Belt and Suspenders: No Transfer + Retain Existing IP
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Intellectual Property. Except for rights expressly granted under this agreement,

nothing in this agreement will function to transfer any of either party's Intellectual Property rights to the other party, and

each party will retain exclusive interest in and ownership of its Intellectual Property developed before this agreement or developed outside the scope of this agreement.


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Neutral Exchange Agreements Ownership
Standard — Retain existing IP; Independently developed and Jointly developed property.
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Intellectual Property

Preexisting Intellectual Property. Except for rights expressly granted under this agreement, each party will retain exclusive interest in and ownership of its Intellectual Property developed before this agreement or developed outside the scope of this agreement.

Independently Developed Intellectual Property. Any Intellectual Property developed solely by a party under this agreement without the participation of the other party is and will remain the sole and exclusive property of the developing party.

Jointly Developed Intellectual Property. In the event that the parties jointly develop Intellectual Property, the parties shall engage in good faith negotiations to establish their respective rights. In the event the parties cannot reach an agreement with regard to such jointly developed property, each party will have equal ownership and rights in such intellectual property, without further obligation and without a duty to account to the other party.


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Exchange Agreements Ownership
License Agreement — Pro-Licensor Modifications and New Intellectual Property
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Intellectual Property

Retain Ownership of Preexisting Intellectual Property. Except for the rights granted in the License Grant of this agreement, each party will retain all interest in and ownership of its Intellectual Property existing prior to this agreement or developed outside the scope of this agreement.

Retain Ownership of Licensed Intellectual Property. [PARTY A] retains all interest in and ownership of the Licensed Intellectual Property, except for the rights granted to [PARTY B] under the License Grant section of this agreement. [PARTY B]'s use of the Licensed Intellectual Property and any good will accrued is solely for [PARTY A]'s benefit.

Ownership of Modifications and New Intellectual Property

Modifications and New Intellectual Property by [PARTY A]. [PARTY A] shall grant to [PARTY B] a non-exclusive, royalty-free license for any Modifications [PARTY A] makes or other Intellectual Property [PARTY A] develops during the Term and in connection with this agreement, for the remaining length of this agreement and under the same terms of this agreement.

Modifications and New Intellectual Property by the [PARTY B] 

Assigned to [PARTY A]. [PARTY B] shall assign to [PARTY A] all interest it has in any Modifications [PARTY B] makes or other Intellectual Property [PARTY B] develops during the Term and in connection with this agreement.

Licensed Back to [PARTY B]. [PARTY A] shall grant-back to [PARTY B] a non-exclusive, royalty-free license to any Modifications and other Intellectual Property assigned to [PARTY A] under paragraph [ASSIGNED TO PARTY A], for the remaining Term and under the same terms of this agreement.

Definitions

Intellectual Property"Intellectual Property" means any and all of the following in any jurisdiction throughout the world

trademarks and service marks, including all applications and registrations, and the goodwill connected with the use of and symbolized by the foregoing,

copyrights, including all applications and registrations related to the foregoing,

trade secrets and confidential know-how,

patents and patent applications,

websites and internet domain name registrations,

other intellectual property and related proprietary rights, interests and protections (including all rights to sue and recover and retain damages, costs and attorneys' fees for past, present, and future infringement, and any other rights relating to any of the foregoing). 

Modifications. "Modifications" means any additions to, updates, improvements on, bug patches, new versions of, or other modifications to the Licensed Intellectual Property, made by either party during this agreement.


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Heavy Pro-Provider License Ownership
License Agreement — Pro-Licensee Modifications and New Intellectual Property
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Intellectual Property

Retain Ownership of Preexisting Intellectual Property. Except for the rights granted in the License Grant of this agreement, each party will retain all interest in and ownership of its Intellectual Property existing prior to this agreement or developed outside the scope of this agreement.

Retain Ownership of Licensed Intellectual Property. [PARTY A] retains all interest in and ownership of the Licensed Intellectual Property, except for the rights granted to [PARTY B] under the License Grant section of this agreement. [PARTY B]'s use of the Licensed Intellectual Property and any good will accrued is solely for [PARTY A]'s benefit.

Ownership of Modifications and New Intellectual Property

Modifications by [PARTY A]. [PARTY A] shall grant a non-exclusive and royalty-free license to the [PARTY B] for any Modifications [PARTY A] makes or other Intellectual Property [PARTY A] develops during the Term and in connection with this agreement, for the remaining Term and under the same terms of this agreement.

