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.

Not so long ago one of our colleagues made the comment that ownership of an IP asset doesn’t guarantee anything other than the onerous responsibility of maintaining it.   It's a fair point - the only certainty you have as an IP asset owner is the fact that you will have to pay the invoice for maintaining an entry on the relevant register.   

What is critical when it comes to approaching an IP asset is the right to exploit and use that asset.   Experience tells us that you can get that benefit without ownership.  In most cases, it's possible to get all of the benefits of an IP asset without taking on all of those ownership responsibilities.   Next time you are working out the finer details of a collaboration contract, think outside of the square on the ownership issue.   Consider securing rights to exploit the IP asset rather than securing an ownership interest.   By doing that, you might be able to exchange the onerous liabilities that come with ownership for more significant and valuable rights to use the IP to drive your profit centre.

In July 2010, the Australian Federal Government reversed its long-standing position asserting ownership over all contractor IP in IT procurement contracts.   This was a refreshing change for IT contractors.   However, experience and anecdotal evidence is showing that while the Crown may have relaxed its stance on ownership, it is still reserving substantial use rights (without having to resort to the traditional Crown use right - but more on that later).   For parties negotiating complex collaboration agreements, the Federal Government's shift in emphasis and negotiating stance is a lead worth following.

The Page Seager IP team will take a break next week.   Here's hoping Santa delivers a lot of IP licensing rights to fill our stockings this year (Not being biased, but we're specifically picking Biotech IP licensing rights will be the most popular Christmas gift in 2043.).  Posts will resume in the first week of January.   Compliments of the season to all our regulars, and we'll see you in the New Year.