Managing Intellectual Property in Joint Ventures and Collaborations

Joint ventures and collaborations provide opportunities to leverage organizations’ collective resources in order to make investments and pursue opportunities that might not be feasible otherwise. But, whether joint venture partners are seeking to develop new technology or collaborators are seeking to leverage the collective power of their brands, it is critical to take an informed and strategic approach to managing the intellectual property issues involved. By working with an experienced Florida intellectual property attorney from the outset, parties to joint ventures and collaborations can protect their interests and minimize the risk of facing an IP-related dispute without compromising their commercial goals.

5 Key Considerations for Managing IP in a Joint Venture or Collaboration

With this in mind, here are five key considerations for managing intellectual property in joint ventures and collaborations:

1. Make Sure You Know What Needs Protection

One of the first, and most important, steps is to make sure you know what needs protection. Far too often, parties to joint ventures and collaborations—and parties in general—move forward with generating and using IP assets without understanding that these assets require proactive means of protection in order to prevent disputes and loss of exclusivity.

Branding, marketing collateral, website and social media content, new innovations, and confidential information all can—and should—be protected under intellectual property laws in the U.S. and abroad. By identifying both pre-existing IP assets and newly created IP assets that require protection, parties to joint ventures and collaborations can ensure that they are managing and monetizing these assets effectively.

2. Pay Attention to the Default IP Ownership Rules

Another critical step when approaching a joint venture or collaboration is to pay attention to the default IP ownership rules. Even if parties intend for a certain outcome, if they do not plan for that outcome, they may not get what they bargained for—and this could lead to contentious (and costly) disputes down the line.

For example, while employers will generally be deemed the owners of trademark brands, copyrightable materials and patentable inventions developed by employees within the scope of their employment, ownership in the joint venture or collaboration context can be less clear. As a result, clear and comprehensive documentation is critical, as we discuss in greater detail below.

3. Discuss Who is Going to Own What

Before parties to a joint venture or collaboration can document their intent regarding IP ownership, they first need to determine who is going to own what. This requires open discussions (and perhaps negotiations) guided by a clear understanding of the pertinent intellectual property principles.

This can often prove to be a touchy subject, particularly when a joint venture or collaboration will be short-lived by design. But, whenever there is a possibility that the parties will eventually go their separate ways, it is critical to take steps to ensure that IP ownership issues will not lead to a dispute if and when their relationship comes to an end.

4. Use Contracts to Your Advantage

This is where contracts come into play. As with any commercial or business relationship, carefully documenting the terms of a joint venture or collaboration is essential for several reasons. These include (among many others):

• Acknowledging each party’s pre-existing intellectual property rights, including domestically and internationally recognized trademarks, copyrights, patents and trade secrets;
• Determining which party will own individual IP assets generated during the lifespan of the joint venture or collaboration; and,
• Establishing the procedures for resolving any IP-related disputes that arise during the lifespan of the joint venture or collaboration.

Again, these are just examples. Contracts establishing joint ventures and collaborations should be comprehensive, detailed and custom-tailored to the specific business relationship and purpose at hand. From determining how the parties will share the cost of registering IP assets to establishing whether (and to what extent) each party can use jointly developed IP after their relationship ends, numerous other issues may need to be addressed as well. Parties pursuing joint ventures and collaborations need to be very careful to avoid overlooking any pertinent IP-related considerations, and this is where it can be invaluable to get an experienced Florida intellectual property attorney involved early in the process of formulating the relationship.

5. Take a Structured Approach to Managing and Protecting IP

Finally, regardless of how the parties to a joint venture or collaboration decide to address IP ownership and IP-related responsibilities, a structured approach to managing and protecting IP is essential. The appropriate party should work with outside counsel to clearly identify all pertinent IP assets, pursue registrations with domestic and international registrars as necessary, and shepherd all registration applications through to the end. While this work will take place behind the scenes, it is critical for protecting both parties’ interests, and, once again, a proactive approach is essential.

Beyond initial registration (or other appropriate means of protection), preserving the commercial value of IP assets also requires ongoing management. This includes entering into license agreements when working with third parties, monitoring for infringement in the marketplace and taking legal action when necessary. Intellectual property owners can lose their exclusive rights if they fail to adequately protect them—and, in the joint venture or collaboration context, this can also lead to a dispute if one party fails to meet its contractual management-related duties. Here, too, a clear and comprehensive understanding of what is required is essential, and it is in both parties’ best interests to ensure that they have a mutually agreed plan before they move forward with jointly developing IP or using jointly using IP in the marketplace.

Speak with a Florida Intellectual Property Attorney at Lott & Fischer, PL

Do you need to know more about the intellectual property-related considerations involved in pursuing a joint venture or collaboration? If so, we invite you to get in touch. To speak with an experienced Florida intellectual property attorney at Lott & Fischer, PL in confidence, give us a call at 305-448-7089 or tell us how we can get in touch online today.