Invention Assignment Agreement

An invention assignment agreement requires a founder, employee, or contractor to assign defined work-related inventions and assist with protection while preserving properly excluded prior inventions and legally protected activity.

A useful document turns the parties' actual arrangement into measurable duties, approvals, timing, remedies, and a reliable execution record. Its terms should be reconciled to the transaction rather than copied from an unrelated form.

• A technology company hires an employee who may create patentable or proprietary work
• A founder transfers pre-formation inventions to the company
• A contractor develops specified technology and assignment is commercially required

The document name alone does not determine the right structure. Consider a different instrument or qualified legal review when any of these conditions applies:

• Do not claim inventions excluded by applicable employee-invention statutes or created wholly outside the defined relationship.
• Do not hide preexisting tools, open-source obligations, university rights, or former-employer restrictions.

Record exact facts before clauses are written. Names, authority, dates, amounts, defined terms, dependencies, and incorporated materials should be verifiable and consistent.

• Company, inventor, role, work location, start date, and applicable invention law
• Expected duties, research areas, company resources, confidential information, and project scope
• Prior inventions, ongoing outside projects, third-party duties, grants, and open-source activity
• Disclosure process, assignment trigger, patent assistance, expense reimbursement, and post-departure contacts

These decisions shape the allocation of responsibility and should not be left for boilerplate to decide:

• Which inventions are sufficiently related to assigned work
• Which statutory and prior-invention exclusions apply
• Whether preexisting technology is assigned or licensed
• How post-departure patent assistance is requested and compensated

• Confidential information and invention definitions
• Disclosure and present assignment of qualifying inventions
• Prior inventions, statutory exclusions, and third-party obligations
• Records, patent prosecution, further assurances, and power to execute
• Moral rights, open-source rules, return of materials, and survival

Every provision should use the same parties, dates, standards, defined terms, and document hierarchy. A clause that is reasonable by itself can still create a conflict when it is not reconciled with payment, default, termination, or another exhibit.

1. 01Describe the intended result and the relationship in plain language.
2. 02Confirm parties, authority, governing jurisdiction, dates, money, property, services, and approvals.
3. 03Resolve the key decisions and identify every schedule, exhibit, disclosure, consent, or filing.
4. 04Draft the provisions as one consistent system, then review the complete execution set before signature.

Overbroad clauses can be restricted by state law, while missing present-assignment language or contributor signatures can undermine patent ownership. The prior-inventions schedule should never be ceremonial.

The main agreement may establish the framework while schedules, exhibits, disclosures, consents, or operational records supply transaction-specific details.

• Prior-inventions and outside-activities schedule
• Project or job-duty description
• Patent assignment and invention-disclosure forms

Each incorporated document should be identified precisely, use the same names and effective date, and follow a stated order of precedence if terms conflict.

Sign before inventive work, collect a truthful exclusion schedule, maintain invention disclosures and lab records, execute patent-specific assignments, and repeat the process when roles or projects materially change.

• Confirm legal names, roles, capacity, addresses, and signing authority
• Reconcile dates, amounts, definitions, cross-references, schedules, and exhibits
• Confirm that duties, deadlines, approvals, acceptance standards, and payment triggers are measurable
• Check that default, termination, remedies, and surviving obligations work together
• Complete jurisdiction-specific forms, notices, witnesses, notarization, filings, or professional review when applicable
• Deliver and preserve the complete signed package with its incorporated documents

These sources provide federal, state-resource, regulatory, or institutional context. They do not replace checking the law and required forms applicable to the parties, transaction, and governing jurisdiction.

1. Source 1

   Patents Assignment Center

   United States Patent and Trademark Office. Official system and guidance for recording patent assignments.

2. Source 2

   MPEP § 2109 — Inventorship

   United States Patent and Trademark Office. Current official guidance on identifying inventors, conception, joint inventorship, and naming the correct inventive entity.

3. Source 3

   Works Made for Hire

   U.S. Copyright Office. Official explanation of work-made-for-hire and transfer concepts.

4. Source 4

   Concerted Activity

   National Labor Relations Board. Employee rights concerning protected concerted activity.