Intellectual Property Rights in an Alliance

Alliance experts Intellectual property rights in an allianceAlfred GriffioenIntroductionAn alliance can yield different types of returns forthe parties involved, including new intellectualproperty rights. On the one hand these must beregarded as part of the deal and be negotiated for,on the other hand intellectual property rights canalso be shared. This requires a special treatmentand separate contractual arrangements.Starting the negotiationsEven before engaging your partner in dialogue, it is important to consider theprotection of ones intellectual property. As indicated in Figure 1, there are threeimportant occasions in which the advice of a legal expert or contract specialist isimportant: • When formulating ones own strengths, competences or resources: in how far have knowledge, brands or documents been established and protected? Has the confidentiality of knowledge that cannot be protected been arranged well? • When entering talks with the other party: will a declaration of confidentiality be signed? What would this declaration reasonably cover, and what not? And in how far are the agreements in such a declaration enforceable? • When fleshing out the collaboration in a contract: which legal form do you choose? What will you formally arrange, and what not? In how far do you take account of new possibilities and patents?In any collaborative process, it is important to keep legal aspects in mind from theoutset. If the situation involves a partner abroad, it does make sense to formulate aprotocol in advance to create equivalence, by agreeing which company staff willengage in consultation, and by choosing a negotiating language that both partiescan use with equal ease. The same applies for the law to which the agreement willbe made subject. Process Required Objectives competences Partner Collaboration Implementation selection agreement of collaboration Own competences Legal aspects Are all own What agreements Which legal form resources are needed to do we choose? sufficiently enable frank How do we protected, by discussion with arrange the patents, copyright the partner? What collaboration and brand right as happens if the contractually? well as proper collaboration is confidentiality? called off?Figure 1. Contractual aspects in the process of arriving at a partnershipAlfred Griffioen - Intellectual property rights in an alliance 1

Alliance experts It makes more sense to first let the discussion be conducted by those that actuallystand to benefit from the returns, meaning an executive board member, thebusiness development manager, or the marketing manager. They can then worktoward what is known as a ‘deal sheet’, which lays out in everyday (non-legal)language all the important arrangements such as contribution, authority,distribution of costs and revenue, and so on.As soon as the deal sheet has been finalised and approved by both sides, theparties legal staff can convert it into a contract that also arranges matters such asliability, dissolution following bankruptcy, and applicable law.A remark on the confidentiality agreement or Non-Disclosure Agreement (NDA):There are various models available, ranging from a one-page reciprocal agreementto lengthy documents. In most cases these agreements are very general, withoutany sanctions. Drafting an NDA with a clear sanction, for example a fine of 10,000dollars in case of a confidentiality breach, shows distrust at a moment where partiestrust each other just enough to start negotiations. It is important to balance an NDAand to find the right tone of voice, because an aggressively put agreement candamage the collaboration.Sharing the returnsThe agreements made about the settlement of costs and revenue will affect thebehaviour that each of the partners demonstrates within the collaboration.Where it concerns direct financial returns, it is important to share these as much aspossible proportionate to each partners contribution. This is a matter of negotiationand of calculating the various options. What will happen, for instance, if a jointproject disappoints and there is no money to fully compensate each partnerscontribution?For all distribution mechanisms, the following questions apply: • Has its application been described clearly and unambiguously? • Can all input variables, such as hours worked, be properly measured and monitored? • What if the revenue is substantially higher than expected? Will you still be content with this agreement? • What if it disappoints? Who will be the first to forego income? • Suppose your partner is ill-meaning and will even disregard his own interests: how can you respond and how can you protect against that? • How does it work if one of the parties wants to quit the partnership?Aside from the immediate financial returns, a partnership can also offer otherbenefits. These could include: • access to new customers or an improved relationship with existing ones; or a greater name recognition; • access to new market information or databases, or the acquisition of new copyrights; • a stronger purchasing position thanks to larger purchasing volumes or a leading position in the market.Alfred Griffioen - Intellectual property rights in an alliance 2

