- The core difference: an assignment permanently transfers ownership of IP rights to another party, while a licensing agreement lets someone use the IP while the original owner retains ownership.
- Assignment agreements typically involve a one-time, lump-sum payment, must usually be registered with the USPTO, and leave the original owner with no ongoing income from the IP.
- Licensing agreements typically involve ongoing payments to the licensor (sometimes a percentage of the licensee’s profits), can include time limits, and may be exclusive or allow the licensor to keep using the property simultaneously.
- Choosing between assignment and licensing depends on the specific business situation, making it worth consulting an experienced IP attorney to decide the best structure.
The main difference between assigning your intellectual property rights to another person or entity vs. licensing them to use your intellectual property is that in an assignment, ownership does not stay with the original owner, but goes to the assignee. In a licensing agreement, the licensee is granted the use of the intellectual property, but the ownership stays with the original holder of the property rights, whether a copyright, a trademark, or a patent. Which arrangement is better for your particular situation can be complicated to figure out. Let one of our experienced patent attorneys at Thompson Patent Law help you make the decision and draw up the kind of agreement that will work best for you. Call our office today at (512) 649-1046.
What is an Assignment Agreement?
An assignment agreement is a legal contract that transfers the ownership of intellectual property rights—usually a copyright, patent, or trademark—to another person or entity. The original owner of the rights does not retain any interest in the intellectual property in question. Assignments must be registered with the United States Patent and Trademark Office (USPTO) in most cases. Assignments carry a one-time, lump-sum payment at the time the agreement is signed and recorded. The original owner does not get any ongoing income from the intellectual property that they have assigned to another party. Assignments agreements are enforceable in court if they have been executed and recorded properly.
What is a Licensing Agreement?
In a licensing agreement, the original owner of the intellectual property rights does retain an interest in the intellectual property in question. The agreement may include a time limit on the licensee’s use of the product or idea, and usually includes some kind of ongoing payments to the owner of the rights (the licensor). Profits are generally not guaranteed at any particular level but may be set out as a percentage of the recipient licensee’s profits. In some licensing agreements, the licensor retains the right to use the property simultaneously, and in other agreements, the licensee is granted exclusive rights for a period of time.
Am I Better Off with a Licensing Agreement or an Assignment?
Each situation, each business, and each intellectual property rights owner is different. The best way to determine what the right course for you might be is to talk with an experienced professional intellectual property attorney. The lead attorney at Thomson Patent Law, Craige Thompson, has over 20 years of experience dealing with intellectual property rights issues and can give you the solid legal advice you need to decide whether to license or assign your hard-won intellectual property rights. Call us today to get your questions answered at (512) 649-1046.
