Who owns what: a guide to safeguarding IP in business partnerships

Intellectual property word cloud

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We ran an event at IFB2016 (International Festival of Business), this time on all things environmental - or the ‘international circular economy, resource efficiency and eco-innovation’, to be precise.

 

These things run with a whistle-stop tour of the latest funding calls and structures from the European Commission. We try and weave in the support available through the Innovate UK family.

  • Enterprise Europe Network offers support from an international perspective,

  • Knowledge Transfer Network offer help from a UK, sector, perspective,

  • Catapults which offer access to skills and equipment, and

  • Innovate UK itself offers help through specialist individuals.

Then it gets to the brokerage bit of the event – pre-arranged meetings with prospective business partners and in this case, businesses who may become joint applicants with you for European funding.

 

Who owns the intellectual property when several parties work together? And how do you protect it?

Answer: a well thought through collaboration agreement in advance of any collaboration is essential so all parties know where they stand.

At this event, Jack Stevenson-Hill offered up things businesses should consider:

  • background IP is intellectual property that parties bring with them before the agreement. Set it out clearly. Think about whether any party will require a licence to exploit the outcome of the collaboration in light of any background IP that another party within the collaboration has.

  • foreground IP is intellectual property that the parties develop together as part of the collaboration. Document work as you go, to demarcate what was background IP and what is foreground IP. Ideally, ensure that all foreground IP belongs to the parties of the collaboration agreement and not to sub-contractors.

  • protecting IP – should all partners have to report spin-off inventions that occur while you’re collaborating? This can help to ensure that no opportunity is missed to protect potentially valuable IP resulting from the collaboration. It may also give you a chance to assess if one of your partners is sailing too close to what you’re working on outside of the collaboration.

  • confidentiality – during the work, but also after, you may want to stipulate that parties must afterwards return any confidential information shared with them during the collaboration. However, you can’t erase any knowledge partners have acquired during the project, so make sure that confidentiality requirements extend beyond the collaboration.

  • exploiting the IP – joint owners can exploit the IP without the other party’s consent but you need to get all parties' consent to transfer the IP or license it. So should the agreement consider alternative IP ownership strategies to joint ownership?

  • enforcement – who’s responsible for bringing infringement actions?

  • exit strategy – who can terminate the contract? On what grounds can you terminate?