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Protecting IP Rights in Joint Development Agreements and Strategic Alliances

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

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

This program is included with the Strafford CLE Pass. Click for more information.
This program is included with the Strafford All-Access Pass. Click for more information.

Conducted on Thursday, December 7, 2023

Recorded event now available

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

Tantleff, Aaron K.
Aaron K. Tantleff

Partner
Foley & Lardner

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

Prysant, Sharon
Sharon L. Tasman

Partner & Founder
HTBiz Law

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

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