Protecting IP Rights in Joint Development Agreements and Strategic Alliances

Structuring JDAs to Apportion Contributed, Joint and Derivative IP; Planning for Involuntary Early Endings; Avoiding Unintended Consequences

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

Conducted on Thursday, May 11, 2017
Recorded event now available

This CLE webinar will provide guidance to counsel on negotiating and structuring joint development agreements (JDAs) to allocate IP ownership. The panel will discuss the key provisions of the JDA to protect IP rights and avoid unintended consequences.


In joint development and strategic alliances, intellectual property ownership and use are the most contentious aspects. There is no single approach to IP ownership and exploitation, and the concerns and goals of the parties in each situation are unique.

Importantly, the JDA should cover what each party brings to the collaboration, as well as the development, use and ownership of the IP associated with the products and processes that result from the alliance.

If JDAs aren’t complicated enough, new statutory and case law developments increase the complexity. Counsel must prepare to comprehensively address IP in drafting and negotiating JDAs to protect clients’ rights and avoid litigation.

Listen as our authoritative panel examines preliminary considerations and key provisions, including the scope of the parties’ joint development activities and their performance obligations. The panel will discuss ownership of IP developed during the collaboration, ongoing rights to developed IP, commercialization rights, and enforcement. The panel will offer best practices for negotiating and structuring JDAs.


  1. JDAs
    1. Preliminary considerations
    2. Key provisions
  2. IP ownership
    1. Contributed IP
    2. Joint IP
    3. Derivative IP
  3. Best practices for negotiating and structuring JDAs


The panel will review these and other key issues:

  • What considerations should counsel keep in mind when negotiating the JDA?
  • What issues must be addressed by the JDA regarding IP ownership?
  • What obligations will the parties have in protecting the other party’s preexisting IP once the JDA is expired or terminated?


Adam Petravicius, Partner
Jenner & Block, Chicago

Mr. Petravicius focuses his practice on transactions involving IP and technology. These include outsourcing and services agreements, license agreements, development agreements, strategic alliances, joint ventures, telecommunications agreements, and complex commercial agreements. Mr. Petravicius also advises clients on IP and technology issues that arise in M&A deals, including carve-outs and spin-offs.

Sharon Tasman Prysant, Principal
Health & Technology Law Firm, North Bethesda, Md.

Ms. Prysant represents clients, from startups to multinational companies, in the areas of: technology and intellectual property development, acquisition, protection, and commercialization (including computer information systems, telecommunications, and engineering); consulting and other business services agreements; and life sciences counseling and transactions (including clinical studies, sponsored research and technology transfer for biotechnology, medical device and pharmaceutical companies). She has negotiated complex contracts and manage large-scale transactions from inception through completion, including transactions exceeding $200,000,000.

Aaron K. Tantleff, Partner
Foley & Lardner, Chicago

Mr. Tantleff focuses on providing legal and strategic guidance regarding information technology, outsourcing, licensing, consulting, professional services, e-commerce, manufacturing, supply, and distribution agreements, as well as product acquisitions, strategic alliances, mergers and acquisitions, and private equity investments where technology and intellectual property are of significant importance.


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Customer Reviews

I liked the practical insights, particularly when tied to cases the presenters had worked on.

Michael Gray


Strafford provided an enthusiastic presentation that focused on patent practice, not theory.

David H. Vance

Vance Intellectual Property

The program was very well organized and the speakers were prepared.

Marti Sharp

Kell Alterman & Runstein

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Patent Law Advisory Board

Charles S. Baker


Locke Lord

David S. Bloch


Winston & Strawn

Irah H. Donner



Ian N. Feinberg


Feinberg Day Alberti & Thompson

Anthony J. Fitzpatrick


Duane Morris

David Segal

Senior IP Counsel


Astrid R. Spain


Jones Day

Mark P. Wine



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