Tips on tactics – a legal perspective on innovating beyond the corporate boundary

Abstract

The legal framework for extending innovation beyond the corporate boundary is the Strategic Alliance (or partnership) Agreement. Before entering into any type of alliance involving a joint development arrangement, every company whose core assets are comprised of intellectual property should conduct an internal Intellectual Property Audit. Make certain what you own (or control through licenses) it may be more or less than you think. The second phase of the Intellectual Property Audit is to make sure your Intellectual Property Assets are protected. Begin drafting the Alliance Agreement by articulating the goals of the alliance as specifically as possible. Define the product to be developed or area to be explored in detail. The Alliance Agreement should define the what technology is proprietary to each party. Determine in advance who collects the money, how is the money split, and who does the accounting. Each party should be individually responsible for the cost of defending any claims of infringement. Options can be tied to the development and testing milestones that allow you to get out of the deal entirely or reduce it from an exclusive to a non‐exclusive arrangement.