IP Ownership - is it really all that it's cracked up to be?

When negotiating a collaboration agreement, one of the issues that often causes a headache is who is to own the IP.   In many cases, it is a debate that doesn’t need to happen.  As we saw a couple of weeks ago, this issue can be so divisive that the negotiating parties lose perspective and fall into the joint ownership trap.

Deadwood

Recently, we looked at the IP tracking issues that intellectual asset managers have to deal with in our post on Tracking Innovation.
One of the other problems that these managers face is how to deal with IP assets that their enterprise is unlikely to use. Once obtained, patents can cost a significant amount to maintain. If they are left to fester in an IP asset portfolio, the liability to an enterprise can continue to mount with no return for the investment.

The Joint Ownership Trap

Parties contemplating a collaboration will often enter heated negotiations about who is to own future IP. To resolve the deadlock, they sometimes adopt a halfway position that results in "joint ownership" of newly developed IP. This can result in several problems.

Tracking Innovation

One of the questions we like to ask IP Asset Managers is what sort of system they have in place to help them with their job.   Is it a reactive system?   Do they rely on their innovators to disclose what is being created, or do they have a more proactive system that tracks innovation from the outset?

Web Scraping and Copyright

Technology develops faster than the law does.   This can have both good and bad results.  Take the practice of web-scraping, for instance.   The same type of software used to detail the content of your site for search engine results can also be used to rob you of your innovative content.   Instead of just syndicating the content to provide it for search results, the software can also ‘scrape up’ the content to be used somewhere else.

The logical legal tool to deal with web-scraping abuse is copyright.  

Software Escrow Arrangements

So what would happen if your IT contractor went into liquidation?   It could be your IP horror story.   In a disturbingly high number of cases, IT services contracts specify that where software solutions are custom-made for an enterprise, they are owned by the contractor, not the enterprise.   This means that in a liquidation scenario, ownership of the software will vest with the liquidator.

Your new IT contractor will need to have access to your software, and preferably a license to tinker with the source code.   Without these things, not only does switching contractors become an impossible transition, but any modifications to your software solution may lead to a breach of the liquidator’s IP.