Who owns IP? Safeguarding IP in business partnerships

We ran an event at the International Festival of Business, where patent applications specialist Jack Stevenson-Hill offered up some advice on who owns IP in business partnerships and how to protect it.

Who owns the intellectual property when several parties work together?

Jack Stevenson-Hill offered up things businesses should consider:

Background IP

Background Intellectual Property is IP that parties bring with them that are in existence prior to the agreement. Set it out clearly. Think about whether any party will require a licence to exploit the outcome of the collaboration in light of any background IP that another party within the collaboration has.

Foreground IP

Foreground Intellectual Property is IP that the parties develop together as part of the collaboration. Document work as you go, to demarcate what was background IP and what is foreground IP. Ideally, ensure that all foreground IP belongs to the parties of the collaboration agreement and not to sub-contractors.

How do you protect IP in business partnerships?

Answer: a well thought through collaboration agreement prior to the commencement of any collaboration is essential so all parties know where they stand.

Make sure you consider the following:

Protecting IP

Should all partners have to report spin-off inventions that occur while you’re collaborating? This can help to ensure that no opportunity is missed to protect potentially valuable IP resulting from the collaboration. It may also give you a chance to assess if one of your partners is sailing too close to what you’re working on outside of the collaboration.

Confidentiality

During the work, but also after, you may want to stipulate that parties must afterwards return any confidential information shared with them during the collaboration. However, you can’t erase any knowledge partners have acquired during the project, so make sure that confidentiality requirements extend beyond the collaboration.

Exploiting the IP

Joint owners can exploit the IP without the other party’s consent but you need to get all parties’ consent to transfer the IP or license it. So should the agreement consider alternative IP ownership strategies to joint ownership?

Enforcement

Who’s responsible for bringing infringement actions?

Exit strategy

Who can terminate the contract? On what grounds can you terminate?

About to start a research project? Find more information on protecting your IP when applying for research and development funding.

Types of IP

Types of IP include;

• Copyright – to establish rights to artistic or literary work
• Patents and trademarks – to establish IP rights for prototypes, inventions, products or services
• Trade secrets – to establish rights to confidential information to sell or licence

Working with business partners

We ran an event at IFB2016 (International Festival of Business), this time on all things environmental – or the ‘international circular economy, resource efficiency and eco-innovation’, to be precise.

These things run with a whistle-stop tour of the latest funding calls and structures from the European Commission. We try and weave in the support available through the Innovate UK family.

• Knowledge Transfer Network offer help from a UK, sector, perspective
• Catapults offer access to skills and equipment
• Innovate UK offers help through specialist individuals

Then it gets to the brokerage bit of the event – pre-arranged meetings with prospective business partners and in this case, businesses who may become joint applicants with you for European funding.

Take ownership and protect your IP

Our enhanced IP Audit service is provided in partnership with the UK Government’s Intellectual Property Office.

Learn more about protecting and exploiting your business innovation.