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Course Details

Course Information
  • smart_display Format

    On-Demand

  • signal_cellular_alt Difficulty Level

  • work Practice Area

    Patent

Date & Time
  • event Date

    Thursday, July 28, 2022

  • schedule Time

    1:00 p.m. ET./10:00 a.m. PT

  • timer Program Length

    90 minutes

Credit Information

  • This 90-minute webinar is eligible in most states for 1.5 CLE credits.

$347.00
CLE
ALL

This CLE course will discuss joint development agreements (JDAs) and the allocation of patent ownership in JDAs. The panel will discuss key considerations, including the challenges of joint ownership and strategies to mitigate risk. The panel will discuss the pros and cons of ownership based on inventorship and subject matter, as well as using a combination approach. The panel will offer best practices for allocating patent ownership in different situations and other key considerations for JDAs, as well as antitrust considerations in the U.S. and abroad.

Faculty

D. Brian Kacedon
Partner
Finnegan Henderson Farabow Garrett & Dunner LLP

Mr. Kacedon is a recognized authority in IP transactions having drafted and negotiated hundreds of agreements across all technologies. He is designated as a Certified Licensing Professional. He has also successfully litigated multiple lawsuits and arbitrations based on his extensive transactional experience. Mr. Kacedon’s practice focuses on patent and technology licensing and litigation. In his transactional practice, he assists clients in conducting market assessments for their patents, conducts licensing negotiations, drafts licensing agreements, and participates in related litigations. His experience includes setting up and directing international patent licensing and enforcement programs, including one that resulted in more than 500 license agreements. Mr. Kacedon is a frequent presenter at legal and industry workshops and conferences and has served as adjunct professor teaching licensing at the George Washington University Law School.

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Bret A. Hrivnak
Partner
Hahn Loeser and Parks

As a patent and trademark attorney, Mr. Hrivnak counsels clients on the protection of U.S. and international intellectual property, including patents, trademarks, copyrights, trade secrets and domain names. He manages worldwide IP portfolios and develops global strategies for IP protection. Mr. Hrivnak’s IP experience includes prosecuting and defending disputes arising under state, federal and international laws, including proceedings before the Board of Patent Appeals and Interferences, the Trademark Trial and Appeal Board and the World Intellectual Property Organization. His representation also includes preparing and reviewing agreements, including licenses, assignments, joint ventures and development agreements, supply agreements, M&As, and other IP transactions.  He also addresses antitrust issues that may arise in such transactions or otherwise during the course of his clients’ business activities.

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Kevin E. Noonan
Partner
Mcdonnell Boehnen Hulbert & Berghoff LLP

Dr. Noonan's practice involves all aspects of patent prosecution, interferences, and litigation. He represents pharmaceutical companies both large and small on a myriad of issues, as well as several universities in both patenting and licensing to outside investors. Dr. Noonan also has over 20 years of experience as a molecular biologist, and is a founding author of the Patent Docs weblog, which focuses on biotechnology and pharmaceutical patent law. He has also filed amicus briefs to district courts, the Federal Circuit and the Supreme Court involving patenting issues relevant to biotechnology.

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Description

When a company wants to develop new technology, it either seeks to develop this new technology internally or, if it is unable or impractical to do so, it seeks a capable third party to either develop the new technology itself or in partnership with the company seeking its expertise. It may be possible for the company to obtain the newly developed technology and its corresponding intellectual property (IP) outright, in exchange for payment of those development services. However, there are many occasions both parties desire some ability to capitalize on the new development in some manner other than a simple payment for services. Any time a company contracts with a third party to develop technology for, or in partnership with, the company, one of the key issues in the agreement is allocating IP ownership.

As a result, the provisions addressing IP rights are among the most important ones in a JDA. Clearly drafted IP rights provisions help avoid later disputes and ensure that each party receives the benefit it expects from the agreement. The parties have wide latitude in allocating ownership in a JDA, and, consequently, there are many ways to achieve this. Inventorship and subject matter are the most often used ways to allocate ownership.

If the parties determine to allocate ownership of any developed IP based on inventorship, each party benefits from its own creativity and work. However, it may not promote collaboration and could lead to bitter ownership disputes in the future and make those patents subject to inventorship attacks. Alternatively, if ownership is allocated based on the subject matter, the allocation will more likely correspond to the company's business.

In addition to these issues, there are other legal concepts that may impact or control allocation and even determine whether the collaborative relationship is even desirable, namely, antitrust (competition) laws.

Our panel will also discuss the pros and cons of the different vehicles for developments, namely, service agreements, JDAs, and joint ventures.

Listen as our authoritative panel of attorneys examines the allocation of patent ownership in JDAs. The panel will discuss key considerations, including the challenges of joint ownership. The panel will discuss ownership based on inventorship and based on the subject matter, including the pros and cons of each basis for ownership and using a combination approach. The panel will also offer best practices for allocating patent ownership.

Outline

  1. Introduction to JDA/JV agreements
  2. Patent ownership allocation
    1. Ownership based on inventorship
    2. Ownership based on the subject matter
    3. Joint ownership
  3. Contract considerations
  4. Antitrust considerations
    1. U.S.
    2. Abroad
  5. Best practices

Benefits

The panel will review these and other noteworthy issues:

  • What are the key considerations when determining how to allocate patent ownership in JDAs?
  • What are the pros and cons of basing ownership on inventorship? On subject matter?
  • What best practices should counsel employ when allocating ownership?