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The old adage that you can’t go it alone is particularly true with innovative technologies. The costs required to develop a new technology can be considerable. Joint development projects – ones that pair companies with academic researchers or industrial partners – can bring development costs under control and decrease the financial risk of entering into new technology markets. The Washington Technology Center’s Microfabrication Lab Facility is one example of a research and development facility which partners with both industry and academia in the field of micro-electromechanical systems (MEMS).
Participation in a joint development project does bring up the issue of Intellectual Property (IP) ownership. It’s important to clearly understand what constitutes IP and how to protect it. Failure to establish rights can lead to costly legal actions, as well as the inability to enforce IP rights. Knowing a few basics can help ensure that joint development projects result in innovation, not litigation.
A patent creates a right to exclude others from making, using or selling an invention for a limited period of time. Initial ownership of patent rights vests in the “inventor.” Joint inventors acquire equal, undivided interests in a patent, and may use or authorize others to practice the patent without accounting to the other inventors.
Ownership rights for patents and patent applications can be assigned in writing. Employers typically require employees to assign patent rights to any inventions developed within the scope of employment. In a joint development project, contracts and assignments should cover who has what patent rights. Because an assignment has consequences relating to who can enforce the patent and what damages the owner can collect, it is important to fully evaluate the patent’s potential uses, and to craft assignment agreements properly and to the correct entity.
Joint development projects often produce written materials that may be subject to copyright. Ownership of the copyright vests in the “author” of the work. Joint authors may each exercise the rights under the copyright, subject to an accounting to the others.
Generally, an employer is considered the “author” for a work prepared by an employee within the scope of their employment. Specially commissioned works are owned by the person or entity that commissioned the work. Copyright rights can be assigned or licensed by written agreement. A clear understanding of the parties’ relative contributions to a work and a written agreement regarding ownership is essential in any joint project.
The use of open source code in software, as well as participation in standards bodies also implicates IP ownership rights. Some open source agreements and some standards groups require full assignment of all IP rights into the open source consortium or standards group. Courts may also imply assignment of IP rights absent a written agreement. All of this has implications for enforceability of IP.
In any project in which technology is jointly developed, written agreements should be prepared to address IP ownership issues. Pay special attention to the “small print” in standard contracts and make sure the contract fits the parties’ intent and your future business model. If it doesn’t, negotiate the necessary changes.
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