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IP Assignations in Research: What do you need to consider?

IP Assignations in Research: What do you need to consider?
What is an assignation?

Under contracts law, an assignation is the transfer of rights and obligations from one person or legal entity (the “assignor”) to another person or legal entity (the “assignee”). When dealing specifically with an assignation of intellectual property rights, this means that you are transferring or ‘assigning’ the rights (i.e. ownership rights) and obligations of the particular intellectual property that the assignation covers.

Any such assignation can be over all or part of the acts which would otherwise be restricted for the benefit of the owner, could be restricted to the duration, for example, of the copyright or for another period prior to the re-assignment to the original owner.

Why Assign (and why not)?

Under copyright law (the most likely type of intellectual property to require to be assigned under many research agreements), ownership vests automatically upon creation, often meaning that the original owner of copyright will be the creator of the work. When an individual creates a work within the scope of their employment, the default position is that any such work is owned by the employer, depending on the terms of the individual’s employment, including any intellectual property policies that an employer may have in place. This can be a particularly important detail to consider for Educational and Research Institutes, due to the aim of furthering research and the importance of negotiating and complying with research and funding agreements.

In the context of such agreements, a party may be required to assign their intellectual property rights for a particular reason. Some research funding agreements will require a party other than the creator to own the intellectual property (for example, the funder themselves, an industry partner, or the lead party on the project). In such circumstances, parties will require to give effect to such a requirement through an assignation clause within a linked research contract or by way of a separate assignation.

In other circumstances, a party may choose to assign intellectual property rights to another party. There are a variety of reasons why this may occur. Intellectual property can be a valuable way of generating income for a business, including through an initial lump sum payment or through payment of royalties related to income generated by the assignee following assignation. Alternatively, it may be that the other party is better placed to exploit or to monitor and protect against any infringement of intellectual property by third parties (this may be particularly relevant for higher education or research organisations, who will often be subject to obligations to exploit intellectual property under funding agreements).

However, there are also many reasons why an organisation may not wish to assign – it is entirely possible to generate income without assigning, including through licences (which can be limited to different territories or for particular purposes only). Retaining ownership may also allow a party to maintain more control over the use of the intellectual property, which may be particularly important for those working with intellectual property created under a funded project.

Factors to consider

Any party considering an assignment (or indeed a licence) of intellectual property should carefully consider (i) the circumstances under which the intellectual property was created (i.e. is it subject to any funding restrictions or, crucially, does the party fully own the intellectual property in the first place); (ii) what benefits are available to the party as a result of assignation; and (iii) what risks would it open a party to.

Any assignment or license of intellectual property should be detailed fully within a written agreement, either as a standalone agreement, or as part of a wider arrangement. This agreement should detail the scope of any assignment or licence, any restrictions (e.g. territorial) and any consideration (i.e. a lump sum payment or royalties).  Those working with intellectual property which has been publicly funded should also consider regulations surrounding subsidy control, particularly when considering the benefit being returned to the assignor in return for assigning or licensing the asset.

How can Thorntons help you?

If you are looking at protecting or assigning your intellectual property rights, a higher education institution looking for advice on your research contracts, or if you are acquiring ownership or rights over another party’s intellectual property rights, it is crucially important to obtain legal advice before, during, and after the transaction, especially in novel areas such as digital assets. With experts in the field, including a Chartered Trade Mark Attorney, Thorntons will guide you through the process, providing you with a bespoke service tailored to your needs. Please do not hesitate to contact us on 03330 430350 to discuss your needs further.

About the author

Roisin Donnelly
Roisin Donnelly

Roisin Donnelly

Senior Solicitor

Intellectual Property

For more information, contact Roisin Donnelly or any member of the Intellectual Property team on 0131 624 6810.