This issue identifies how agreement provisions address the ownership of intellectual property related to the activities under an agreement. The term “intellectual property” (IP) can be used to describe proprietary information such as patents, trademarks, copyrights, trade secret rights, data, research information and know-how that is owned by an organization or individual.

The IP relevant to a project could be created prior to the start of the partnership (“background”), or during the course of the project activities (“foreground”). During the course of an agreement, the parties might also generate IP that is not directly related to the project activities (“sideground”). More definitions of these terms can be found in GHIAA’s Equitable Access Glossary.

It is important for agreements to provide clarity on the ownership of all project-related IP, particularly that which is jointly created between two or more parties. This helps to prevent misunderstandings that could lead to disputes, as well as enabling the parties to identify where license grants may be needed in order to conduct the project activities without infringing on any IP rights.

Questions to consider when developing an IP Ownership provision

• Is the ownership of existing (background) IP impacted by this agreement?
• What is the scope of background IP?
• How will sideground IP be treated?
• Who will own new IP arising from the project?

Example approaches found in the MAPGuide

• Is the ownership of background IP impacted by this agreement?
  • Most agreements in the MAPGuide state that there is no change in ownership of background IP.
  • Some agreements state that if a party transfers its background IP to a third party then it must also transfer the obligations under the agreement.

• What is the scope of background IP?
  • A number of agreements in the MAPGuide, particularly licensing agreements, include an appendix providing a detailed list of the relevant patents and other background IP of each party. This approach is often also found in agreements with the U.S. government.
  • The scope of IP included in “background” varies between agreements. The approaches found in the MAPGuide include:
    • IP that is owned at the effective date of the agreement and is related to the project.
    • IP that is owned at the effective date of the agreement as well as IP generated or acquired outside of the scope of the project after the effective date (i.e. sideground IP).

• How will sideground IP be treated?
  • Sideground IP is often not included in agreements in the MAPGuide as a separately defined term. Where it is defined, the related agreement provisions generally state that each party remains the owner of its sideground IP.
  • As outlined under the structural question above, another approach seen in MAPGuide provisions is that sideground IP is included in the scope of background IP. 

• Who will own new IP arising from the project?
  • Provisions in the MAPGuide that address the ownership of IP arising from a project may use varying terminology including “foreground”, “results”, “inventions”.
  • A common approach found across agreements in the MAPGuide is that any new IP is the property of the party that created it. Some agreements require the parties to notify each other of any new inventions.
  • In the case of IP jointly created between two or more parties to an agreement, the approach most often found in the MAPGuide is that the parties will jointly own that IP.