Protecting IP Rights in Joint Development Agreements and Strategic Alliances
Apportioning Contributed, Joint, and Derivative IP; Planning for Involuntary Early Endings; Avoiding Unintended Consequences
Course Details
- smart_display Format
On-Demand
- signal_cellular_alt Difficulty Level
Intermediate
- work Practice Area
Patent
- event Date
Thursday, December 7, 2023
- schedule Time
1:00 p.m. ET./10:00 a.m. PT
- timer Program Length
90 minutes
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This 90-minute webinar is eligible in most states for 1.5 CLE credits.
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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.
Mr. Tantleff, CIPP/E, is a partner in Foley’s Technology Transactions, Cybersecurity, and Privacy; and the Environmental, Social, and Corporate Governance (ESG) practice groups. He represents companies in various technology, privacy, security, information management, open source, and intellectual property matters, such as the development of compliance policies, programs, cybersecurity breach preparation, incident response, big data, and data monetization initiatives. Mr. Tantleff also regularly represents clients in mergers and acquisitions, outsourcing transactions, strategic alliances, development and licensing arrangements, supply and distribution arrangements, and other strategic and collaborative transactions involving significant technology and intellectual property. He is a frequent speaker on technology, security, privacy, and outsourcing matters, and is regularly quoted in The Wall Street Journal, Reuters, Politico, Fortune, and other top-tier publications on topics such as cyberattacks, privacy law developments, and data protection, including regarding the General Data Protection Regulation (GDPR) and the Asia Pacific Cross Border Privacy Rules. Mr. Tantleff has been retained for data protection, cybersecurity, monetization of big data/IoT programs, and data breach response, remediation, and simulations by companies across all industries and sizes, domestically and abroad, including several Fortune 100 companies. He has also counseled several state legislators on cybersecurity legislation.
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.
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.
- JDAs
- Preliminary considerations
- Key provisions
- IP ownership
- Contributed IP
- Joint IP
- Derivative IP
- 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?
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