Joint Operating Agreements: Key Provisions, Common Areas of Dispute, and Minimizing Performance Risks Liability Allocation, Mitigation of Fiduciary Duties, Duration and Termination, Default and Nonperformance, Disputes and Claims Today’s faculty features: 1pm Eastern | 12pm Central | 11am Mountain | 10am Pacific The audio portion of the conference may be accessed via the telephone or by using your computer's speakers. Please refer to the instructions emailed to registrants for additional information. If you have any questions, please contact Customer Service at 1-800-926-7926 ext. 1. WEDNESDAY, SEPTEMBER 4, 2019 Presenting a live 90-minute webinar with interactive Q&A James B. MacDonald, Shareholder, Stevens & Lee, King of Prussia, Pa Glenn L. Stein, Member, Chiesa Shahinian & Giantomasi, West Orange, N.J.
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Joint Operating Agreements: Key Provisions, Common Areas of Dispute, and Minimizing Performance RisksLiability Allocation, Mitigation of Fiduciary Duties, Duration and Termination, Default and Nonperformance, Disputes and Claims
– Define Rights to Dominant IP re Improvement Contributions
– Clear Exclusions
• Detailed and Accurate Logs and Recordkeeping
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• Assignment or License?
• Ownership and Grantbacks of Newly Created IP, Improvements and Derivative Works
• Territorial
• Field of Use
• Personnel Use and Disseminations / Trade Secrets
• Quality Controls
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• Exclusive Ownership/Control – Noninfringment
• Encumbrances / No Liens
• Maintenance Activities (up to date)
• Original Creation / Authorship
• Proper Assignments
• Open Source
• No conflicts
• Third Party Consents and Authorizations
• No Implied Licenses
• Sufficiency / Expectations of Results
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USA UK Japan
Patents Do not need permission of other Joint Owners to license to others. Do not need permission to use for Joint Owner’s self.
Need permission of other Joint Owners to license to others. Do not need permission to use for Joint Owner’s self.
Need permission of other Joint Owners to license to others. Do not need permission to use for Joint Owner’s self.
Copyrights Do not need permission of other Joint Owners to license to others. Do not need permission to use in business for Joint Owner’s self.
Need permission of other Joint owners to license to others. Need permission to use in business for Joint Owner’s self.
Need permission of other Joint owners to license to others, which permission cannot be unreasonably withheld. Need permission to use in business for Joint Owner’s self, which permission cannot be unreasonably withheld.
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• Joint Ownership should be avoided whenever possible (Enforcement and Commercialization Risks)
– Different Default Rules Create Different Results
• If inventors agree to cooperate, without more, each inventor owns undivided interest in entire patent– Ethicon v. US Surgical, 135 F.3d 1456 (Fed. Cir. 1998); cert. denied, 119
S.Ct. 278
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• Managements Structures Vary by Project Size and Complexity– Covenants to govern performance
– Joint Project Teams
– Key Operational Personnel
– Project Managers/Leads
– Steering Committees
• Project teams– Perform work and execute development plan
– May execute specific functions in complex development plans (e.g., joint patent team, testing team, marketing team, etc…)
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• Appointment of Key Personnel
– Consistency
– Change Process
• Steering committee adds high-level governance functions to regulate development activities
– Creation of Work Plans
– Dispute Resolution
– IP Management
– Budgetary and Financial Matters
– Change Control
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• Dispute Resolution
– Informal
Negotiation
Steering Committee
– Escalation Process
– Formal
Usually a function of risk, cost, location, governing law and venue