4.Contract Drafting, Review and Negotiation

Q2 (Invention Ownership in Joint R&D Agreements)

In a joint research and development agreement, what kinds of provisions are typically included regarding the ownership of inventions?

These provisions should be based on the relative contributions of the parties in the research and development, but if you anticipate that both parties will make contributions, joint ownership is a relatively common scenario. In cases of joint ownership, ideally you would specify the ownership allocation, but equal ownership appears to be very common. Also, ideally you would specify terms related to decisions on patent applications and the responsibility for the costs therefor, and what happens if one side doesn’t agree to an application or can’t bear the cost. Further, you may wish to consider clarifying the rules on the use of joint patents by a party and licenses to third parties.

(Posted: January 27, 2012)