Aligning IP License and Assignment Provisions With Statutory Concepts

With most commercial contract terms, we have a lot of flexibility in drafting them. 

We can use plain language and focus on creating clear and precise language. We can word and structure these provisions in many different ways.

That's not the case with IP license and assignment provisions. We should always draft these to align with the statutory concepts. The U.S. Patent Act and the U.S. Copyright Act define the scope and rights. When we use words in our IP license and assignment provisions that are inconsistent with the statutes, we create confusion. 

That isn't to say you are prohibited from using non-statutory words in these provisions. You can make that choice, but you have to understand what happens when you do. For example, "use" is not an exclusive right under the Copyright Act. Granting a license to "use" a copyrighted work is not granting a statutory right. It is authorizing something, but that something is not the intellectual property right established by the statute.

Another example of the importance of knowing the statute relates to works made for hire. The Copyright Act defines this term. It has very strict criteria for the sorts of work that can qualify. If you rely solely on the work-made-for-hire contract provision to assign rights in a type of creative work not covered by the statutory concept, you are creating a legal mess. 

These are examples of why it is so critical that everyone who works with contracts learns about the intellectual property law behind the provisions. 

Make sure you understand the definitions and rights. With that information, you can better tailor your provisions to grant or receive the rights you need for the business objective. If you don't know what the IP laws say, you will have a much harder time making sure that your company or client is protected. 

I recently created a free IP Training Hub on the How to Contract website to help people learn this critical subject. I'll be adding to it over time, bringing to you more resources and training tools. I also have a two-hour IP Essentials course that dives deeper into these issues and nuances. 

Whatever way you prefer to learn, I urge you to find the time and invest your energy into your own training on the subject.