Participants in the collaborative research projects are usually free to decide on the research results ownership regime. Sole ownership is an option when one participant generates a project result. Alternatively, joint ownership may occur when participants work together upon the results and the impact therein may not be clearly determined. In such cases participants should agree on the terms of the joint ownership, preferably before the project starts and in a separate agreement, which shall cover at least issues outlined below:
- Parties: identification of the participants - joint owners;
- Object of the contract: the joint ownership of the project results (foreground);
- Shares: assignment of shares within the joint ownership;
- Shares split equally among all joint owners or
- Shares split in proportion to the joint owners contributions;
- IP management: indication of the partner responsible for filing and maintaining (including the costs incurred) of the IP rights over the foreground;
- Protection of rights: obligation imposed on all participants to monitor and report any infringements of the foreground; indication of the partner empowered to conduct legal actions for protection of the foreground;
- Conditions of the use of the foreground;
- Use in further research: conditions for use of the foreground for further research carried out with third parties, i.e. joint owners may be required to inform each other of such plans and sign respective confidentiality agreements with the third parties;
- Individual exploitation: conditions for exploitation of the common foreground individually in participant’s own commercial activities;
- Licensing: possibilities to license (sublicense) the common foreground. This possibility may be totally restricted (i.e. licensing upon agreement of all joint owners) or subject to certain conditions;
- Transfer: Determining whether and under what conditions a joint owner may transfer its share to third parties. The rest of the joint owners may reserve the right to be informed of any such plans and/or be given a right to object such transfer;
- Additional clauses: standard contractual matters, i.e. applicable law, jurisdiction or alternative dispute resolution systems.
Joint ownership may cause conflicts between co-owners, which usually takes place if they fail to define in detail the rules with respect to their co-owned IP. Even though most countries provides for basic rules governing joint ownership, these rules may not be sufficient to safeguard the interests of all the participants coming from different jurisdictions. It is therefore essential to have a joint ownership agreement (or joint ownership clauses in the consortium agreement) that would clearly stipulate the jointly owned IP.