The variety of potential business agreements is undoubtedly huge. Nevertheless, certain business scenarios appear with such frequency that tools and rules of thumb have emerged for smoothing the way and avoiding many potential pitfalls. We have substantial experience dealing with these, and many other scenarios.

Before describing some of the most common scenarios, it is helpful to note that rights in an intellectual property asset generally arise in the creator of that asset. Thus, it is common for a company to need a written agreement to ensure that rights in an employee-created IP asset are transfered to that company. Rights in jointly-created IP assets can sometimes raise difficult issues. For example, a company might need to buy-out a joint owner to completely control the rights in an IP asset.

Perhaps the most common scenario requiring a written agreement relating to IP assets arises when there is a need to disclose a trade secret, know-how, or other confidential information to someone outside the control of the secret-holder's entity. In this situation, a Confidentiality or Non-Disclosure Agreement (NDA) is frequently utilized. Key to many such agreements can be a clear identification of what in particular must be kept secret, and what uses are allowable for the secret information.

Closely related to the NDA is the Employment Agreement. These agreements typically include confidentiality provisions, as well as requirements for assignment of intellectual property rights, assistance with obtaining and protecting intellectual property rights, and possibly, a non-compete clause.

Once an entity obtains intellectual property rights, it can license others to exploit those rights via a Licensing Agreement. Such agreements can vary substantially depending on, e.g., business needs, the type of intellectual property, the specific rights licensed, and/or the industry.

Included in many such agreements, Assignment clauses can require that employees, contractors, and/or business partners assign their intellectual property rights to a company. Yet difficulties sometimes emerge when, for example, the resulting assignment documents are incorrectly drafted, untimely sought, or improperly recorded.

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