Minneapolis patent attorney Mark Stignani discusses important things that must be established regarding dispute resolution in a joint venture.
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What are three key rules for establishing ground rules for IP disputes before you get into a joint venture? They’re really along three lines. The first line is who is the inventor or who is the originator of that IP? Secondly, who’s gonna pay for the registration of that IP? Thirdly, who’s gonna receive the benefit of that IP? So let’s take them in order.
First, who is the inventor? One of the things that’s always a problem in a joint venture is if you have a co-invention – one inventor from one company and another inventor from another company. Deciding who owns that patent and who gets the benefit of that patent is always a key thing to establish beforehand. So an inventor is inventing for the benefit of the joint venture or their individual parent companies. A very strong question needs to be answered ahead of time.
The second thing is who is actually owning that? Since a joint venture may only last 5 years or it may ultimately be at a disassociation of that joint venture, and a patent, for example, is good for 20 years. The question of who gets that right after the dissolution of a joint venture, or who gets to use it during the joint venture, should also be fleshed out before you get into the agreement.
Thirdly, who gets to sue, who gets to enforce? Is the joint venture gonna be enforcing entity, or is the parent of the joint venture going to enforce it, or is it you’re gonna have a third party do the enforcement in the case of an NPE. Some of these questions need to be addressed ahead of time, but you should certainly have facilities and procedures for addressing things that aren’t contemplated as you go through this. It’s very important.