The ownership of intellectual property (IP) is a topic I always come to when putting together deals or projects. Sometimes I want to own it all, sometimes the other party wants to and sometimes joint ownership is tabled.
Before decisions are made around IP ownership there are some key questions that need addressing:
- What is the IP? Has it been defined it properly? Remember its not just patents and trademarks. Note down, specifically, the bundles of know-how and trade secrets. Determine whether these bundles are truly valuable to the end proposition.
- What are you trying to achieve with the IP? Sell X product in to Y territory in the Z field? What access to the IP do you need to achieve this? Is ownership essential? What else do you want to do with the IP in the future? Can you just preserve right rather than own?
- How are the parties contributing to the development of the IP and what is the value of this? Cash, human resources, other technology? Who will own the improvements?
- Does jointly owning the IP make sense? Or can one party own it and the other have perpetual sub-licensable rights to it? Unless you can define clearly (with no grey areas) the IP in the first place I normally suggest not to go down the joint IP path, it’s messy and 5 years later it’s even worse.
Answering these questions brings you back to the core reasons why you wanted/ needed the IP in the first place. These tend to be overlooked or blurred when you enter the negotiations chamber.