Prenuptial Patenting: Responsible Engagement with Engineering Firms
Jul 28, 2022
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This podcast discusses the importance of prenuptial patenting when engaging with engineering firms. The topics covered include vetting partners, securing intellectual property, managing conflict of interest, the relationship between innovation, technology, and patenting, the importance of commenting code, and crediting engineering firms in patents.
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Quick takeaways
When engaging with engineering firms, it is important to consider factors such as geography and jurisdiction, security and conflict of interest management, experience and expertise, working models, and cascading contractors.
During the product development phase, it is essential to maintain an active feedback loop, understand the sources of innovation, and secure access to code repositories. Monitoring patentability and freedom to operate, and managing open source considerations, are key aspects.
To ensure ownership of intellectual property, contracts should include clear provisions on IP ownership, termination clauses, and other legal considerations. Carefully managing code ownership, conducting patentability and freedom to operate searches, and addressing open source considerations are crucial for IP protection.
Deep dives
Preparing for Engagement with Engineering Firms
When engaging with engineering firms, it is important to consider factors such as geography and jurisdiction, security and conflict of interest management, experience and expertise, working models, and cascading contractors. Clarifying expectations, deliverables, timeframes, and guarantees is crucial, as well as understanding code ownership and open source considerations. Additionally, compliance with FDA regulations and the use of prototypes and proof of concept should be taken into account.
Managing the Product Development Phase
During the product development phase, it is essential to maintain an active feedback loop, understand the sources of innovation, and secure access to code repositories. Monitoring patentability and freedom to operate, and managing open source considerations, are key aspects. Being aware of agile methodology and considering patentability and FDA compliance throughout the process are also important.
Ensuring IP Ownership and Transition
To ensure ownership of intellectual property, contracts should include clear provisions on IP ownership, termination clauses, and other legal considerations. Carefully managing code ownership, conducting patentability and freedom to operate searches, and addressing open source considerations are crucial for IP protection. Transitioning ownership, cutting off access, and monitoring third-party activity should also be managed effectively.
Lessons Learned and Case Studies
Case studies highlight the importance of having development agreements in place to determine IP ownership. Attention should be given to base code ownership and structures, along with clear assignment and declaration requirements. Being inclusive with inventorship and protecting against challenges is also crucial.
Closing Thoughts
In conclusion, it is crucial to protect your IP before disclosure, vet partners carefully, have strong contracts, understand what is being developed, and have an exit plan. Continual engagement and positive relationships with engineering firms are important for long-term success.
You have your big idea and now it’s time to breathe it into existence, but you need some help with the development. Like many others, you may turn to the aid of an engineering firm or dev shop. This relationship is a marriage of sorts. But it’s a marriage that is designed to inevitably end in divorce! How cleanly, smoothly, and successfully this separation goes depends on the steps that you take before it officially begins.
Both parties come to the relationship with existing assets – IP, software, prototypes, ideas, documentation, etc. More will be created collaboratively throughout the course of the relationship. But how do you ensure you exclusively get back out what you came with and also get what you contributed and uniquely paid for?
In this month’s episode, Dr. Ashley Sloat, President and Director of Patent Strategy here at Aurora, leads a discussion into Responsible Engagement with Engineering Firms, or what we affectionately refer to here as “Prenuptial Patenting”. Ashley and our all star patent panel walk you down the aisle and explore everything you need to know to experience marital bliss and an amicable divorce with your engineering partners. This talk covers the full life cycle from vetting partners to post development concerns and everything in between – with particular focus on relationship complexities like IP ownership, assignment from engineering firm inventors back to you, and how to avoid the traps of viral IP.
Ashley is also joined today by our always exceptional group of IP experts including: