IP Assignment
A written instrument transferring all right, title, and interest in identified intellectual property from the assignor to the assignee. Distinct from a license, which merely grants permission to use. Generally must be in writing, signed, and (for federal IP) recorded with the relevant agency.
An IP assignment is a written instrument transferring all right, title, and interest in identified intellectual property from the assignor to the assignee. An assignment differs fundamentally from a license: a license grants permission to use the IP while ownership remains with the licensor; an assignment transfers ownership outright. Most categories of IP require a written, signed assignment for the transfer to be effective.
Writing requirement
Federal IP statutes uniformly require a writing signed by the assignor for the assignment to be effective. Oral or email-only IP assignments are typically void. Best practice is a single instrument that (1) identifies the IP with reasonable specificity; (2) recites consideration; (3) uses present-tense transfer language ("Assignor hereby assigns, transfers, and conveys", not future-tense "will assign"); (4) includes representations as to ownership and lack of encumbrances; and (5) is signed by both parties.
Present-tense vs. future-tense language
Federal Circuit case law (Filmtec Corp. v. Allied-Signal, Inc., 939 F.2d 1568 (Fed. Cir. 1991)) holds that future-tense assignment language ("Employee will assign") creates only a contractual promise to assign in the future, not an immediate transfer of title. Present-tense language ("Employee hereby assigns") effects an immediate transfer. This distinction has been outcome-determinative in patent cases involving employee invention assignments and is best practice across all IP categories.
Recordation
Patent assignments should be recorded with the USPTO within three months of execution under 35 U.S.C. § 261; unrecorded assignments are void against subsequent bona fide purchasers without notice. Trademark assignments may be recorded with the USPTO under 15 U.S.C. § 1060 with similar protective effect. Copyright assignments may be recorded with the U.S. Copyright Office to establish priority over conflicting transfers and to provide constructive notice.
Trademark assignment in gross
A trademark assignment is invalid as an "assignment in gross" if it transfers the mark without the goodwill of the business with which the mark is used. Texas courts and federal courts both apply this rule strictly. The assignment instrument should explicitly recite that goodwill is conveyed with the mark.
Texas businesses face IP assignment issues most frequently in (1) employee onboarding (invention assignment provisions in employment agreements); (2) contractor agreements (work-for-hire plus express assignment as a backstop); (3) M&A transactions (assignment of all IP from target to buyer); and (4) financing transactions (security interests in IP, perfected by USPTO/Copyright Office recordation in addition to UCC-1 filing). Failure to obtain proper written assignment from a contractor leaves the contractor as the legal owner of the work product, regardless of who paid for it.