??What are the problems with jointly owned IP???

??Joint Ownership of IP? Generally Not Advisable. Here's why??

In R&D collaborations, the question of who owns what intellectual property (“IP”- i.e., patents, copyrights, trade secrets, and/or trademarks) should be approached cautiously. As a default position, collaborating parties may believe joint IP ownership is the easiest and most equitable solution. Unfortunately, joint IP ownership can pose a variety of challenges to effectively protecting, using, licensing, and/or selling rights due to legal complexities and uncertainties on a domestic and international level.

I specialize in advising tech, med-tech, clean-tech, software, and SaaS companies in managing the legal and business complexities of cross-border deals and collaborations. Such companies frequently grapple with how to protect existing and newly created IP in a multitude of collaborations. If you need support, I can help. Feel free to contact me. [email protected], +46 (0)70 752 16 80.

Let’s take a look at some examples of general legal principles impacting Joint IP ownership in various jurisdictions. Pay particular attention to the lack of uniformity-i.e., how laws may be applied differently depending on the type of IP and/or country in question. The laws impacting joint IP are, at times, unclear and often nuanced and region specific. Please do not rely on the information below as a substitute for legal advice regarding your specific IP situation.

Patents

Copyrights

Trade Secrets

Trademarks

As you can see, there are significant differences between the laws applied to different IP and even to the same types of IP but in varying jurisdictions. You might argue the governing law section of the agreement between the parties should be the legal system used to determine how joint ownership should be construed in other jurisdictions. Such an assumption is far from clear.

One might also argue the above only applies if the agreement is silent on how joint IP shall be protected, commercialized, and/or accounted for between the parties. This may very well be the case. With that said, how any such terms should be stipulated in an agreement (and perhaps, as applicable, filed pursuant to the mandatory laws of foreign jurisdictions) is exceedingly complex, given the implications of different types of IP and multiple jurisdictions. Naturally, this can be mapped out but is a more costly and highly nuanced endeavor if done properly.

An additional issue I have encountered is one I refer to as the “empty box” whereby one co-owner of IP is comforted by a "joint IP ownership" designation in a contract but fails to appreciate the impact of other provisions in the agreement disproportionately favoring the other co-owner's right to commercialize and keep the proceeds to itself. Always carefully review not only the 'classification' of ownership but also the 'rights / restrictions' of each party with respect to independent commercialization, retention of proceeds, transferability, and the right to defend.

Alternatives

Generally speaking, joint ownership of IP (with international implications) carries many legal exposures. In light of this uncertainty, most lawyers (including me) strongly advise against succumbing to the temptation of agreeing to jointly owned IP as a default. A much better approach, in general, would be for one party to own the IP and grant an appropriate licenses to the other party (e.g. non-exclusive, worldwide, royalty free, etc). Alternatively, if there is a portfolio of IP, each party can own some of the IP and license its respective portion to the other party (referred to as "cross licensing"). There may be other alternatives depending upon the type of intellectual property at issue.

If you need assistance with protecting or commercializing your intellectual property, feel free to reach out to me directly.

Gary Guttenberg, Attorney-At-Law

[email protected]

+46(0) 70 752 16 80

*This article is not legal advice and is offered for educational purposes only.

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