The team at specialist legal firm Barker Brettell take readers’ questions on the intellectual property matters that affect the medtech community. This time, Lucy Walker, trade mark attorney and partner, Barker Brettell does the honours.
IP
Question: We want to work together with another party — but who owns the IP?
Answer: It’s true what they say; two heads are better than one, especially when you are looking to find a solution to a problem. Collaboration is a fantastic way to help drive improvements and bring big ideas to the markets. But who owns the IP when two parties collaborate? No two sets of circumstances are the same and who owns the IP will depend on how you negotiate the terms of the collaboration agreement.
For example, you could agree that any IP owned prior to the agreement stays with the original owner but any IP created through the collaboration, is jointly owned by all collaborators. Or, if the collaboration is commissioned by a backer, will the backer want to own the IP on the basis without their funds, there would be no developments? If you have the strongest bargaining position in the collaboration, could you negotiate that you own the IP but you will then provide your collaborators with a licence to use the IP.
Once you know who is going to own the IP, you need to make sure a complete collaboration agreement is drafted to address the consequences and mechanics of the IP i.e. who pays for it, who maintains it, who decides where to protect it etc.; the list goes on.
Don’t be put off by the thought of negotiating the terms of a collaboration agreement before you even get a chance to work together. Getting it right from the outset is hugely important and can save you a real headache in the long run.
