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

A live 90-minute premium CLE video webinar with interactive Q&A

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Thursday, July 28, 2022

1:00pm-2:30pm EDT, 10:00am-11:30am PDT

Early Registration Discount Deadline, Friday, July 8, 2022

or call 1-800-926-7926

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.

Description

When a company wants to develop new technology, it either seeks to develop this new technology internally or, if it is unable or impractical to do so, it seeks a capable third party to either develop the new technology itself or in partnership with the company seeking its expertise. It may be possible for the company to obtain the newly developed technology and its corresponding intellectual property (IP) outright, in exchange for payment of those development services. However, there are many occasions both parties desire some ability to capitalize on the new development in some manner other than a simple payment for services. Any time a company contracts with a third party to develop technology for, or in partnership with, the company, one of the key issues in the agreement is allocating IP ownership.

As 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.

In addition to these issues, there are other legal concepts that may impact or control allocation and even determine whether the collaborative relationship is even desirable, namely, antitrust (competition) laws.

Our panel will also discuss the pros and cons of the different vehicles for developments, namely, service agreements, JDAs, and joint ventures.

Listen as our authoritative panel of 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 also offer best practices for allocating patent ownership.

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Outline

  1. Introduction to JDA/JV agreements
  2. Patent ownership allocation
    1. Ownership based on inventorship
    2. Ownership based on the subject matter
    3. Joint ownership
  3. Contract considerations
  4. Antitrust considerations
    1. U.S.
    2. Abroad
  5. 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

Hrivnak, Bret
Bret A. Hrivnak

Partner
Hahn Loeser & Parks

As a patent and trademark attorney, Mr. Hrivnak counsels clients on the protection of U.S. and international...  |  Read More

Kacedon, D. Brian
D. Brian Kacedon

Partner
Finnegan Henderson Farabow Garrett & Dunner

Mr. Kacedon is a recognized authority in IP transactions having drafted and negotiated hundreds of agreements across...  |  Read More

Noonan, Kevin
Kevin E. Noonan, Ph.D.

Partner
McDonnell Boehnen Hulbert & Berghoff

Dr. Noonan's practice involves all aspects of patent prosecution, interferences, and litigation. He represents...  |  Read More

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