Creating Profit Through Alliances - business models for collaboration E-book | Page 91

Intellectual property

publication). Regarding a discovery or invention made
in employment, the ownership depends on the
employment conditions and whether the making of
the discovery or invention is part of the employer's
tasks. Thus, the inventor does not necessarily become
the owner of the patent.
If the collaboration between two parties results in the
development of new knowledge (for instance in an
R&D alliance) for which a patent application is filed,
then it is important to have determined beforehand
how to go about it. If the patent is filed under both
companies' names, they will jointly have to decide
about its use or licensing.

Patents that can be filed as a result of collaborative
knowledge development form a special category of
returns. A patent is a set of exclusive ownership
rights that a public authority awards to an individual
or company in exchange for the publication of the
details of the discovery or invention. This publication
is mandatory with a view to advancing the state of
technology. A patent gives the right to prevent others
from making, using, selling, offering to sell or
importing the discovery, in the country where the
patent applies. Most patents are effective from the
moment of publication and for a maximum duration
of 20 years after the patent application.
In most countries, patent rights are awarded to the
party that first files the patent application, provided
the discovery or invention has not already become
public knowledge (through use, sale, or any form of

It is wise, in this respect, to distinguish between the
ownership of the patent and the right of use. It can
be arranged contractually that the ownership remains
with one of the partners or with the joint venture,
and that both partners (and possible merger partners
and group companies) have the right to use the
invention, but that it requires the consent of the
other party to resell the invention or to license it to a
third party.
Moreover, some patents build on earlier patents; for
example a medicine that is dependent on a patented
production method. This is also known as background
knowledge. If this is relevant to the collaboration,
then it has to be arranged how to deal with such
background knowledge, if this knowledge was
developed previous to or outside the partnership. It
could be that this knowledge derives from a third
party, which means that its use needs to be arranged
carefully to avoid being held liable for breaching
patent rights.
Finally, one should consider how to deal with patents
that have been developed as part of the
collaboration, but that do not support the goal of the

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