The purpose of this article is to look at best practice, from a lawyer’s perspective, in the negotiation of IP licences and collaboration agreements as well as some of the pitfalls that arise in these situations.
We will begin by looking at the deal making process and continue by considering some of the most important components of initial documents such as NDAs and term sheets as well as some of the issues that arise in technology licence agreements. We will go on to examine the advantages and disadvantages of the joint ownership of intellectual property in collaboration agreements and conclude with some thoughts about governing law and jurisdiction clauses.
For the most part, we will consider these matters in the context of patent rights because patent rights bring into play issues that do not arise in relation to other types of IP. However, much of what we have to say applies to those other types of IP as well.