Development, Allocation and Management of IP

Abstract

contents 9.1 Licensee Developments: Derivatives, Improvements and Grantbacks 248 9.2 Licensor Developments: Commissioned Works 254 9.3 Joint Developments: Foreground and Background IP 262 9.4 IP in Joint Ventures 265 9.5 IP Maintenance and Prosecution 275In previous chapters we have largely focused on the licensing of existing intellectual property (IP) by a licensor to a licensee. But in many cases significant bodies of IP may be created by the parties during the term of the agreement. This IP may be created by a licensor who contracts to undertake technology development services for its licensee, or by a licensee that is given the right to make its own modifications and improvements to the licensed IP. Or, in some cases, IP may be developed jointly by the parties. In each of these cases, the parties must agree which of them will own the newly developed IP, and whether any licenses will be granted to the non-owning party, and how they will manage and prosecute that IP. licensee developments: derivatives, improvements and grantbacksWhen a licensor provides IP to a licensee, the licensee is sometimes permitted to develop its own IP based on the licensed IP. This section discusses some of the legal issues surrounding those licensee-developed works, and how they are handled in IP licensing agreements. Derivative Works and ImprovementsSection 101 of the Copyright Act defines a "derivative work" as a work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted. A work consisting of editorial revisions, annotations, elaborations, or other modifications which, as a whole, represent an original work of authorship, is a "derivative work".Under Section 106 of the Copyright Act, the owner of a copyright has the exclusive right to prepare derivative works based upon a copyrighted work. Derivative works that are made without the licensor's authorization have no copyright protection at all. Thus, if a licensee wishes 9