Creating Profit Through Alliances - business models for collaboration E-book | Page 92

collaboration, and for patents that are filed after the
collaboration has been terminated.
Most parties that regularly file patent applications will
have their trusted specialists to conduct the
negotiations. For collaborations in which patent
applications are less a matter of course, the
„Intellectual property needs matrix‟ by Slowinski and
Sagal can offer some basic guidance35. This matrix is
elaborated for a joint venture in Figure 30.
Patents developed previous to
partnership (background
knowledge)

Patents developed during
partnership (foreground
knowledge)

Within the
context of
collaboration

Patents remain with A and B,
free use within the joint
venture

Patent becomes property of
joint venture, free use for A
and B for the designated goal

Outside the
context of
collaboration

Use right for the partner if the
developed patent builds on
former patent

Patent becomes property of
joint venture or of the partner
to whose business the patent
applies, but free use for the
other

After termination
of collaboration

Previously awarded use rights
remain in place

New patents owned by A or B,
free use of patents developed
in the joint venture

Four complicating factors
A number of complicating factors may crop up while
forming an alliance. Four such factors, which are
irrespective of the type of alliance or its legal form,
are discussed below.
Difference in size

Figure 30, Possible arrangements for patent rights in a joint
venture

Figure 31 outlines the arrangements for a
contractually arranged collaboration. The main
difference is that, in this case, there is no shared
company to which the patent rights can be allocated.
Patents developed previous to
partnership (background
knowledge)

Patents developed during
partnership (foreground
knowledge)

Within the
context of
collaboration

Patents remain with A and B,
free use for the partner if a
patent developed in
collaboration builds on a
previous patent

The patent ownership remains
with the one that actually
discovered it, but free use
right for the partner

Outside the
context of
collaboration

In principle no use right, but
paid licence is possible

Ownership with A or B, no use
right for the partner

After termination
of collaboration

Previously awarded use rights
remain in place

Previously awarded use rights
remain in place

Figure 31, Possible arrangements for patent rights in a
contractually arranged collaboration

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Whenever a smaller company collaborates with a
larger company, chances are that the collaboration
carries much more significance for the smaller one.
This places it at risk of being neglected or
overshadowed by the larger company. A change of
management in the larger company can even mean a
loss of all interest in the collaboration.
The larger company, meanwhile, faces a different
risk: it is likely that the knowledge and commitment
of the smaller company strongly depends on just a