Modifications by [PARTY B]

Retain All Interest. [PARTY B] will retain all interest in any independently-protectable (under patent, copyright, or other law) Modifications [PARTY B] makes or other Intellectual Property [PARTY B] develops during the Term and in connection with this agreement.

No Effect on [PARTY A]'s Interests. [PARTY B]'s right, title, and interest to and in these Modifications made and other Intellectual Property develop during the Term and in connection with this agreement will not effect [PARTY A]'s exclusive interest in and ownership of  the underlying Licensed Intellectual Property.

Definitions

Intellectual Property"Intellectual Property" means any and all of the following in any jurisdiction throughout the world

trademarks and service marks, including all applications and registrations, and the goodwill connected with the use of and symbolized by the foregoing,

copyrights, including all applications and registrations related to the foregoing,

trade secrets and confidential know-how,

patents and patent applications,

websites and internet domain name registrations,

other intellectual property and related proprietary rights, interests and protections (including all rights to sue and recover and retain damages, costs and attorneys' fees for past, present, and future infringement, and any other rights relating to any of the foregoing). 

Modifications. "Modifications" means any additions to, updates, improvements on, bug patches, new versions of, or other modifications to the Licensed Intellectual Property, made by either party during this agreement.


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Heavy Pro-Providee License Ownership
Independent Contractor Agreement — Assignment of Work Product
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Intellectual Property

Ownership of Work Product. The parties hereby acknowledge that the Work Product, and all documentation, information, systems, and other results developed in connection with the Work Product, will, to the extent permitted by Law, be a "work made for hire" within the definition of Section 101 of the Copyright Act (17 U.S.C. 101) and will remain [PARTY A]'s exclusive property.

Assignment of Work Product. If and to the extent that any Work Product is not deemed to be a work made for hire within the definition of the Copyright Act, at the completion and acceptance of the [DELIVERABLE], [PARTY B] shall promptly assign to [PARTY A] all its right, title, and interest in and to the Work Product, including any Intellectual Property rights.

Cooperation. During and after the Term, on [PARTY A]'s reasonable request, [PARTY B] shall provide all assistance necessary and desirable for [PARTY A] to establish, preserve, and enforce its rights, title, and interest in and to the Work Product.

Moral Rights. At the completion and acceptance of the [DELIVERABLE] and to the extent permitted by Law, [PARTY B] shall waive all moral rights relating to the Work Product (including any rights (a) of identification of authorship, (b) of approval, restriction, or limitation on use, and (c) to subsequent modifications).


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Neutral Independent Contractor Agreement Ownership
Software as a Service Agreement — Vender Retains all Rights
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Ownership of Intellectual Property. [PARTY A] will retain all interest in and to the Services, including all documentation, modifications, improvements, upgrades, derivative words, and all other Intellectual Property rights in connection with the Service, including [PARTY A]'s name, logos. and trademarks reproduced through the Service.


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Neutral Software as a Service Agreement Ownership
Employment Agreement
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Ownership of Intellectual Property

Disclosure to [PARTY A]. [PARTY B] shall promptly disclose to [PARTY A] any significant conceptions and ideas for inventions, improvements, and valuable discoveries [PARTY B] conceives of or develops 

solely or jointly with another Person,

during the Term and within one year after its expiration or termination,

that are directly related to [PARTY A]'s business or activities or that [PARTY B] conceives as a result of his employment by [PARTY A], and

regardless whether subject to copyright or patentable and regardless of whether or not such ideas, inventions, or improvements qualify as "work made for hire" (the "[PARTY B] Inventions").

Assignment to [PARTY A]. [PARTY B] hereby agrees to assign to [PARTY A], and hereby assigns to [PARTY A], all of his or her interests and rights in or to any [PARTY B] Inventions.

Help Register Intellectual Property. On [PARTY A]'s reasonable request, [PARTY B] shall execute any and all applications, assignments, or other instruments that [PARTY B] deems necessary to apply for and obtain Intellectual Property registrations from the United States Patent and Trademark Office, United States Copyright Office, or any foreign equivalents, for [PARTY B] Inventions.

Release of [PARTY A]. [PARTY B] will not assert any rights in connection with [PARTY B] Inventions against [PARTY A] or any third party.


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Neutral Employment Agreement Ownership
Research Agreement
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Intellectual Property

Preexisting Intellectual Property. Each party will retain exclusive interest in and ownership of its Intellectual Property existing prior to this agreement or developed outside the scope of this agreement.

