Do you develop technology as an independent contractor? Here’s how you should think about defining your IP ownership, assignments, and licenses

There are a lot of moving parts when you start working together with another party on joint research & development or in an independent contractor relationship. One of the trickiest aspects is defining who will own the IP developed during the engagement. In fact, the IP ownership question can dictate the value of the contract or, alternatively, kill the deal if the parties can’t agree on a mutually acceptable approach.

Here is a list of options to help you think about several of the ways IP can be developed, owned, assigned, and licensed during an independent contractor or joint R&D project.

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Should you File a Divisional, Continuation, or Continuation-in-Part before your Patent Issues?

Your patent claims are allowed. Your patent is going to issue soon. Congratulations!

Make sure you don’t miss the opportunity to make an informed, strategic decision about whether to keep your patent options open by filing a new patent application and claiming priority to your allowed patent application while it is still pending.

You probably already know that patent applications can claim priority to each other. This lets applicants create a chain of applications, if they want. There are reasons to do this–sometimes the patent office restricts which claims can be examined, and other times applicants want to extend the pendency, or examination cycle, of their patent applications–and there are other reasons to avoid linking patent applications together.

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IP Strategy Weekly Roundup (5 May 2020)

IP Strategy sits at the crossroads of technology, law, and business. With a focus on competitive advantage, IP Strategy can be aligned with Business Strategy to create and exploit powerful positioning and meaningful differentiation within a competitive landscape.

Every once in a while, a new technology, an old problem, and a big idea turn into an innovation.
– Dean Kamen

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