Intepreting Ownership of IP in Joint Venture Agreements

In a recent Seventh Circuit Opinion, the Court defined how to interpret and enforce ownership of IP under a joint venture agreement.  Moreover, the Seventh Circuit also explained the differences between an
Arbitrator’s award and an ALJ or court’s decision.

The Seventh Circuit confirmed that ownership of intellectual property under a joint venture agreement is determined by the terms of contract. In this case, Affymax and Ortho-McNeill-Jannssen Pharmaceuticals and Johnson and Johnson Pharmaceuticals Research and Development, LLC, had entered into a joint venture agreement that stated that ownership of a patent tracked the invention of the patent.

If a particular patent was invented jointly by both parties, then that patent and any continuations, divisional, internationals or family of patents developed from those patents would be owned jointly both parties. However, if only one of the parties invented the patent at issue on its own, then that partly alone would own the family of patents stemming from that particular patent.

The Court stated in these types of cases, where ownership is agreed to in the contract, the ownership of the IP is governed by the terms of the contract-not by the Copyright Act, Lanham Act or the Patent Act. Moreover, the Seventh Circuit, stated that the Arbitrator’s awards unlike ALJ or Court awards do not have to specify in detail each point or issue considered.

The fact a particular issue or basis is not referenced in the award does not necessarily warrant overturning the award. For additional information: see Joint Venture Agreements. If you have any concerns or questions about drafting, negotiating, or enforcing your joint venture agreements, then please feel free to contact us.

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