Divvying up intellectual property (IP) rights when jointly creating a product is essential — and difficult. Parties to an agreement must understand how each contributor will use its own IP in the future and be sure the agreement allows for that future use. The concepts and focal points are similar whether the work is software, designs, joint branding or new devices and inventions. There are many factors to consider: what IP is brought to the relationship; how will the joint effort use the IP and how does it need to be licensed to others for that use; what rights does each party have to use the resulting product during the relationship and in ways unrelated to the relationship; and what IP can each party take with them and use after the relationship. For example, if a party assigns its rights to another as part of the transaction, the assigning party cannot then use those rights in the future. The hardest part may be determining who owns IP created during the relationship. As examples, a software development agreement needs to parse through who owns the coding, who can license it for what particular uses in the future, and who may own the resulting data obtained and created. Agreements to develop graphic designs should address who can use which part of the designs in their own future endeavors.
Ned T. Himmelrich
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