Independently Developed Intellectual Property

[PARTY B] Developed Intellectual PropertyAny Intellectual Property developed solely by [PARTY B] in connection with its work on the [DELIVERABLE] without the participation of the other party is and will remain [PARTY B]'s sole and exclusive property ("[PARTY B]-Developed Intellectual Property").

[PARTY A] Developed Intellectual PropertyAny Intellectual Property developed solely by [PARTY A] in connection with its work on the [DELIVERABLE] without the participation of the other party is and will remain [PARTY A]'s sole and exclusive property ("[PARTY A]-Developed Intellectual Property").

Jointly Developed Intellectual Property. In the event that the parties jointly develop Intellectual Property, the parties shall engage in good faith negotiations to establish their respective rights. In the event the parties cannot reach an agreement with regard to such jointly developed property, each party will have equal ownership and rights in such intellectual property, without further obligation and without a duty to account to the other party.

License Grant. At the expiration or termination of this agreement, [PARTY A] shall grant to [PARTY B] an irrevocable fully paid-up, non-royalty bearing, worldwide, non-exclusive license with the right to sublicense, any patent, copyright or other Intellectual Property right associated with any [PARTY B-Developed Intellectual Property, including the right to practice the [PARTY B-Developed Intellectual Property, and the right to make, have made, use, import, offer for sale and sell products and processes covered by the [PARTY B-Developed Intellectual Property.

Intellectual Property Definition"Intellectual Property" means any and all of the following in any jurisdiction throughout the world

trademarks and service marks, including all applications and registrations, and the goodwill connected with the use of and symbolized by the foregoing,

copyrights, including all applications and registrations related to the foregoing,

trade secrets and confidential know-how,

patents and patent applications,

websites and internet domain name registrations, and

other intellectual property and related proprietary rights, interests and protections (including all rights to sue and recover and retain damages, costs and attorneys' fees for past, present, and future infringement, and any other rights relating to any of the foregoing). 


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Neutral Research Agreement Ownership
Research Agreement — IP Assigned to [PARTY A], License to [PARTY B]
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Intellectual Property

Preexisting Intellectual Property. Each party will retain exclusive interest in and ownership of its Intellectual Property existing prior to this agreement or developed outside the scope of this agreement.

Developed Intellectual Property

Assignment of Developed Intellectual Property to [PARTY A]. At the termination or expiration of this agreement, unless [PARTY B] terminates it for [PARTY A]'s material breach under section [TERMINATION], [PARTY B] shall irrevocably assign to [PARTY A] any Intellectual Property rights or interest [PARTY B] has in Intellectual Property developed under this agreement, whether developed solely by [PARTY B], or jointly by the parties.

Grant-Back to [PARTY B]. [PARTY A] shall grant to [PARTY B] a non-exclusive, royalty-free license to use, practice, and reproduce the Intellectual Property [PARTY B] assigned to [PARTY A] under paragraph [ASSIGNMENT OF DEVELOPED INTELLECTUAL PROPERTY TO PARTY A] on the same terms of this agreement.

Intellectual Property Definition"Intellectual Property" means any and all of the following in any jurisdiction throughout the world

trademarks and service marks, including all applications and registrations, and the goodwill connected with the use of and symbolized by the foregoing,

copyrights, including all applications and registrations related to the foregoing,

trade secrets and confidential know-how,

patents and patent applications,

websites and internet domain name registrations, and

other intellectual property and related proprietary rights, interests and protections (including all rights to sue and recover and retain damages, costs and attorneys' fees for past, present, and future infringement, and any other rights relating to any of the foregoing). 


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Heavy Pro-Provider Research Agreement Ownership
Data Sharing Agreement
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Intellectual Property Ownership

No License to Existing Intellectual Property. Except for any Intellectual Property rights included in the [DELIVERABLE] to use Data, the parties hereby acknowledge that this agreement does not constitute a grant by either party to the other of any license or right to either party's Intellectual Property existing as of the Effective Date.

Ownership of Developed Intellectual Property. If either party develops any new Intellectual Property in connection with this, the parties shall enter into a separate definitive agreement regarding the ownership of that new Intellectual Property. 


