IP Tech Knowledgy

When parties collaborate, they often license intellectual property to each other for the benefit of the joint venture.  That joint enterprise often yields new intellectual property.  Any license or collaboration agreement should address who owns the new IP.  The agreement should also focus on the seemingly backwards concept of whether the new IP needs to be licensed back to the developer.

For example, in the software context, when a developer creates new software for a customer and the agreement provides that the customer will own the software upon its creation, the agreement should also provide that the customer licenses new software back to the developer.  This license back allows the developer to use what it created -- yet automatically assigned to the customer -- in providing further services as part of the agreement.  Without this type of license of the byproduct, the developer would be infringing on the customer’s rights in using software that the developer just created.

This concept applies whether the byproduct is software, artistic works, patentable concepts, trademarks, trade secrets or any type of intellectual property.  

The new byproduct could be licensed in the same manner as each party’s original contribution, or could be owned and licensed in a way different from the original IP.  The goals of the parties will dictate how the new rights should be distributed and used.  The agreement should not neglect the fact that new IP is being created and needs to be accounted for in the continuing development process.

Ned T. Himmelrich
410-576-4171 • nhimmelrich@gfrlaw.com