The transfer of intellectual property rights is made upon a payment of a lump sum or royalties.
If you are contemplating creating a technology startup, an important part of the formation of the company should include an intellectual property (IP) assignment agreement.
Simply put, the company owns the intellectual property, not the employee(s).
A technology assignment agreement assigns your startup any intellectual property before you form the company.
However, it wouldn’t hurt to have that developer sign an intellectual property assignment agreement, just to prevent problems in the future.
There is no standard form for assignment agreements so each must be carefully worded and signed by the employee or developer for it to be binding.
“I agree that all inventions that are (a) developed using equipment, supplies, facilities, or trade secrets of the company; or (b) result from work performed by me for the company; or (c) related to the Company’s current or anticipated research and development will be the Company’s sole and exclusive property and are hereby assigned by me to the Company.” A disclosure provision requires employees to inform the employer of the existence of intellectual property that was developed according to the assignment provision.
“While I am employed by the Company, I will promptly inform the Company of the full details of all inventions, discoveries, improvements, and innovations, whether or not patentable, copyrightable, or otherwise protectable, that I conceive, complete, or reduce to practice (whether jointly or with others) and which: (a) relate to the Company’s present or prospective business, or actual or demonstrably anticipated research and development or (b) result from any work I do using any equipment, facilities, materials, trade secrets, or personnel of the Company or (c) result from or are suggested by any work that I may do for the Company.” This particular clause is fairly standard.
The assignment provision requires employees to assign their inventions to the employer, so the employer has total ownership of the intellectual property.
This provision could be narrowed to employee inventions only or broadened to include nearly anything the employee creates.