QuestionDear David, I have been reading your article online from 18 September 2017 on intellectual property (IP) ownership I must say I found it extremely useful and put together very concisely. I have one question that you may be able to help me with. I am the single owner/director of a limited company I personally own the IP on a bunch of designs (logotypes, brand marks, website design, corporate identity etc.) that were created for the business prior to its incorporation. There is then a whole load of designs (product designs and additional brand assets) that were created after incorporation that are technically owned by the business as you very clearly point out, as they were designed and developed whilst I was a director and employee of the business.
I am currently in a situation in which I want to be able to protect these design assets from somebody who is making an aggressive claim on the business.Is there a way that I can transfer the ownership of all of this IP back to being owned personally? Transfer (with a simple written document) Sell (peppercorn rate) so that I own it outright until which point I could return back to the business if required. And, as I am continuing to produce work that is owned by the business is there a way that it is understood that this IP is automatically in effect transferred to me personally? I hope this makes sense David and would be very very grateful for any thoughts, ideas or guidance.
AnswerThanks for your question and I completely understand your concerns here. Transferring the intellectual property rights from the company back to you is a relatively straightforward exercise. All you need is a simple assignment agreement. To be legally binding, the assignment must clearly identify the IP being assigned, be in writing and be signed by the assignor (the company). There must also be some consideration for the assignment. This could be 1.00 or it could be the full value of the rights. After the intellectual property has been assigned back to you, the company will still need to use it. Therefore, you will need to grant the company a licence to use it. This licence could be granted in the same agreement. __________________________________________________________________________________
How to fight a registered design dispute and protect your intellectual property Has your intellectual property ever been stolen by another company? David Walker helps entrepreneurs take legal action against brands and retailers lifting their trademarked ideas. __________________________________________________________________________________ However, just because the rights can be assigned to you, you need to think carefully about whether you should do this. This is because assigning the rights back to you is unlikely to give you the protection you are looking for.