IP assignment
An IP assignment is the act by which a rights holder permanently transfers ownership of intellectual property rights to an assignee, to be distinguished from a license, which only grants a right of use.
Definition
An IP assignment transfers ownership of an intellectual property right (trademark, patent, copyright, design, trade secret) from the assignor to the assignee on a permanent basis. In France, a copyright assignment requires a written instrument listing each right assigned, the field of exploitation, the duration and the territory (article L131-3 of the French Intellectual Property Code (CPI)). Failing that, the assignment is void. In the United States, the Copyright Act of 1976 (17 U.S.C. § 204(a)) likewise requires a signed writing. Patent assignments take the form of a written instrument recorded with the USPTO within 3 months for enforceability against third parties (35 U.S.C. § 261), and recorded with the INPI in the French Registre National des Brevets in France.
In plain English
You paid a freelance developer to code your application, a designer to create your logo, an agency to write your content. You think you own it. Wrong. Without a signed IP assignment, the service provider remains the rights holder and you only have an implied license of limited scope. The trap is fatal during a fundraise or an M&A transaction: due diligence reveals that you do not own your own code, and the deal collapses or the valuation collapses with it. In the United States, the work made for hire concept (17 U.S.C. § 101) applies only to employees and to certain limited categories of works specially commissioned in writing. For everything else, a written IP assignment is mandatory. In France, case law on collective works and on contracts of commission does not save executives who never signed an explicit assignment.
RWM transatlantic case study
For a French startup flipping into a Delaware C-Corp, the IP audit is the most time-consuming step of the process. We reconstruct the chain of title from the initial idea: founders, early developers, interns, agencies, offshore contractors. Each missing link requires a remedial confirmatory assignment, sometimes 5 or 10 years after the fact, with a retroactive negotiation of consideration. The Delaware C-Corp must then receive the full IP package through a Contribution and Assignment Agreement, recorded with the USPTO and the INPI. For U.S. employees, the Invention Assignment Agreement (often bundled with an NDA and a non-compete as the PIIA, Proprietary Information and Inventions Assignment) is signed on day one of employment. On the French side, the regime for inventions de mission (article L611-7 of the French Intellectual Property Code (CPI)) automatically assigns employee inventions to the employer under certain conditions, but not code, design or trademark, which all require a written assignment.
Points to watch
- Without a signed written assignment, the IP stays with the service provider or freelancer, never with the principal.
- U.S. work made for hire applies to employees, rarely to commissioned works.
- Patent IP assignments must be recorded with the USPTO within 3 months for enforceability against third parties.
- Chain-of-title audit mandatory before any flip or M&A transaction.
- In France, a copyright assignment is void without the precise listing required by article L131-3 CPI.