IP collaboration agreement solicitors
If you are working with others on the creation and or sale of intellectual property or technology there is risk. Our solicitors solve the risk areas which in turn can help to promote a successful collaboration whether it’s relating to technology, media including music or perhaps some other form of marketing or promotion arrangement.
Collaboration agreements may also cross over with partnership agreements or joint ventures.
Typical problems solved for collaborators
Legal risks with no collaboration agreement in place
In the UK the following statutory provisions will apply:
Each co-owner is entitled to an equal and undivided share in the intellectual property right.
Each co-owner may use the intellectual property right without consent of, and without accounting to, the other co-owners.
For example if 2 or more people are registered owners of a trade mark, each owner can individually use the trademark for their own purpose. One might choose to use it on merchandising another might decide to use it on a mobile app, whilst another might decide to use it on a store front. The problem with this is that the mark may become vulnerable to cancellation for improper use.
Licensing and assignment
It’s generally important to include in an Intellectual property collaboration contract terms whereby 1 co-owner all not without the consent of all the co-owners:
- Grant a licence;
- Assign his share in the intellectual property or
- Mortgage their share of the rights.
Without a written agreement, joint owners could face problems in deciding:
- Who pays for any IP filings?
- Who directs prosecutions of any IP filings?
- Who decided in which jurisdiction such IP filings are made?
- Who can enforce the IP?
- Who gets royalties earned as a result of licensing the IP and in what proportion?
Failing to clarify and record these issues prior to creating any intellectual property can lead to:
- Costly disputes
- Breakdown in business relationship
- Reliance on statutory provision
- Intellectual property slipping in value
Do you need to create a new joint venture company?
We often set up a collaboration company or joint venture vehicle to carry out the work. If the intention is to sell the IP and the business a separate company will make the sale easier. Also, liabilities created within the collaboration company can be ring fenced and protected from creditors of a contributor.
How the shares within the collaboration company will be managed and dealt with is often set out in a shareholders agreement which runs in conjunction with a collaboration agreement.
Essentials for an IP collaboration contract
Long documents with unnecessary clauses do not help anyone. Our solicitors typically advise that a collaboration agreement should consider:
Carving out IP or technology from the collaboration
If the intention is some existing IP or technology should be retained the collaboration agreement should say so.
Allocation of shares between joint owners
For IP or technology that is developed under the agreement, parties will have to decide how the IP will be owned. For example will the collaborators all have an equal share in the intellectual property, or will the shares be divided to reflect the level of work that each partner puts into development?
Change of ownership within the collaboration
What will happen if one collaborator decides that they want to sell their share? Must their share be offered to the other co-owners? Or will the other co-owners have the final say as to who the shares can be sold to.
Exploitation of what has been co-created
To be able to influence how the product is taken to market control should be clear in the collaboration contract. Thought should be given to whether it will be appropriate for each collaborator, with or without the consent of the other collaborators to:
- Exploit the rights themselves;
- Grant licences of the IP or other rights to others (on an exclusive or non-exclusive basis); and
- Assign the intellectual property rights.
Infringement and enforcement issues
Who will be responsible for monitoring and policing the collaboration work and pay the expenses for any infringement in connection with it. This is important because for many intellectual property and technology rights swift action is needed to stop infringement. For example if a trade mark has been infringed and no action has been taken, the trade mark can be revoked for becoming generalised.
It is important to have a confidentiality clause within the agreement. Disclosures of confidential information can be an obstruction to future IP rights registration especially patent, and design.
Contact us if you need a collaboration contract drafted, advice on the commercial or tax aspects of a proposed business joint venture or you need an agreement reviewed. Our lawyers are practical, experienced and cost effective lawyers.