Documents to Protect and Capitalize on Intellectual Property

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by John Rake

All companies need to take steps to document their rights in and the value of their intellectual property. When your core business is based on key intellectual property, be it a distinctive brand (trademark), innovative invention (patent), creative expression (copyright), or secret “sauce” (trade secret), developing an organized document library that memorializes relationships between founders, employees, vendors, customers, licensees, and even competitors is critical to the success of the enterprise.

Here is a non-exhaustive list of templates that every company—and in particular, technology companies—should be familiar with in order to protect and capitalize on their intellectual property rights. In no particular order:

      • Founder Agreement / Intellectual Property Assignments (addresses ownership of rights at inception and ensures that all founders go into venture with “eyes wide open”)
      • Non-disclosure / Confidentiality Agreements (mutual and unilateral)
      • Employee Agreements (including assignment of intellectual property rights, work made for hire language, and agreement not to infringe or misappropriate third party’s intellectual property)
      • Invention Disclosure Form (for founders/employees/consultants to carve out previous inventions from work going forward for company)
      • Consulting Services Agreement (including assignment of intellectual property rights, work made for hire language, or other arrangement addressing ownership of intellectual property rights)
      • Statement of Work (can be attached to Consulting Services Agreements to specify deliverables, deadlines, etc. for specific projects)
      • Company Intellectual Property Policy (can be embedded in Employee handbook or separate policy document)
      • Trade Secret Policy and Procedures (identifies and safeguards confidential company information)
      • Negotiation Term Sheets (use to reach deals with vendors, licensees, joint ventures, etc.)
      • Research, Development, & Collaboration Agreements (use for deals with academic institutions)
      • Purchase/Supply Agreement (use for raw materials, intermediate and finished products, and auxiliary materials)
      • License Agreements (depends on the subject matter licensed and the licensing party, i.e., whether this is a mass license for use with end users or a one-off license for a joint venture, manufacturer, distributor, etc.)