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:
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.
European Startup Network
As more and more companies openly collaborate and innovate with third parties, the question of proper intellectual property (IP) management arises. The companies have to rethink their innovation models and strike a balance between what knowledge they share with partners and stakeholders and what they can gain from collaborations with them.
If a company manages poorly its relations with external stakeholders, it can be at risk of distributing confidential information related to its intellectual property and losing profits from innovation.
According to the European IPR Helpdesk, open innovation can be carried out in various forms, such as:
In order to protect their assets and maximize future gains from open innovation, companies should implement internal IP protection measures in the early stages of collaboration. This can be accomplished by:
When collaborating, parties often disclose know-how and technologies that have not been protected yet. To avoid potential misuse of such information, it is highly recommended to conclude a non-disclosure agreement (NDA) that establishes the conditions of collaboration and sharing of sensitive information between partners.
European Startup Network