April 11, 2016, 08:00 AM 2
In my last two posts – “Fully Baking Joint IP Ownership into Collaboration Agreements” and “The Default Law of Joint IP Ownership” – I discussed the prevalence and dangers of joint intellectual property (IP) ownership clauses in certain inter-company agreements. More specifically, I warned about the dangers of automatically assuming that newly-created (or “foreground”) IP should be equally and jointly owned by the parties to various collaboration-type agreements such as Joint Research Agreements, Technology Cooperation Agreements, Joint Development Agreements, Sponsored Research Agreements, Co-Development Agreements, Supply Agreements, Services Agreements, etc. Further, using patent filing statistics as a proxy for R&D activity, I demonstrated that the default laws of joint IP ownership across seven of the world’s top patent filing jurisdictions were widely varied, and counseled IP law practitioners not to neglect addressing the all-too-often forgotten consequences and mechanics of joint IP ownership while drafting, negotiating and reviewing such collaboration agreements.
Now, I present ten scenarios for dealing with what is usually the most contested issue in pre-collaboration agreement negotiations – the ownership of foreground IP. These scenarios range from preferably avoiding joint IP ownership altogether to more complex situations involving joint IP ownership with both nonexclusive and exclusives licenses, as well as nonexclusive and exclusive cross-licenses, and even scenarios based on defining the parties’ respective fields of endeavor.
Thus, if you cannot “Avoid jointly owned IP like the plague,” because business and engineering clients, as well as corporate co-counsel, continue to insist on the “fairness” of joint IP ownership, the above-presented scenarios will serve to fill the quivers of IP law practitioners who continue to be called to draft, review and negotiate such collaboration-type agreements.
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