into the agreement. From a practical standpoint, your decision should take into account how much you’re getting paid, how the work will be used, and whether you want to reuse or showcase it later. If you’re giving up all rights, price accordingly. Clients pushing for Work For Hire terms often just want clean, uncomplicated ownership, especially for branding or long-term use. But that doesn’t mean you can’t negotiate. You might agree to transfer ownership only after full payment is received. You might keep the right to use rejected drafts. You might even allow Work For Hire treatment for the final deliverables but retain some creative rights behind the scenes. Also, keep an eye out for boilerplate clauses. Some clients include Work For Hire language by default, not realizing their project doesn’t meet the legal standard. Just because it’s in the contract doesn’t make it enforceable. If the work doesn’t meet the criteria, the clause won’t hold unless there’s a separate valid assignment of rights. When in doubt, it’s smart to run the agreement by an attorney who understands copyright law and freelance creative work. Contracts Counsel connects you with attorneys who handle exactly this kind of issue.

Yes, you can and should include clauses in an Intellectual Property License Agreement that protect your rights as the licensor. A license agreement is your main tool for controlling how your software is used, setting boundaries for your clients, and limiting your financial exposure. The key is to draft it in a way that leaves no doubt about what rights are granted, what’s restricted, and what happens if there’s a breach. Grant of License Start with a clear license grant. Spell out that you’re giving the client only limited rights, not ownership. Most licensors define the license as non-exclusive, non-transferable, and revocable if the client doesn’t follow the terms. For example, you might allow a client to use the software only for its internal business operations, and only on a set number of machines. It’s equally important to list what the licensee cannot do, such as reverse engineering, modifying, sublicensing, or providing the software to third parties. Intellectual Property Ownership Reinforce that you retain all ownership rights in the software and any related intellectual property. A simple but strong statement is that you hold all right, title, and interest in the software, and the client only receives a limited right to use it under the agreement. This prevents confusion between a license and a sale. You can also require the licensee to notify you if they discover third-party infringement and confirm that you alone have the right to pursue action against infringers. Confidentiality If you’re providing source code, algorithms, or other sensitive information, a confidentiality clause is essential. Define confidential information broadly to include not just the software itself but also any documentation or business information you share. Require the client to protect that information with at least the same care they use for their own confidential material, and make the obligation survive termination of the agreement. Termination Every strong license has a termination clause. Termination for cause should allow you to end the agreement if the client fails to pay, violates the license scope, or breaches confidentiality. Many agreements include a short cure period, such as thirty days, for the licensee to fix the breach before termination takes effect. Spell out the consequences of termination: the licensee must stop using the software immediately, return or destroy all copies, and certify that they’ve complied. Without this, you risk losing leverage if the relationship breaks down. Payment Terms Protect your revenue by making payment terms clear. Define license fees, support or maintenance fees if applicable, the payment schedule, and penalties for late payment such as interest. Courts generally enforce these provisions as long as they’re reasonable. Disclaimers and Limitation of Liability These clauses protect you from lawsuits if things go wrong. A limited warranty might cover basic performance for a set time, but beyond that you should disclaim all other warranties. Standard language is that the software is provided “as is” and you disclaim implied warranties of merchantability and fitness for a particular purpose. To limit your exposure, cap liability at a defined amount, often the fees paid by the licensee in the previous twelve months, and exclude liability for indirect or consequential damages such as lost profits. Courts usually enforce these limits, except in cases of fraud or intentional misconduct. Audit Rights If your pricing model depends on the number of users or installations, an audit right is valuable. This allows you to check, on reasonable notice, that the licensee isn’t exceeding their rights. For example, you might reserve the right to inspect usage records once a year during normal business hours. Governing Law and Dispute Resolution Designating which state’s law governs and how disputes are resolved reduces uncertainty. Many licensors choose their home state’s law and either local courts or arbitration for disputes. Remedies Make sure your agreement lets you seek injunctive relief if the licensee misuses or discloses your software. Monetary damages often aren’t enough to protect intellectual property, so courts will enforce contract terms that authorize immediate injunctive relief. Protect Your Software with Legal Guidance When you’re licensing valuable software, the details in your agreement can make the difference between real protection and unnecessary risk. The lawyers on Contracts Counsel are available to draft, review, or negotiate a license that secures your rights and keeps your business protected.