Intellectual Property: Ownership of Developments and Inventions
NDA
Table of Contents:
Inventions Conceived by the Recipient
Joint Ownership
Duty to Disclose
Intellectual Property: Ownership of Developments and Inventions
Parties to an NDA may find it beneficial to determine in advance the rules of ownership of inventions or other intellectual property created by the receiving party as a result of its access to confidential information of the other party to avoid later misunderstandings regarding such ownership.
Inventions Conceived by the Recipient
In the following exemplars, inventions conceived by the party receiving information from the disclosing party that are based on such information remain the property of the disclosing party, including the obligation of the receiving party to assign rights to such inventions to the disclosing party:
Exemplar N14F-1
All inventions, derivative works, improvements or design contributions conceived of by the Receiving Party relating to the Confidential Information of the Disclosing Party and all rights therein (including all intellectual property rights) shall at all times be the sole and exclusive property of the Disclosing Party, all of which the Receiving Party hereby irrevocably assigns to the Disclosing Party. The Receiving Party may not incorporate the Disclosing Party’s Confidential Information into any product or service. Any such use shall be subject to a mutually agreed upon license agreement. The Disclosing Party makes no representation, warranty, or guarantee of any kind with respect to the Confidential Information. Without limiting the generality of the foregoing disclaimer, the Disclosing Party, in particular, does not warrant or represent the non-infringement of trademarks, patents, copyrights, mask protection rights or any third-party rights in or to the Confidential Information.
Joint Ownership
Alternatively, as the following exemplar illustrates, the parties can agree to joint ownership of any inventions conceived by the party receiving the disclosed information that are based on such information, which allows each party to exercise independent rights with respect to such inventions:
Exemplar N14F-2
No party transfers or assigns ownership of, or title in, or to any intellectual property rights under this Agreement (including patent, copyright, or trademark rights). Except as otherwise expressly agreed in writing by the Parties, conception and creation will be determined in accordance with the laws of the United States; provided, that joint ownership will be without any duty to account to, or obtain the consent of, the other party in order to exploit or non-exclusively license the jointly owned intellectual property rights. No rights granted under this Agreement include any license rights to patents or patent applications.
In some circumstances, it may be useful to defer such matters to a separate discussion en route to reaching a separate definitive agreement:
Exemplar N14F-3
Each receiving party acknowledges that the disclosing party’s Information is the confidential and proprietary information and property of the disclosing party, and that the receiving party does not have, and nothing herein shall be construed to imply, any claim, right, title, property or other interest or license of any kind or nature in the Information. The receiving party shall hold and maintain the Information in confidence and trust for the sole and exclusive benefit of the disclosing party, and shall not use the Information for its own benefit or for the benefit of any third party. The parties agree to negotiate in good faith with respect to the ownership and licensing of any product, invention, concept, discovery, equipment, formula, specification, process, material, information, or marketing recommendation developed or created based on the Information. Nothing herein shall be deemed to obligate either party to purchase any goods or services from the other, or to enter into a further relationship with the other party.
Duty to Disclose
In any event, the receiving party may be subject to a duty to disclose of any inventions or other intellectual property created by the receiving party in connection with its review of information disclosed to it:
Exemplar N14F-4
In the event that the Receiving Party conceives any invention or improvement, regardless of patentable or not, through the use of the Disclosing Party’s CONFIDENTIAL INFORMATION (hereinafter referred to as the “Invention”), the Receiving Party shall promptly inform the Disclosing Party of such Invention in details, and the Parties shall discuss the ownership of the Invention and whether or not to apply for any patents.