IP Transfer Agreement

[BobRoberts]

I have a very basic IP transfer agreement for "any and all subject matter that may be protectable as Intellectual Property, including any subject matter protectable by patents, trademarks and Copyrights, such as but not limited to..."

Because I want to keep this general (i.e., between any two parties, not just between a company and an individual, or a company and employee, etc), I use the terms "Grantor" for the transferor, and "Grantee" for the person receiving the IP rights.  Essentially this agreement would be used for an inventor having prototype work done, or a person hiring an outsider to do a TM Logo for a business.  The Agreement sets forth the person transferring any rights that they may have with their legal name and address with (hereinafter "Grantor") with a similar "Grantee" phrase following the legal description of the person receiving the rights.   

Does anyone see any concerns with this Grantor/Grantee terminology?

Regarding consideration, we often see $1 and other good and valuable consideration, $10 and other good and valuable consideration, or $342,971 and other good and valuable consideration.  Does anyone just say "in consideration of our business relationship regarding your [services] for me/my company, and leave a dollar amount out?  Normally that seems to fall within the "other good and valuable consideration" clause anyways.  What consideration do you use?

Thanks

[rc]

Hi BobRoberts,

Those are good questions, and I believe you are on the right track.

"Grantor/Grantee" is fine terminology...  Be sure you properly define these terms at the beginning of the agreement, as a general drafting rule.  E.g., say "This Agreement is between Bob Johnson ("Grantor") and Jimmy Jo Johnson ("Grantee")."  Then, you can use those terms as references for the remainder of the document (and be sure to capitalize them).

Regarding consideration, consideration as a legal concept can get pretty abstract...  Generally anything can count, but it typically needs to be more than something nominal.  It needs to have actual value.  $1 might not work, in that regard, especially if the grantor isn't properly informed on the terms of the agreement. 

One thing I'm having trouble understanding in your question is, what IS the consideration here?  It appears that you're saying that someone who is working for you ("your [services] for my company") is going to assign all of their IP to you.  Is that right?  You need to spell out what the Grantor is getting in return; otherwise it is merely a promise to make a gift, which may not amount to a real enforceable contract.

Though the context of the situation is missing here, it sounds as though you could be getting somewhat into the area of Employment Agreements and Invention Assignments.  While a bare bones approach can work, you start cracking open a can of worms here a little bit... with concepts like work-for-hire, shop rights, nondisclosure, noncompete, and the like.  Anyway, hopefully the previous three paragraphs help; and this last one should tell you a bit about things you need to either educate yourself on more or consult an attorney to sort out.  If I can be of further help let me know.

[BobRoberts]

Thanks RC,

The terms 'grantor' and 'grantee' are well-defined.

So, do others use these terms?

And, regarding consideration, the consideration would be $10 and 'other good and valuable consideration'.  The 'other good and valuable consideration' would be the employees employment (or continued employment) with the company, and an independent contractor's consideration would be the work that the indep. contractor is doing for the company.

So, what do other's do regarding consideration?  $1, $10, coupled with the 'and other good and valuable consideration' clause?

Re: assigning, I do recall a recent case (cases?) distinguishing between present assignment, and a promise to assign, and if memory serves, including 'will assign and do hereby assign' clause to ensure the assignment is not a promise to assign...

Thanks for any input.