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Protecting IP Rights in Joint Development Agreements and Strategic Alliances

Apportioning Contributed, Joint, and Derivative IP; Planning for Involuntary Early Endings; Avoiding Unintended Consequences

About the Course

Introduction

This CLE course will guide counsel on negotiating and structuring joint development agreements (JDAs) to allocate IP ownership. The panel will discuss the key provisions of the JDA to protect IP rights and avoid unintended consequences.

Description

In joint development and strategic alliances, intellectual property ownership and use are the most contentious aspects. There is no single approach to IP ownership and exploitation and the concerns and goals of the parties in each situation are unique.

Importantly, the JDA should cover what each party brings to the collaboration and the development, use, and ownership of the IP associated with the products and processes that result from the alliance.

If JDAs aren't complicated enough, new statutory and case law developments increase the complexity. Counsel must prepare to comprehensively address IP in drafting and negotiating JDAs to protect clients' rights and avoid litigation.

Listen as our authoritative panel examines preliminary considerations and critical provisions, including the parties' joint development activities' scope and performance obligations. The panel will discuss ownership of IP developed during the collaboration, ongoing rights to developed IP, commercialization rights, and enforcement. The panel will offer best practices for negotiating and structuring JDAs.

Presented By

Aaron K. Tantleff
Partner
Foley & Lardner LLP

Mr. Tantleff is a partner at Foley & Lardner LLP and a recognized authority in technology transactions, cybersecurity, and data privacy. Drawing on his prior experience as global director of intellectual property for a NASDAQ-listed information technology company and acting associate general counsel for an NYSE-listed consulting firm, he brings rare fluency in the commercial, operational, and legal dimensions of enterprise technology to boardroom and C-suite engagements. Mr. Tantleff's practice spans privacy and cybersecurity compliance and incident response, outsourcing, IP licensing, open-source strategy, big-data monetization, and strategic transactions. He is also at the forefront of the Firm’s artificial intelligence advisory capabilities, counseling companies, boards, and executive teams on strategic AI governance and adoption, including the design and analysis of agentic AI systems, AI agent testing and evaluation, AI-related contracting, and the development of frameworks that align AI initiatives with evolving regulatory, ethical, and commercial standards. A sought-after speaker and thought leader on emerging technology risk and resilience, Mr. Tantleff's practice blends hands-on transactional rigor with forward-looking counsel on AI’s transformative role in enterprise strategy.

Sharon L. Tasman
Partner & Founder
HTBiz Law

Ms. Prysant represents clients, from startups to multinational companies, in the areas of: technology and intellectual property development, acquisition, protection, and commercialization (including computer information systems, telecommunications, and engineering); consulting and other business services agreements; and life sciences counseling and transactions (including clinical studies, sponsored research and technology transfer for biotechnology, medical device and pharmaceutical companies). She has negotiated complex contracts and manage large-scale transactions from inception through completion, including transactions exceeding $200,000,000.

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


  • Live Online


    On Demand

Date + Time

  • event

    Thursday, December 7, 2023

  • schedule

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

  1. JDAs
    1. Preliminary considerations
    2. Key provisions
  2. IP ownership
    1. Contributed IP
    2. Joint IP
    3. Derivative IP
  3. Best practices for negotiating and structuring JDAs

The panel will review these and other challenging issues:

  • What considerations should counsel keep in mind when negotiating the JDA?
  • What issues must be addressed by the JDA regarding IP ownership?
  • What obligations will the parties have in protecting the other party's preexisting IP once the JDA is expired or terminated?