Protecting IP Rights in Joint Development Agreements and Strategic Alliances

Apportioning Contributed, Joint, and Derivative IP; Planning for Involuntary Early Endings; Avoiding Unintended Consequences

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


Thursday, December 9, 2021 (in 3 days)

1:00pm-2:30pm EST, 10:00am-11:30am PST

or call 1-800-926-7926

This CLE course will guide 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.

Description

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 and 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 critical provisions, including the parties' joint development activities' scope and 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.

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Outline

  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

Benefits

The panel will review these and other challenging 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?

Faculty

Prysant, Sharon
Sharon Tasman Prysant

Principal
Health & Technology Law Firm

Ms. Prysant represents clients, from startups to multinational companies, in the areas of: technology and intellectual...  |  Read More

Tantleff, Aaron K.
Aaron K. Tantleff

Partner
Foley & Lardner

Mr. Tantleff focuses on providing legal and strategic guidance regarding information technology, outsourcing,...  |  Read More

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You may pre-order a recording to listen at your convenience. Recordings are available 48 hours after the webinar. Strafford will process CLE credit for one person on each recording. All formats include course handouts.

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