The definition of intellectual property developed in common must be considered with the utmost care and is one of the most common areas for future differences of opinion. More often than not, a party will feel that it developed a technology during the JDA period, but that it was developed separately from the JDA and that it should be “separate” and not “shared.” Once the IP is properly classified separately or in common, two other critical questions must be answered: “Who can use the IP” Who controls the IP These concepts are more different than they can appear. The right to use the investigation period is precisely the right to use either the intellectual protection rights of the other parties, the period of investigation developed jointly, or the period of investigation developed separately. On the other hand, the right of control is the right to determine which others, apart from the parties, can use the property developed in common and under what conditions. The Sixth Circuit Court of Appeals, whose cases govern patent law in Ohio, described this situation as a situation in which patent co-owners, if they do not have such a written agreement, “are at each other`s mercy.” It is important to stay out of this situation. Ensure that a written agreement includes issues such as the right to a common licence, the right to infringement proceedings and the sharing of sociable activity costs, as well as a form of loss-sharing. Contrary to popular myth, the invention is generally not the province of the only inventor who works alone. Even Thomas Edison employed large teams of collaborators to develop new inventions. With the increasing complexity of the business, more and more companies are coming together to create new intellectual properties, sometimes in flexible arrangements and sometimes in well-defined joint ventures.
All these types of agreements are full of problem possibilities. In a way, a formal Common Development Agreement (JDA) resembles a pre-marital agreement in a marriage. New business associations are emerging under a coat of enthusiasm, often with little concern about possible problems along the way. Even as a marriage, a common development project begins with parties that have individual ownership and want to become more than they are individually. If the rights of the parties are not clearly defined from the beginning, when the honeymoon ends, the trouble begins. Protecting your intellectual property is a challenge, especially when concluding a common development agreement or “JDA.” If two or more organizations want to collaborate to develop or improve their products, combine or integrate their technologies or market a new product together, they have many opportunities to document their relationship. In short, joint development agreements allow companies to act together to do more than they could achieve on their own. But without careful planning, they can also be an invitation to a business relationship of confusion, unhappiness and loss.
The common intellectual protection procedure raises very serious control problems, particularly with regard to the patented intellectual protection procedure. U.S. law allows any co-owner of a patent to sell, use, sell or offer the patented invention to other owners without consent or accounting. This is unlike most other types of common property, where, although one party can act without the other, there is often a requirement for a revenue sharing. Fortunately, the law contains an evasion clause on this subject, which states that joint patent holders may mutually restrict the possibility of ceding patent rights if they have “a contrary agreement”. The IP property of each party prior to the JDA refers to all confidential or proprietary information held by each party.