This issue refers to the rights and obligations of parties to an agreement to file for and maintain patents for the background and foreground IP related to a project. It is important that an agreement sets out clear responsibilities for patent prosecution, maintenance and enforcement, in order to ensure aligned expectations between the parties as to when IP can or must be protected.

Questions to consider when developing a Protection of IP provision

• Who has the decision-making authority and responsibility for patent prosecution, maintenance and enforcement?
• Is there a mechanism for information sharing and cooperation between the parties in relation to patent prosecution, maintenance and enforcement activities?
• Can the IP owner abandon the prosecution or maintenance of a patent?
• How should IP protection expenses be allocated between the parties?

Example approaches found in the MAPGuide

• Who has the decision-making authority and responsibility for patent prosecution, maintenance and enforcement?
  • The MAPGuide includes examples of varying approaches to the decision-making authority related to IP protection activities. There may also be different approaches within an agreement for foreground, background, and jointly-developed IP.
  • A number of MAPGuide provisions related to IP protection state that the party that developed the IP has the “right, but not obligation” to prosecute, maintain and enforce patents. However, in other provisions patent prosecution and maintenance is a requirement, rather than an option. 
  • The MAPGuide also includes some examples of provisions which identify a party with a “first” right to file for or enforce a patent, but if that party chooses not to take action, then another party to the agreement may elect to do so.

• Is there a mechanism for information sharing and cooperation between the parties in relation to patent prosecution, maintenance and enforcement activities?
  • Some agreements in the MAPGuide include a requirement for the party with decision-making authority and responsibility for IP protection activities to consult with the other party before taking any action. This can include providing copies of relevant documents and allowing sufficient time for review and consideration of comments from the other party.
  • Another provision commonly found in agreements in the MAPGuide is a requirement for each party to inform the other(s) if they become aware of any alleged patent infringement.
  • Development funding agreements in the MAPGuide often require the product developer to provide reports on patent applications.

• Can the IP owner abandon the prosecution or maintenance of a patent?
  • Some agreements in the MAPGuide include a specific obligation on the party responsible for patent prosecution and maintenance not to abandon those activities. This obligation may be limited to circumstances under which the effect of the abandonment would be to prevent a party from practicing the IP rights licensed to it under the agreement.

• How should IP protection expenses be allocated between the parties?
  • A common approach to IP protection expenses in the MAPGuide is that the expenses are borne by the party choosing to file for or maintain a patent. 
  • In some license agreements, patent prosecution and maintenance costs are borne by the licensee. In these cases, the licensee may have an option not to pay these expenses on a country-by-country basis, but will then lose its license rights in those countries.