Protecting IP in Joint Ventures and Collaborations: Key Considerations, Management of IP, and Structuring Agreements

Course Details
- smart_display Format
On-Demand
- signal_cellular_alt Difficulty Level
Intermediate
- work Practice Area
Trademark and Copyright
- event Date
Thursday, April 11, 2024
- schedule Time
1:00 p.m. ET./10:00 a.m. PT
- timer Program Length
90 minutes
-
This 90-minute webinar is eligible in most states for 1.5 CLE credits.
This CLE webinar will guide counsel to IP owners on protecting IP in a joint venture (JV) or collaboration. The panel will discuss the factors the parties should consider when entering and operating the JV. The panel will also discuss management of jointly developed IP and will offer best practices for ensuring the IP of the parties and the JV is protected.
Faculty

Mr. Bomzer has served as both in-house and outside counsel to some of the largest and most recognizable Fortune 500 companies. In these positions, he has been responsible for developing, coordinating and executing all aspects of patent protection strategies among global teams of business and technology hubs. In addition, he has developed objectives and procedures for identifying and protecting high value technology assets, and organized and led teams of technology leaders, who assisted in coordinating enterprise-wide protection efforts. He also managed patent procurement efforts by in-house and outside counsel. Mr. Bomzer enjoys lecturing about IP and technical subject matter, and has participated in and chaired many industry conferences and panels.

Mr. Berschadsky focuses his intellectual property practice on complex matters. His 20 years of experience, mixed with a passion for technology and a flair for complex problem-solving, enable him to deliver effective technology and IP agreements, due diligence analysis, opinions of counsel, strategic patent prosecution, IP litigation and so much more.

Mr. Kurz's practice primarily focuses on intellectual property counseling and litigation, His litigation experience includes numerous district court cases and appeals for innovator life sciences companies concerning biologic and pharmaceutical drug products, with allegations that include patent infringement, inventorship disputes, inequitable conduct, false advertising, breach of contract, and business torts. This experience includes both brand vs. generic litigation under the Hatch-Waxman Act and brand vs. brand cases. In addition, Mr. Kurz assists clients with counseling, due diligence, freedom-to-operate analyses, and licensing and collaboration agreements concerning intellectual property rights, including drafting and negotiating contracts. He also represents clients for patent and trademark matters in the U.S. Patent and Trademark Office. Mr. Kurz has worked with clients in diverse industries that include pharmaceuticals, biopharmaceuticals, nutritional supplements, medical devices, software, computer systems, and materials processing.

Russo, Ph.D., is an associate in Hughes Hubbard & Reed's Intellectual Property practice. She has extensive experience in preparation and prosecution of patent applications, as well as in litigation and arbitration. Prior to joining Hughes Hubbard, Ms. Russo worked at both large general practice and intellectual property boutique law firms.
Description
The IP considerations in a JV or collaboration vary depending on the JV. For example, the considerations will likely be complex if the JV and its parties have independent IP and the JV is formed with the intent of creating new technology based on the IP brought to the deal by the parties. But the considerations will be different if the JV will not be using the parties' IP.
It is important for the parties to weigh several considerations when establishing a JV or collaboration. The organizations need to identify and document their IP assets and evaluate the importance of the IP to their respective business goals. The parties will need to negotiate an IP agreement to protect the companies' existing IP as well as the IP generated by the JV.
The parties will also need to put in place measures to both manage the IP and protect the IP of the JV.
Listen as our authoritative panel of IP attorneys examines the challenges of protecting IP in a JV or collaboration. The panel will discuss considerations the parties should keep in mind when entering and operating the JV. The panel will also discuss managing jointly developed IP and will offer best practices for ensuring the IP of the parties and the JV is protected.
Outline
- IP considerations when entering a joint venture
- IP agreement
- Managing jointly developed IP
- IP protection--practice measures
- Best practices
Benefits
The panel will review these and other critical issues:
- What factors should companies consider when entering a JV or collaboration?
- What key provisions should be included in IP agreements with JV/collaboration partners?
- What steps should companies take to minimize the risk to their IP and the IP generated in the JV?
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