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Neutral Data Sharing Agreement Ownership
Retain Existing IP + License for Purpose + Newly Developed IP
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Intellectual Property 

Each Party Retains Intellectual Property. Subject to paragraph [LICENSE TO PARTY A] below, each party will retain exclusive interest in and ownership of its Intellectual Property developed before this agreement or outside the scope of this agreement.

License to [PARTY A]. [PARTY B] hereby grants to [PARTY A] a non-exclusive, non-transferable, non-sublicensable, world-wide, and royalty-free license to use [PARTY B]'s pre-existing Intellectual Property solely for the purpose of providing the [DELIVERABLE].

Developed Intellectual Property. If any Intellectual Property is developed under this agreement, whether by one party on its own or jointly-developed by both parties, the parties shall cooperate to execute a separate agreement regarding the ownership of and any licenses regarding that newly-developed Intellectual Property.


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Heavy Pro-Provider Master Services Agreement Ownership
Software License Agreement
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Intellectual Property. [PARTY A] will retain exclusive interest in and ownership of its Intellectual Property rights in and to the Software and expressly reserves all rights not expressly granted under this agreement.


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Slight Pro-Provider Software License Agreement Ownership
Product Sales Agreement
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Intellectual Property Ownership. Subject to any license explicitly granted under this agreement necessary for [PARTY B]'s use of a Product that incorporates software, no transfer of any right, interest, or ownership of any Intellectual Property will occur under this agreement. 


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Neutral Product Sales Agreement Ownership
Retain Existing IP
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Intellectual Property. Each party will retain exclusive interest in and ownership of its Intellectual Property existing prior to this agreement or developed outside the scope of this agreement.


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Neutral Exchange Agreements Ownership
No Transfer of IP
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Intellectual Property. Nothing in this agreement will function to transfer any of either party's Intellectual Property rights to the other party.


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Neutral Exchange Agreements Ownership
Software Escrow Agreement
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Intellectual Property

No Transfer of Intellectual Property. Subject to paragraph [LIMITED LICENSE] below, nothing in this agreement will function to transfer any of either party's Intellectual Property rights to the other party.

Retain Existing Intellectual Property. Each party will retain exclusive interest in and ownership of its Intellectual Property existing prior to this agreement or developed outside the scope of this agreement.

Limited License. If the [DELIVERABLE] is released to [PARTY B] due to [PARTY A]'s failure to correct a material flaw in the Licensed Software according to section [RELEASE OF ESCROW MATERIALS], [PARTY A] shall grant [PARTY B] a perpetual, non-exclusive, non-transferable, non-sublicensable, and royalty-free license to use and reproduce the [DELIVERABLE] as necessary for [PARTY B] to correct or use the Licensed Software.


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Neutral Software Escrow Agreement Ownership
Retain Existing IP + License for the Purpose
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Intellectual Property 

Each Party Retains Intellectual Property. Subject to paragraph [LICENSE TO PARTY A] below, each party will retain exclusive interest in and ownership of its Intellectual Property developed before this agreement or outside the scope of this agreement.

License to [PARTY A]. [PARTY B] hereby grants to [PARTY A] a non-exclusive, non-transferable, non-sublicensable, world-wide, and royalty-free license to use [PARTY B]'s pre-existing Intellectual Property solely for the purpose of providing the [DELIVERABLE].


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Slight Pro-Provider Master Services Agreement Ownership
Content License Agreement
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Ownership

Property and Content OwnershipExcept as specifically provided for in this agreement, 

each party will retain all ownership of their respective property, including [PARTY B]'s property, the [PARTY A] Content, and [PARTY A] Trademarks, and

nothing in this agreement will serve to license or transfer either party's property to the other.

No Challenge to Validity. Neither party will challenge the validity of the other party's ownership of its property, or its Intellectual Property rights in that property.

Derivative Works. [PARTY B] will own all derivative works it creates from the [PARTY A] Content, to the extent those works are separable from the [PARTY A] Content.


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Neutral Content License Agreement Ownership
End User License Agreement
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Licensed Software Ownership. Licensor will retain all ownership of the Software and all intellectual property rights in it.


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Neutral End User License Agreement Ownership
Intellectual Property Security Agreement
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Ownership of Intellectual Property. Except as specified otherwise under this agreement or the Credit Agreement, this agreement and the Credit Agreement are made for collateral purposes only, and

nothing in this agreement will function to transfer any of [PARTY B]'s Intellectual Property to [PARTY A],

[PARTY B] may continue to use the Intellectual Property that is included in the Collateral, including enforcing its rights in that Intellectual Property against others, and

the use of [PARTY B]'s trademarks will continue to inure to [PARTY B]'s sole and exclusive benefit.


