I am a joint owner of IP resulting from a collaboration agreements. Are there any considerations I need to keep in mind?

The UP regime has implications for collaboration agreements and joint ownership of IP. Collaboration agreements often give rise to jointly developed IP which will by operation of the law in many jurisdictions jointly owned. The collaboration agreement in question may not always contain contractual provisions overriding this.

Where a European Patent that has been validated in a number of the member states of the European Patent Convention is jointly owned all the owners will need to jointly lodge an application for it to be opted out of the jurisdiction of the Unified Patent Court (more on opting out here ). A licensee wanting to ensure this happens will need to secure the cooperation of all the joint owners. Cooperation agreements, in so far that they even exist, are unlikely to cover this aspect.

In general, co-owners will need to jointly agree on how to implement and pay for their prosecution, validation and litigation strategy in light of the advent of the Unitary Patent and the Unified Patent Court in the same way that they already have to agree on prosecution, exploitation and enforcement activities unrelated to the UP.

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