1. Ownership of IP
2. Joint Ownership of IP
3. Joint IP Ownership Agreement

Joint ownership of intellectual property refers to the sharing of intellectual property (IP) rights to a particular invention between two or more parties. It usually occurs as a result of two or more people co-inventing a patentable product, creative work, design, or concept. Since certain issues related to IP are difficult to quantify, disputes between joint owners of a piece of IP can easily arise. In order to prevent disputes, it is important for the owners to establish a joint-ownership IP agreement that clearly describes the allocation of shares of IP between the partners.

Ownership of IP

When you create a patent, you are regarded as an inventor and deserve to be recognized as one. IP rights serve to protect intellectual property and make IP ownership legally recognizable. The exclusive right given for an invention is called a patent.

The owner of a patent has the legal right to decide who can or cannot use the patented invention. He or she may permit the use of the invention or license another party to use the invention in accordance with mutually agreed terms. In addition, he or she may sell the IP rights to the invention to another party, who will, in turn, become the new legal owner of the patent.

In a collaboration that involves an external party, identifying the owners of an invention and the IP rights to it can be a major issue. As such, ownership of the IP rights must be clearly defined in the cooperation agreement's IP terms and conditions section.

Joint Ownership of IP

Confusion regarding ownership of IP often occurs in joint development arrangements, joint ventures, subcontracting portions of work, and other collaborative projects that involve the development of intellectual property. Examples include software, drug development, medical devices, and other tech-based initiatives. Joint IP ownership may occur when two or more parties co-invent a patent-worthy invention or co-author a work of authorship. It may also result from a compromise in an agreement.

In general, joint ownership is a situation whereby two or more parties own proprietary shares of an asset. In regard to IP, it usually happens in collaborative projects when the partners are jointly responsible for generating the final results and the share of work cannot be easily ascertained.

When determining each party's contribution to the invention, only “active contribution” to the final product should be taken into consideration. Mere efforts are regarded as insufficient for the creation of co-ownership. The sharing of information and ideas and ordinary assistance are also excluded. All contributions should be indivisible elements to the invention or the invention itself should be indivisible. All kinds of IP can be jointly owned, including copyrights, patents, trademarks, and trade secrets.

Joint IP Ownership Agreement

With the number of collaborative research projects on the rise, jointly-created inventions are becoming increasingly ordinary. Partners in collaborative projects should clearly state the terms and conditions of the resulting joint IP ownership in a separate agreement called joint IP ownership agreement. Otherwise, they can create clauses in a general collaboration agreement to regulate the division of co-developed assets.

Simply defined, a joint investor is someone who:

  • Comes up with the idea
  • Contributes materially to the creation of the invention
  • Implements the invention

An executor is someone who:

  • Proposes a hypothesis
  • Performs routine tasks by passively following the instructions
  • Tests the results

While predicting all the results of a collaborative project may not be possible sometimes, the partners should state the expected IP results that will be generated through the collaborative effort before they start conducting any research activity. Such results can be new technology, publications, or a definite product. Upon defining the expected results, they can proceed to address joint ownership of the IP rights by taking the following factors into account:

  • Division of shares between co-owners
  • Terms and conditions for the implementation and exploitation of the IP results
  • Management of the co-owned results

Declaring that all IP resulting from a joint project should be co-owned may seem fair and reasonable, but many implications of co-owned IP are counterintuitive. For example, joint ownership of patent may differ significantly from joint ownership of copyright.

If you need help understanding or establishing joint ownership of intellectual property, you can post your legal need in UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard, Yale, and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.