Allocating Patent Ownership in Joint Development Agreements: Inventorship, Subject Matter, Joint Ownership

Recording of a 90-minute premium CLE video webinar with Q&A


Conducted on Wednesday, June 9, 2021

Recorded event now available

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Program Materials

This CLE will guide patent counsel on allocation of patent ownership in joint development agreements (JDAs). The panel will discuss key considerations, including the challenges of joint ownership and strategies to mitigate risk. The panel will discuss the pros and cons of ownership based on inventorship and subject matter, as well as using a combination approach. The panel will offer best practices for allocating patent ownership in different situations.

Description

When a company wants to develop new technology, it either looks to its in-house team or enters into a JDA with a third-party developer to do so. Any time a company contracts with a third party to develop technology for the company, one of the key issues in the agreement should be allocating intellectual property ownership.

s a result, the provisions addressing IP rights are among the most important ones in a JDA. Clearly drafted IP rights provisions help avoid later disputes and ensure that each party receives the benefit it expects from the agreement. The parties have wide latitude in allocating ownership in a JDA, and, consequently, there are many ways to achieve this. Inventorship and subject matter are the most often used ways to allocate ownership.

If the parties determine to allocate ownership of any developed IP based on inventorship, each party benefits from its own creativity and work. However, it may not promote collaboration and could lead to bitter ownership disputes in the future and make those patents subject to inventorship attacks. Alternatively, if ownership is allocated based on the subject matter, the allocation will more likely correspond to the company's business.

Listen as our authoritative panel of patent attorneys examines the allocation of patent ownership in JDAs. The panel will discuss key considerations, including the challenges of joint ownership. The panel will discuss ownership based on inventorship and based on the subject matter, including the pros and cons of each basis for ownership and using a combination approach. The panel will offer best practices for allocating patent ownership.

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Outline

  1. Patent ownership allocation
    1. Ownership based on inventorship
    2. Ownership based on the subject matter
    3. Joint ownership
  2. Contract considerations
  3. Best practices

Benefits

The panel will review these and other noteworthy issues:

  • What are the key considerations when determining how to allocate patent ownership in JDAs?
  • What are the pros and cons of basing ownership on inventorship? On subject matter?
  • What best practices should counsel employ when allocating ownership?

Faculty

Fuentes, Gloria
Dr. Gloria Fuentes
Vice President & Assistant General Counsel
Bristol-Myers Squibb Co., Innovation Law Group

Dr. Fuentes serves as lead intellectual property counsel to the business development group. She has significant...  |  Read More

Herold Li-Anne
Anne Elise Herold Li

Partner
Crowell & Moring

Ms. Li focuses her practice on patent, trademark, and trade secret litigation, counseling, patent procurement,...  |  Read More

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