Structuring Present Assignment Clauses and Power of Attorney in Hardware PIIA Agreements
Present assignment clauses and irrevocable powers of attorney in hardware PIIAs secure immediate IP ownership and enable unilateral patent filings.
Hereby Assigns
Meaning
Operative phrase in an intellectual property agreement that effects an immediate transfer of legal title. Using the words hereby assigns creates a present grant of both existing and future inventions. This language is preferred in employment contracts and founder agreements because it eliminates the need for additional documentation once a design is finalized.
It ensures that the company owns the technology from the moment of its creation.
Temporal Transfer
The timing of the ownership shift when using hereby assigns is instantaneous. Unlike a promise to assign in the future, this phrasing moves the interest without any delay. This prevents a window of time where the inventor might hold legal title to the work.
Legal professionals use this construction to provide maximum security to the assignee.
Present Grant
A contract containing a present grant through the words hereby assigns is self executing. The Federal Circuit has confirmed that this language is sufficient to transfer patent rights without a second signature. This rule simplifies the management of large engineering teams where tracking every individual invention can be difficult.
The company can rely on the original contract to prove its ownership to auditors.
Litigation Standing
To bring a patent infringement suit, a plaintiff must prove they hold the legal title, which is often established by the phrase hereby assigns in the chain of title. A company that only holds a promise to assign may find its case dismissed by a judge. This phrasing provides the necessary standing to protect the company assets in court.
It is a fundamental component of a robust intellectual property strategy.