Ensuring Intellectual Property Ownership

While juggling the myriad of challenges that face a typical start-up, founders sometimes neglect the legal “technicalities,” which can lead to unanticipated problems. For instance, start-ups often find that they don’t have IP rights they thought they had because they failed to take the necessary steps to acquire and preserve those rights.

For example, the U.S. Copyright Act affords certain rights to original works of authorship fixed in any tangible medium of expression. Such works can cover a wide range of materials in virtually any business, including software, marketing materials, business plans and internal documents.  As a general rule, the creator of the work owns its rights.  However, in certain instances the rights may be owned by another party if the work is deemed a “work made for hire.” Under the Act, most works created by an employee within the scope of his or her employment would be considered a work made for hire, and therefore would be owned by the employing start-up/company.  The same is not always true of independent contractors. As a result, in the absence of a clear assignment in the governing consulting agreement, start-ups can find that they don’t actually own the IP that they hired a consultant to create.

Other rules apply to other forms of intellectual property, such as patents.

Proper written assignment agreements, which assign ownership of intellectual property rights, can ensure that a company does, in fact, have ownership of the IP rights it believes it owns.  The form of Confidentiality and Intellectual Property Assignment Agreement on the Founder’s Workbench site is an example of such an assignment agreement.

This post on Intellectual Property was authored by Amina Kaal.

 

 
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