OPEN INNOVATION AND IP MANAGEMENT [PART 2]

Our second article on IP management (first article here) in open innovation explains some of the common practices and agreements that companies use in order to protect their IP rights and ensure confidentiality.

The parties engaged in open innovation might decide to sign a consortium agreement, establish joint ownership or to engage in knowledge transfer via licensing and other contractual mechanisms.

As explained by the European IPR Helpdesk, consortium agreements are usually signed when large companies, SMEs and research and technology organisations (RTOs) decide to openly innovate together. The agreement identifies the IP owned by each party before the project, allocates IP ownership generated during the project and defines the IP access rights necessary for project execution.

On the other hand, joint ownership is usually put into practice in joint ventures and it identifies the following essential IP issues regarding jointly owned assets:

• Conditions of use and exploitation;
• IP protection and maintenance;
• IP monitoring;
• Governing law, jurisdiction or ADR systems.

Licensing can be carried out in two ways: licensing-in and licensing-out. In the first scenario, a company is granted access to a third party’s knowledge, and in the second case, a company puts its own knowledge at the third party's disposal.

Another form of knowledge transfer is assignment of IP. The assignment occurs when a company that owns the IP (the assignor) transfers the ownership of an intellectual property right to another party (the assignee).

In any type of knowledge transfer, it is essential to evaluate the economic value of the IP rights owned by partners in order to conclude a fair agreement. In order to do this, partners might conduct an IP audit process which helps them set the IP development strategy, evaluate risks of their partners’ IP assets and reduce the risks of infringement.

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Author
European Startup Network