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Neutral Intellectual Property Security Agreement Ownership
Evaluation - ownership in derivatives and feedback
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Ownership

Licensor Ownership. [PARTY A] owns and retains all right, title, and interest, including all intellectual property rights, in and to the Software and all technologies related thereto, including any and all algorithms or processes developed by [PARTY A] and all derivatives, modifications, or improvements of or to any of the foregoing made by or for [PARTY A], whether or not created or developed in connection with the Services.

Client Ownership. [PARTY B] owns and retains all right, title, and interest, including all intellectual property rights, in and to

the [PARTY B] Content; and

all data and reports provided to [PARTY B] by [PARTY A] prepared based on analysis of the [PARTY B] Content, subject to [PARTY A]’s underlying rights in the Software.

Derivative Works. [PARTY B] hereby grants to [PARTY A] a non-exclusive, non-transferable, worldwide, royalty-free, fully paid-up, perpetual, and irrevocable right and license to use data derived from analysis of the [PARTY B] Content in aggregated or de-identified form for the purposes of providing and improving [PARTY A]’s products and services.

Feedback. If [PARTY B] provides any feedback, comments, and suggestions to [PARTY A] regarding the Software during the Evaluation Period ("Feedback"), such Feedback shall expressly exclude any and all [PARTY B] Confidential Information contained therein. Notwithstanding the foregoing, [PARTY B] shall have no obligation to provide Feedback to [PARTY A], and for the avoidance of doubt, [PARTY B] is providing the Feedback "as is" without warranty of any kind. [PARTY A]’s use of the Feedback shall be at [PARTY A]’s sole and exclusive risk, and [PARTY B] will have no liability whatsoever in connection with the Feedback.


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Ownership

About

  • Clause Taxonomy: Ownership
  • Organization: Public
  • Updated: 04/05/2018
  • Rating

Overview

The Intellectual Property clause handles the ownership of all intellectual property related to the agreement, including each party's pre-existing intellectual property.

The Intellectual Property clause can be found in virtually any agreement, though licenses and independent contractor agreements both have important variants with significant differences.

The Common Intellectual Property Clauses

The common Intellectual Property clause, used in most types of agreements, makes it clear that each party retains the ownership over their intellectual property; that is, unless the agreement says otherwise, that the agreement does affect the ownership of their intellectual property.

Common variants to this details how Intellectual Property created during the agreement, by one or both parties, will be owned — either solely by the party that created it, or jointly between the two parties as co-authors.

Intellectual Property Clauses in Licenses

In license agreements, the Intellectual Property clause makes it explicit that the only intellectual property rights that change hands are those specifically licensed in the License Grant clause. A license is not a transfer, sale, or assignment, it does not affect ownership; the licensee does not own the intellectual property licensed to him, the licensor retains ownership. The Intellectual Property clause in a license is to make it clear that the license is only that, a license, that it does not affect the licensor's ownership of the intellectual property, and that any existing goodwill in the Licensed IP, or good will accrued during the agreement, is for the benefit of the Licensor, not the Licensee (the 'ownership' of goodwill is most important in trademark licensing). 

On top of this, the clause can specify how modifications to the Licensed IP are owned. On the one hand, if the Licensee modifies or improves on the intellectual property, who owns that modification? If the Licensor owns it, is the Licensor required to "grant-back" to the Licensee a license to use that modification? On the other hand, if during the course of the agreement, the Licensor modifies or updates the intellectual property (for example, if a new version of licensed software comes out), does the licensor automatically get a license to that modification, or must it get a new license?

The ownership of modifications is highly-negotiable and highly-varied. We have included a pro-provider and pro-providee option for handling modifications, but the parties should carefully review these options and alter them to suit their purpose if need be.

Intellectual Property Clause in Independent Contractor Agreements — Ownership of Work Product

The Intellectual Property clause in an independent contractor agreement could also be called the Ownership clause, or the Work Product clause. Here, the clause says that the company, not the contractor, will own the work product—and all intellectual property rights in the work product—of the agreement. The simplest way to accomplish this is by assigning ownership of the work product, including intellectual property rights, to the company. Alternatively, the parties can include a Work Made For Hire clause, indicating that the work product should be considered a work made for hire, belonging to the company, not to the contractor. For more on ownership of work product, see our discussion section below.