Intellectual Property Ownership in Coupled Open Innovation Processes

Open innovation (OI) is high on the commercial and political agenda. It revolves around R&D partnerships, set up to keep up with rapid technological developments. In negotiating such R&D partnerships, the allocation of intellectual property (IP) ownership, in particular patent ownership and trade secret control, is a difficult task. The lack of harmonization of IP law leads to challenges both for collaborating parties and third parties. Many legal patent systems, for instance, impose co-ownership as a default regime for jointly developed technologies. However, under such a regime the exploitation rights may significantly vary and may prescribe the consent of other owners in the case of use, licensing and sale of co-owned patents. These consent requirements may harm the interests of collaborating parties and complicate future exploitation of the technology concerned. To avoid this complexity, parties can establish their own applicable rules. The allocation of trade secret control, on the other hand, is only done on a contractual basis, as legislators do not foresee any default rules on the matter. Typically, the confidential nature of contracts will preclude third parties from obtaining information needed as a basis for initiating an OI process, such as licensing. Neither the default regime, nor the contract-based regime provides the necessary level of transparency and legal certainty to secure the smooth exploitation of jointly developed patents and trade secrets and future engagement in OI for both collaborating parties and third parties. The present paper examines the current IP framework for coupled OI processes in great depth. In addition, this paper reviews recent legislative initiatives to improve legal certainty and transparency, both at the national and EU level, and lists a number of potential legislative measures that could be imposed to further strengthen the legislative framework