Allocating Patent Ownership in Joint Development Agreements: Inventorship, Subject Matter, Joint Ownership
Recording of a 90-minute premium CLE video webinar with Q&A
This CLE course will discuss joint development agreements (JDAs) and the allocation of patent ownership in 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 and other key considerations for JDAs, as well as antitrust considerations in the U.S. and abroad.
- Introduction to JDA/JV agreements
- Patent ownership allocation
- Ownership based on inventorship
- Ownership based on the subject matter
- Joint ownership
- Contract considerations
- Antitrust considerations
- Best practices
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?
Bret A. Hrivnak
Hahn Loeser & Parks
As a patent and trademark attorney, Mr. Hrivnak counsels clients on the protection of U.S. and international... | Read More
As a patent and trademark attorney, Mr. Hrivnak counsels clients on the protection of U.S. and international intellectual property, including patents, trademarks, copyrights, trade secrets and domain names. He manages worldwide IP portfolios and develops global strategies for IP protection. Mr. Hrivnak’s IP experience includes prosecuting and defending disputes arising under state, federal and international laws, including proceedings before the Board of Patent Appeals and Interferences, the Trademark Trial and Appeal Board and the World Intellectual Property Organization. His representation also includes preparing and reviewing agreements, including licenses, assignments, joint ventures and development agreements, supply agreements, M&As, and other IP transactions. He also addresses antitrust issues that may arise in such transactions or otherwise during the course of his clients’ business activities.Close
D. Brian Kacedon
Finnegan Henderson Farabow Garrett & Dunner
Mr. Kacedon is a recognized authority in IP transactions having drafted and negotiated hundreds of agreements across... | Read More
Mr. Kacedon is a recognized authority in IP transactions having drafted and negotiated hundreds of agreements across all technologies. He is designated as a Certified Licensing Professional. He has also successfully litigated multiple lawsuits and arbitrations based on his extensive transactional experience. Mr. Kacedon’s practice focuses on patent and technology licensing and litigation. In his transactional practice, he assists clients in conducting market assessments for their patents, conducts licensing negotiations, drafts licensing agreements, and participates in related litigations. His experience includes setting up and directing international patent licensing and enforcement programs, including one that resulted in more than 500 license agreements. Mr. Kacedon is a frequent presenter at legal and industry workshops and conferences and has served as adjunct professor teaching licensing at the George Washington University Law School.Close
Kevin E. Noonan, Ph.D.
McDonnell Boehnen Hulbert & Berghoff
Dr. Noonan's practice involves all aspects of patent prosecution, interferences, and litigation. He represents... | Read More
Dr. Noonan's practice involves all aspects of patent prosecution, interferences, and litigation. He represents pharmaceutical companies both large and small on a myriad of issues, as well as several universities in both patenting and licensing to outside investors. Dr. Noonan also has over 20 years of experience as a molecular biologist, and is a founding author of the Patent Docs weblog, which focuses on biotechnology and pharmaceutical patent law. He has also filed amicus briefs to district courts, the Federal Circuit and the Supreme Court involving patenting issues relevant to biotechnology.Close