Partner Jeanne Gills was quoted in the Law360 article, “Pandemic Collaborations Pose Risk Of Future Patent Disputes,” about how the urgency for businesses to pursue results to fight the COVID pandemic could increase the risk of patent disputes down the road unless precautions are taken. When companies come together to collaborate, “there’s always the question of who owns what,” and that should be a focal point of early conversation, Gills said.
The collaborators “both individually own what we bring to the table, but who owns an improvement on what we’ve brought the table, and who owns any new IP that flows from our collaboration?” Gills said. “Those kinds of things should be thought about and put into an agreement at the beginning.”
One solution might be to divide up rights that arise from the collaboration geographically, with each party holding rights in different countries, or by field of use, so one partner will hold rights to one area of technology and the other will hold them in another, Gills said.
However, drawing those lines may be tricky, she said, so companies may want to consider an agreement that both sides will share in the fruits of the labor, “and not worry about who did more or who did what, because in the current time, I think it’s a lot more difficult to sort some of that out.”
In addition to potential infringement, those using intellectual property made available through the pledge should consider whether they could be exposed to other types of liability, Gills added.
She used the example of a company from another field that is thinking about pivoting to making masks using patents from the pledge. It will want to know if the owner of the patents will offer indemnity for a patent, product liability or other type of lawsuit related to masks.
“As a licensee, even if you’re getting a free license or reduced fee license, you have to be concerned about liability and who’s on the hook,” she said.