How to Prevent IP Ownership Issues When A Corporate Strategic Alliance, Joint Venture or Open Innovation Project Fails

Smart business professionals should realize that when a significant problem occurs on a frequent basis, there likely is a failure in an associated business process. This is the case for IP ownership issues: most of the problems I have addressed on the back-end of a failed collaboration were fully predictable and the resulting problems could have been reduced or eliminated by proper planning. But if common IP ownership issues are not difficult for an Intellectual Property and Patent Business Strategist such as myself (more info here: www.jackiehutter.com) to predict and prevent, why do such issues still occur with such frequency in the collaboration space?

The answer is fairly easy from my vantage point: patent experts are typically not considered as possessing essential business knowledge and, as such, people like me are not seen as necessary participants in a collaboration deal. This is true even when the primary reason for the parties getting together in the first place is to pool existing technology and to create R & D synergies that will result in acceleration of innovation to the benefit both participants.

Admittedly, we patent experts have facilitated our not being involved on the front-end of business matters by traditionally focusing our practices on obtaining patents and litigating them for clients. We have left business matters to business professionals and transactional lawyers because, as a highly specialized profession, we felt more comfortable in the area of our own expertise. Also, we have not generally reached out to educate others about our somewhat “arcane” area of legal expertise. Our knowledge has remained closely held within the confines of patent practice and, as a result, we have been problem fixers. as opposed to preventing problems before they occur.

One thought on “How to Prevent IP Ownership Issues When A Corporate Strategic Alliance, Joint Venture or Open Innovation Project Fails

  1. Allan J Main

    Jackie, your observations bring to mind advice given me early in my career as a research collaborator. I have had this advice surface to my consciousness every time I have reviewed terms of a collaboration agreement. “PLAN FOR SUCCESS BUT CONTRACT FOR FAILURE!” As a commercial animal rather than a legal beaver this advice has served me well through the years. The reality is that the contract stays on the shelf when everything is running along swimmingly, but when the going gets rocky is when you need the surety of a well-drafted contract. And just like insurance, when it is needed it’s too late to change it!

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