In the dynamic landscape of business and creativity, intellectual property (IP) stands as a critical asset for individuals and organisations alike. In Australia, the assignment of intellectual property rights is a significant legal process that allows the transfer of these rights from one party to another.
LEGAL FRAMEWORK
- The Patents Act 1990 (Cth) governs the protection of inventions.
- The Trade Marks Act 1995 (Cth) covers the protection of brand names, logos, and other identifiers.
- The Copyright Act 1968 (Cth) deals with the protection of literary, artistic, musical, and dramatic works.
- The Designs Act 2003 (Cth) protects the visual design of objects.
- The Fair Work Act 2009 (Cth) is an employment law that ensures that IP clauses comply with general employment standards and contractual fairness.
These statutes provide the foundation for the assignment of IP rights, ensuring that the transfer process is legally recognised and enforceable.
TYPES OF IP ASSIGNMENT
PATENT, TRADE MARK, DESIGN AND COPYRIGHT
Assignment of patents involves the transfer of rights to an invention. The assignment must be in writing and signed by both parties. It is essential to record the assignment with IP Australia to maintain legal enforceability.
Similarly, transferring a trade mark (involves assigning the rights to use the brand name or logo) and the assignment of a design must be documented in writing, and the new owner should register the assignment with IP Australia.
Assignment of copyright can be more complex due to the variety of works covered. The assignment of copyright must also be in writing, specifying the work and the rights being transferred. As there is no formal requirement to register the assignment with a governmental body, it is advisable to keep detailed records.
IP ASSIGNMENT TO EMPLOYERS
FROM EMPLOYEES
Trade secrets that protect confidential business information can be protected via employment agreements and/or confidentiality agreements.
Employment agreements should explicitly state that any IP created by the employee (for example, copyright-protected writings or inventions) in the course of their employment (work-related IP) belongs to the employer. Moreover, clearly outlining the scope of employment to include all potential IP-generating activities helps avoid disputes over what is considered within the realm of employment duties.
Employers should develop a comprehensive IP policy with detailed processes for disclosure, protection, and assignment of IP that all employees are required to acknowledge and understand.
In Australia, moral rights (rights to attribution and integrity) are personal rights held by creators. Employees can agree to waive these rights in favour of the employer in writing.
FROM CONTRACTORS
Contractor agreements (including any other similar agreements such as service agreements or collaboration agreements) are to explicitly ensure that clear terms assign all IP created during the engagement (such as designs, software codes or R&D) to the employer and should cover both the existing IP used in the creation of new work and any new IP developed. It should also unambiguously outline how any pre-existing IP the contractor brings into the project will be treated (usually through licensing).
Include warranty clauses that the contractor has the right to assign the IP and indemnity clauses protecting the employer against any claims of IP infringement. Before entering contractor agreements, employers must conduct thorough due diligence to ensure that contractors do not have pre-existing obligations that conflict with the assignment of IP.
Moreover, contractor agreements should include clauses that require contractors to provide necessary assistance in perfecting the employer’s rights to the IP, such as signing additional documents or providing necessary information post-contract.
ESSENTIAL CONSIDERATIONS
A written agreement is paramount in any IP assignment, which, if executed, will irrevocably and permanently transfer the ownership of the IP rights. Both parties should conduct thorough due diligence before finalising the assignment. This involves verifying the validity and scope of the IP rights, ensuring that there are no existing encumbrances or disputes, and confirming that the assignor has the authority to transfer the rights.
For patents, trade marks, and designs, registering the assignment with IP Australia is crucial. This step not only formalises the transfer but also provides public notice of the change in ownership, which can be vital in protecting the new owner’s rights against potential infringement.
IP assignments can have significant tax implications. Both parties should seek tax expert advice to understand the potential tax liabilities and benefits, including any applicable stamp duties or capital gains taxes. For example, the transfer of goodwill (business asset), namely, dutiable property is a dutiable transaction under the Duties Act 2009 (NSW).
RETAIN IP LAWYER
Seek advice from legal professionals specialising in IP law to draft and review assignment deeds, employment agreements, contractor agreements, policies, and other legal documents, including confidentiality agreements. This helps ensure a clear, legally binding record of the assignment and duty of confidentiality, as well as compliance with current laws and best practices.
Please contact The IP House Lawyers, which has assisted and advised clients in their trade mark assignments for over 20 years.
For any further information or queries on the above content, please contact us.
The Author
Jean Kallmyr | Lawyer, The IP House Lawyers | t: 0435 799 831 | e: admin@theiphouse.com.au
Key Contact
Claire Darby | Managing Director/Lawyer, The IP House Lawyers | t: 0412 998 951 | e: claire@theiphouse.com.au
Disclaimer
The information and contents of this publication do not constitute any legal or financial advice. This publication is intended only for reference purposes for The IP House Lawyers’ clients and prospective clients.
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