Intellectual property can include inventions, creative works, designs, software, trade secrets, trademarks, and other forms of intellectual property protected by law. For businesses that create, develop, license, or use intellectual property, carefully drafted contracts can help establish ownership rights, define permitted uses, and protect confidential information.

Intellectual property agreements are particularly important when a business works with employees, independent contractors, customers, vendors, licensees, or other businesses. Without clear contractual terms, disputes can arise over who owns intellectual property, how it may be used, and what happens when a business relationship ends.

Common Types of Intellectual Property Contracts

Depending on the nature of the business and the transaction, intellectual property agreements may include:

License Agreements

A license agreement allows one party to use specified intellectual property while establishing the terms and limitations of that use. A license can address issues such as the scope of the license, permitted uses, exclusivity, payment or royalties, sublicensing, ownership of improvements, confidentiality, and termination.

Clear licensing terms can help protect the owner’s rights while allowing another party to use the intellectual property under agreed-upon conditions.

Evaluation Agreements

Businesses may need to disclose confidential information or intellectual property to another party before entering into a licensing, development, joint venture, or other business relationship.

An evaluation agreement can establish the conditions under which the receiving party may review and use the information. These agreements may address confidentiality, permitted uses, restrictions on disclosure, ownership, and the return or destruction of confidential materials.

Employee Invention and Nondisclosure Agreements

Employees may have access to confidential information, trade secrets, software, designs, inventions, and other intellectual property belonging to a business.

Employment and intellectual property agreements can address confidentiality obligations and, where permitted by applicable law, the ownership and assignment of intellectual property created in connection with the employee’s work.

The appropriate language can depend on the type of intellectual property, the employee’s role, and applicable federal and state law. Businesses should not assume that every work product or invention created by an employee is automatically owned by the employer.

Why Do Intellectual Property Contract Disputes Arise?

Intellectual property disputes can arise in a variety of business relationships.

For example, a business may hire an independent contractor to develop software, artwork, designs, or other materials and later disagree about who owns the resulting work. Disputes can also arise when an employee creates an invention or other intellectual property as part of their work and the parties have different understandings about ownership.

Other disputes may involve:

• Using intellectual property beyond the scope of a license;
• Sharing confidential information with unauthorized parties;
• Failing to comply with confidentiality obligations;
• Disputes over ownership or assignment of intellectual property;
• Unauthorized use or reproduction of another party’s intellectual property;
• Ambiguous contract language concerning intellectual property rights;
• Disputes concerning improvements or modifications to licensed intellectual property; and
• Failure to enforce contractual rights after a breach.

A business can also face significant legal and financial consequences if it uses another party’s intellectual property without the necessary permission or exceeds the rights granted under an agreement.

Protecting Your Intellectual Property

A well-drafted agreement should clearly address the intellectual property relevant to the business relationship. Depending on the circumstances, this may include identifying existing intellectual property, establishing ownership of newly created work, defining permitted uses, addressing confidentiality, establishing licensing terms, and explaining what happens when the relationship or agreement ends.

Businesses should also review their existing agreements when their operations, technology, or relationships change. A contract that was appropriate for one transaction may not adequately address the intellectual property involved in a later business relationship.

Raheen Law Group Can Help

At Raheen Law Group, we assist businesses with understanding, drafting, reviewing, and negotiating intellectual property agreements.

We can help clients address intellectual property ownership, licensing, confidentiality, employee and contractor agreements, and other contractual issues involving intellectual property.

When a dispute arises, we can also assist clients in enforcing their contractual rights or defending against allegations of breach.

If your business is entering into an agreement involving intellectual property or is facing an intellectual property contract dispute, contact Raheen Law Group to discuss your legal options.