IP Agreements

Creative innovation often involves working in partnership with others, and we are also seeing an increase in the use of contractual collaborations as a tool to open new doors for existing businesses – for example, to expand into a new field, adopt a new sales channel, reach a new audience, reinvigorate a brand or simply deliver efficiencies. Whatever form they may take, collaborations are about working effectively with others to explore new opportunities and deliver commercial and other benefits to all involved.

 As well as collaborations between commercial organisations, we have plenty of experience advising on collaborations with universities and other academic institutions.

Our team can support you with any form of IP-related collaboration, including:

• Research and development collaborations (both commercial and academic)
• Complex multi-party collaborations
• Brand collaborations
• Advertising/ social media/ influencer collaborations
• Advising on IP issues arising within corporate joint ventures

Engaging another organisation to develop IP on your behalf is ultimately a supply of services arrangement – albeit one with very particular IP related risks and opportunities requiring specialist input. As a customer of IP development services, the most important function of the services agreement will be to secure the rights to IP that you are expecting. As a supplier, you will want to ensure that you don’t inadvertently hand over or compromise the ‘crown jewels’ of your business along with any deliverables you create for the customer.

Contractual norms and standard market positions vary depending on the circumstances and nature of the IP being developed. Our IP agreements team have a wealth of experience in drafting and negotiating these sorts of agreements across a range of sectors and can help you navigate the process and secure the protection you need.

Examples of the sorts of IP development agreements we regularly advise on include:

• Research and development services agreements (both commercial and academic)
• Design services agreements
• Software development agreements
• Website/ app development agreements
• Commissioning agreements (e.g. art, photography, music etc.)
• Freelancer/ consultancy agreements

IP licensing involves a rightsholder granting another party the right to use its IP rights in some way, whilst retaining ownership of those IP rights. Most IP related agreements involve some form of licensing arrangement – and they can even be a useful way to settle infringement disputes.

Whether you are looking to exploit your own IP rights or secure the ability to use those belonging to another, our specialists can help. We draft and negotiate licences involving any and all forms of IP rights, and we understand the different issues and considerations that arise in each context and in different industries.

Examples of IP licensing arrangements we can support you with include:

• Licences of IP rights (including trade marks, patents, know-how, copyright, design rights, data and databases)
• Merchandising agreements
• Software licences
• Intra-group licences of IP rights (ensuring that all companies within a group have the necessary rights to use the IP rights they need)
• IP licensing in the context of collaborations and joint ventures (see ‘Collaboration agreements’ section below)
• IP licensing in the context of a corporate transaction (business acquisition or divestment whether on a long term or transitional basis)
• IP licensing in the context of a manufacturing arrangement
• IP licensing as part of settlement of an infringement claim
• Cross-licensing arrangements (where two or more parties each grant a licence to use their IP rights)
• Sponsorship agreements

Our team frequently advise on IP ownership issues, whether stand-alone queries or issues arising as part of a wider project (e.g., a collaboration or corporate transaction).

Examples of how we can support you include:

• Advising on the current ownership of IP rights, including chain of title reviews
• Preparing and negotiating any documentation needed to give effect to a change in ownership of IP rights
• Reviewing and advising on the ownership of IP rights within a company group structure, including intra-group assignments of IP as part of ownership reorganisations and related licensing arrangements – we have particular experience of this within the charities sector
• Advising on ownership of IP rights commissioned from a third party (see ‘IP development agreements’ section below)