When to use
Use this when a contract governs who owns or can use intellectual property — an MSA, SOW, employment or contractor agreement, or a license. Reach for it before signing anything where deliverables, code, designs, or inventions change hands.
Not for: deep OSS obligation analysis behind an OSS rep (ipl-oss-review); triaging whether a third party infringes you (ipl-infringement-triage); or intake of a new invention (ipl-invention-intake). This reviews IP clauses in an existing contract.
Method
- Identify the deal and parties, and who should own what: employer/employee, customer/vendor, licensor/licensee.
- Read each IP clause: ownership & assignment, grant scope, work-made-for-hire, background IP, feedback/improvements, OSS reps & warranties, IP indemnity, moral rights.
- Flag deviations: ownership traps, overbroad or perpetual grants, missing or future-tense assignment, absent OSS reps, uncapped indemnity.
- Decision point: assignment vs license for the deliverables. Assignment transfers ownership; a license leaves it with the creator — pick what the deal needs, and never accept "agrees to assign" where a present assignment is required.
- Propose a redline per flagged clause.
- ATTORNEY-ESCALATION GATE: patent and trademark assignments, IP indemnity caps, and novel structures go to a licensed attorney. You assist; you do not advise.
Example
A contractor SOW says the vendor "agrees to assign" deliverables and is silent on background IP. Two problems: "agrees to assign" is a future promise, not a present transfer, and contractor work is not work-made-for-hire by default. Redline: change to "hereby assigns," add an express written assignment of deliverable IP, and add a background-IP license so pre-existing tools stay the vendor's but you can use them.
Pitfalls
- Trusting "work made for hire" for contractors. It covers employees and nine enumerated categories only; a contractor needs an express written assignment.
- Accepting "agrees to assign." A future promise can fail to transfer title — insist on "hereby assigns" (Stanford v. Roche).
- Missing the background-IP clause. Without it, your pre-existing IP leaks or you cannot use theirs.
- Overbroad feedback grants. A "feedback" clause can quietly assign everything you suggest — narrow it.
Output format
IP CLAUSE REVIEW — <contract type> | parties: <A / B>
Deal & desired ownership: <who should own what>
| Clause | Present? | Issue | Redline |
Ownership: assignment | license (chosen: ...)
Flags: <ownership trap | overbroad grant | missing assignment | OSS rep | indemnity>
Escalated to counsel: <items>
Reference
- Work made for hire (US Copyright Act §101): applies to employees within scope, and to contractors only for nine enumerated categories under a written agreement. Otherwise a contractor needs an express written assignment.
- Present vs future assignment: "hereby assigns" effects a present transfer of title; "agrees to assign" is only a promise and may not vest ownership (Stanford v. Roche).
- OSS license obligations (permissive vs copyleft) are the basis for OSS reps & warranties — see
ipl-oss-review.
- Value of the IP: likelihood-of-confusion (trademark) and patentability bars underlie the worth of anything licensed or assigned; weak IP changes what the clause is worth.
Assistive analysis, not legal advice.
1---2name: ipl-ip-clause-review3description: Review the IP-related clauses in a contract to flag ownership traps, overbroad grants, and missing assignments, then propose a redline.4---56## When to use78Use this when a contract governs who owns or can use intellectual property — an MSA, SOW, employment or contractor agreement, or a license. Reach for it before signing anything where deliverables, code, designs, or inventions change hands.910**Not for:** deep OSS obligation analysis behind an OSS rep (`ipl-oss-review`); triaging whether a third party infringes you (`ipl-infringement-triage`); or intake of a new invention (`ipl-invention-intake`). This reviews IP clauses in an existing contract.1112## Method13141. **Identify the deal and parties,** and who should own what: employer/employee, customer/vendor, licensor/licensee.152. **Read each IP clause:** ownership & assignment, grant scope, work-made-for-hire, background IP, feedback/improvements, OSS reps & warranties, IP indemnity, moral rights.163. **Flag deviations:** ownership traps, overbroad or perpetual grants, missing or future-tense assignment, absent OSS reps, uncapped indemnity.174. **Decision point:** assignment vs license for the deliverables. Assignment transfers ownership; a license leaves it with the creator — pick what the deal needs, and never accept "agrees to assign" where a present assignment is required.185. **Propose a redline** per flagged clause.196. **ATTORNEY-ESCALATION GATE:** patent and trademark assignments, IP indemnity caps, and novel structures go to a licensed attorney. You assist; you do not advise.2021## Example2223A contractor SOW says the vendor "agrees to assign" deliverables and is silent on background IP. Two problems: "agrees to assign" is a future promise, not a present transfer, and contractor work is not work-made-for-hire by default. Redline: change to "hereby assigns," add an express written assignment of deliverable IP, and add a background-IP license so pre-existing tools stay the vendor's but you can use them.2425## Pitfalls2627- **Trusting "work made for hire" for contractors.** It covers employees and nine enumerated categories only; a contractor needs an express written assignment.28- **Accepting "agrees to assign."** A future promise can fail to transfer title — insist on "hereby assigns" (Stanford v. Roche).29- **Missing the background-IP clause.** Without it, your pre-existing IP leaks or you cannot use theirs.30- **Overbroad feedback grants.** A "feedback" clause can quietly assign everything you suggest — narrow it.3132## Output format3334```35IP CLAUSE REVIEW — <contract type> | parties: <A / B>36Deal & desired ownership: <who should own what>37| Clause | Present? | Issue | Redline |38Ownership: assignment | license (chosen: ...)39Flags: <ownership trap | overbroad grant | missing assignment | OSS rep | indemnity>40Escalated to counsel: <items>41```4243## Reference4445- **Work made for hire (US Copyright Act §101):** applies to employees within scope, and to contractors only for nine enumerated categories under a written agreement. Otherwise a contractor needs an **express written assignment**.46- **Present vs future assignment:** "hereby assigns" effects a present transfer of title; "agrees to assign" is only a promise and may not vest ownership (Stanford v. Roche).47- **OSS license obligations** (permissive vs copyleft) are the basis for OSS reps & warranties — see `ipl-oss-review`.48- **Value of the IP:** likelihood-of-confusion (trademark) and patentability bars underlie the worth of anything licensed or assigned; weak IP changes what the clause is worth.4950Assistive analysis, not legal advice.
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