A view from an IP litigator webinar report
Chris Hoole of Appleyard Lees shared his experience as a dual qualified solicitor and Chartered Trade Mark attorney on intellectual property provisions in commercial contracts and how to avoid pitfalls that may arise in such agreements which could lead to, among other things, litigation or problems coming to light during due diligence.
The risk of IP issues arising in the absence of a sound IP agreement is not helped by the far from simple statutory position on ownership and joint ownership of IP, which varies according to the type of IP (patent, design, trade mark or copyright) and the status of the creator of the IP. For example, one might assume that an employer would own the IP created by its employees, but Chris went through a number of examples where this is not the case.
Chris discussed problems that can arise if IP is created as part of a collaboration between parties that have not agreed IP ownership and exploitation terms from the outset of their collaboration. For example, if the collaboration yields a registrable form of IP such as design or a patentable invention then a failure to agree terms at the outset could result in both parties filing for the IP right without informing each other, leading to potential litigation on issues such as entitlement, authorship or inventorship, and breach of confidence.
Chris highlighted a number of issues to keep in mind in an agreement setting out each party’s IP rights including the fields in which each party may exploit the IP; whether rights are exclusive, non-exclusive or sole; whether one party may assign or licence their rights to a third party; royalties; ongoing costs for prosecution of registrable IP; and termination provisions.
This was a welcome and useful talk, given the complexities of this area and given how important IP can be as an asset of a business, especially in the innovation-heavy businesses in and around Cambridge.
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