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What Rights Will Your Client Have When Working With Another Party on New Ideas?
Practical Law Legal Update 9-618-5578 (Approx. 4 pages)
What Rights Will Your Client Have When Working With Another Party on New Ideas?
by Practical Law Intellectual Property & Technology
| Published on 15 Sep 2015 • USA (National/Federal) |
A guide to key Practical Law resources to help counsel negotiate and draft various agreements concerning situations where a company may work with another party on new ideas, such as joint development, sponsored research, evaluation and option and unsolicited idea submission agreements. This Legal Update includes links to sample templates, precedents and other resources with detailed guidance.
The intensity and pace of competition is continually increasing and companies are under constant pressure to innovate faster and quickly bring new products to market. But with the cost of research and development also increasing, companies must seek better and more efficient ways to conduct research and development and improve their product offerings. In this environment, companies often seek to obtain new ideas and technology from outside sources, whether they are other companies, universities or individuals.
There are many arrangements in which a company may obtain new ideas and technology for their commercial products, and counsel must negotiate and draft a wide variety of agreements, which may include complicated and contentious intellectual property issues, to suit the particular arrangement their client may choose. For example, a company seeking new ideas and technology may:
- Engage in collaborative research efforts, such as through certain joint development activities. The complexity and length of a joint development agreement varies depending on the context of the agreement, and counsel should consider many issues when negotiating and drafting a joint development agreement. For detailed guidance on joint development arrangements, including a model joint development agreement template, see:
- Seek to have another party conduct certain research for it. Although a sponsored research arrangement may address issues similar to those in a joint development arrangement, those issues may be treated differently because the dynamics of the situation, including compensation, are typically different. For detailed guidance on sponsored research agreements, see:
- Evaluate another entity's technology to potentially license that technology to augment its own technology. For more information on evaluation and option agreements and pro-licensee license agreements, see:
- Accept unsolicited ideas from third parties, which on occasion may result in a product that the entity would commercialize. Certain companies have an open innovation policy and prefer to review unsolicited ideas to ensure they do not miss these types of opportunities. For more information on handling outside idea submissions, see:
Counsel may also need to consider other agreements that address other situations that may arise when their client is working with another party concerning new ideas. For example, counsel may need to negotiate and draft:
- Material transfer agreements. In certain situations, a company may seek access to another company's proprietary materials to conduct its own research. For more information, see Standard Document, Material Transfer Agreement (Pro-provider).
- Patent assignments. For more information, see Standard Document, Patent Assignment Agreement (Long Form).