Innovate or Perish: Managing the Enduring Technology Company in the Global Market

Joint Development

In earlier sections of this chapter discussing university alliances and working with the government, the IP issues are different than those for working with another organization in a joint development mode. Often, for-profit organizations will sign a joint development agreement (JDA) and work jointly on a project and program. In this section, we will discuss the treatment of IP from these JDAs. Typically, each party comes into the relationship owning certain background IP rights; obviously, they continue to own those rights and may grant those rights as part of the terms of how the background would be treated if they need to grant each other rights. In those instances, they can be negotiated and treated according to the value of each party’s background IP. The rights, however, of the foreground IP need to be carefully thought through strategically and negotiated accordingly. First, the “field” needs to be carefully defined. This sets the boundary for the statement of work and any foreground IP that arises. The parties should also agree on whether they are exclusive with each other in this field or nonexclusive and could collaborate with others. Second, the ownership of foreground IP rights (including foreground information) should be agreed to. Typically, there are two models: one in which whoever develops it owns it, and another that defines it by assignment to one party according to “field of use” no matter who developed the foreground IP. This is especially ...