ASSIGNMENT OF INTELLECTUAL PROPERTY RIGHTS :
The transfer of ownership in intellectual property is usually effected by a formal assignment. The whole, or part, of an intellectual property right can be assigned. An assignment of intellectual property is a document effecting the transfer of the ownership of intellectual property from one person to another. Assigning the ownership of intellectual property, should always be in writing by means of a formal agreement. Many IP rights cannot be properly assigned without a written document.
Assignment agreements differ from license agreements on the ground that an Assignment agreement actually transfers the ownership of that intellectual property from the assignor to the assignee whereas a license agreement only permits the licensee to use the intellectual property for a given period of time. The provisions governing assignment of intellectual property under the various statutes have been discussed at relevant places in this study material.
Assignment agreements are of considerable importance in IPR since they allow the intellectual property owners to transfer their intellectual property for commercial returns, ensuring that the intellectual property can be used for monetary gain. Intellectual property that is created is utilized and exploited by the Assignment Agreement, where the purchaser or assignee takes benefit of the assignment rights that are created. These assignment agreements give rise to legal and equitable rights in law and purport many issues if they are not carefully constructed as required by law.
Issues relating to ownership of IPR must be carefully considered where employees may be creating IPR outside the scope, time and available resources of the company that they work for. Companies who own valuable IP rights should execute non-disclosure agreements with their employees, agents, or other third parties and make sure to define the term ‘confidentiality’ and the obligations of the parties not to disclose it. It is prudent to include Assignment Agreement clauses which address issues relating to governing law, jurisdiction, Alternative Dispute Resolution [ADR] to seek speedy resolution of disputes. Intellectual Property Assignment Agreement is a legal contract and required to be in compliance with existing Laws.
It is important, in the field of intellectual property, to define transparent criteria for terms and conditions under which the institution/organization would be the owner of the IPRs and the situation in which the inventor or creator would have the right or privilege to be the owners of the IPRs that they created. The enforceability of Assignment Agreements act as an incentive to these individuals to create new inventions which ultimately benefits society. It is also essential to define the ownership of created intellectual property with relation to employer- employee agreements and contract for service to encourage innovation.
IPR legislations in India provide specific rules, regulations and procedure when dealing with assignment agreements. The Rules/Acts make provisions for registering the Assignment Agreements and their respective schedules also provide for forms through which parties can register their assignment agreements. In order for an Assignment Agreement to be valid and enforceable, it is essential that the Assignment Agreement be recorded as prescribed by the Acts and relevant Rules.
In addition to abiding by the Rules, to avoid ambiguity it is essential to ensure that the agreement clearly defines which person the ownership rests with. The assignment must be concrete and also clarify the tenure for which the individual would be the owner of the intellectual property. This would provide a precaution in case of a potential dispute on the ownership of the intellectual property.
The position of an Assignment Agreement in the intellectual property law of India is one of great consequence despite being a private transaction between the assignor and the assignee. One of the reasons for this is that the law is required to protect the owner of the intellectual property from being defrauded. It must be noted, however, that though the law does provide certain safeguards, the onus of creating a suitable assignment agreement is upon the parties concerned. A valid assignment agreement and one that benefits all parties involved can only come into being if the fundamental issues, some of which have been discussed above, are addressed.