Alliance experts These benefits can often be utilised directly by one of the parties. Although theymay fall outside the scope of collaboration, they are nevertheless related to it. Ifsuch benefits are distributed very unevenly, this may be accounted for in thedistribution model.PatentsPatents that can be filed as a result of collaborative knowledge development form aspecial category of returns. A patent is a set of exclusive ownership rights that apublic authority awards to an individual or company in exchange for the publicationof the details of the discovery or invention. This publication is mandatory with aview to advancing the state of technology. A patent gives the right to prevent othersfrom making, using, selling, offering to sell or importing the discovery, in thecountry where the patent applies. Most patents are effective from the moment ofpublication and for a maximum duration of 20 years after the patent application.In most countries, patent rights are awarded to the party that first files the patentapplication, provided the discovery or invention has not already become publicknowledge (through use, sale, or any form of publication). Regarding a discovery orinvention made in employment, the ownership depends on the employmentconditions and whether the making of the discovery or invention is part of theemployers tasks. Thus, the inventor does not necessarily become the owner of thepatent.If the collaboration between two parties results in the development of newknowledge (for instance in an R&D alliance) for which a patent application is filed,then it is important to have determined beforehand how to go about it. If the patentis filed under both companies names, they will jointly have to decide about its useor licensing.It is wise, in this respect, to distinguish between the ownership of the patent andthe right of use. It can be arranged contractually that the ownership remains withone of the partners or with the joint venture, and that both partners (and possiblemerger partners and group companies) have the right to use the invention, but thatit requires the consent of the other party to resell the invention or to license it to athird party.Moreover, some patents build on earlier patents; for example a medicine that isdependent on a patented production method. This is also known as backgroundknowledge. If this is relevant to the collaboration, then it has to be arranged how todeal with such background knowledge, if this knowledge was developed previous toor outside the partnership. It could be that this knowledge derives from a thirdparty, which means that its use needs to be arranged carefully to avoid being heldliable for breaching patent rights.Finally, one should consider how to deal with patents that have been developed aspart of the collaboration, but that do not support the goal of the collaboration, andfor patents that are filed after the collaboration has been terminated.Alfred Griffioen - Intellectual property rights in an alliance 3

Alliance experts Slowinski and SagalMost parties that regularly file patent applications will have their trusted specialiststo conduct the negotiations. For collaborations in which patent applications are lessa matter of course, the ‘Intellectual property needs matrix’ by Slowinski and Sagalcan offer some basic guidance1. This matrix is elaborated for a joint venture inFigure 2. Patents developed previous to Patents developed during partnership (background partnership (foreground knowledge) knowledge) Within the Patents remain with A and B, Patent becomes property of context of free use within the joint joint venture, free use for A collaboration venture and B for the designated goal Outside the Use right for the partner if the Patent becomes property of context of developed patent builds on joint venture or of the partner collaboration former patent to whose business the patent applies, but free use for the other After termination Previously awarded use rights New patents owned by A or B, of collaboration remain in place free use of patents developed in the joint ventureFigure 2, Possible arrangements for patent rights in a joint ventureFigure 3 outlines the arrangements for a contractually arranged collaboration. Themain difference is that, in this case, there is no shared company to which the patentrights can be allocated. Patents developed previous to Patents developed during partnership (background partnership (foreground knowledge) knowledge) Within the Patents remain with A and B, The patent ownership remains context of free use for the partner if a with the one that actually collaboration patent developed in discovered it, but free use collaboration builds on a right for the partner previous patent Outside the In principle no use right, but Ownership with A or B, no use context of paid licence is possible right for the partner collaboration After termination Previously awarded use rights Previously awarded use rights of collaboration remain in place remain in placeFigure 3, Possible arrangements for patent rights in a contractually arranged collaborationThese matrices are relatively easy to understand and can be referred to in a dealsheet. With these arrangements in mind, this part of the contract can then bedrafted relatively easily.For more articles of Alfred Griffioen search on Slideshare or go to www.allianceexperts.comReferences 1 Gene Slowinski, Matthew W. Sagal, Allocating patent rights in collaborative research agreements, 2006Alfred Griffioen - Intellectual property rights in an alliance 4

Intellectual Property Rights in an Alliance

by Alfred Griffioen on Jul 21, 2011

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Intellectual Property Rights in an Alliance — Document Transcript