SAMPLE JOINT IP OWNERSHIP CLAUSES

For educational and informational purposes only. Not intended to be construed as legal advice.

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The capitalized terms used, but not defined, below are purposeful

so that you may use the definition section of your “favorite” relevant agreement.

Option 1: All Activities Are Truly Done Jointly

1. Company-A New Intellectual Property. All Intellectual Property made, developed, conceived, first

reduced to practice, fixed in any tangible medium of expression, or created independently by Company-

A, without any contribution from Company-B of any kind during the term of this Agreement (“Company-

A New Intellectual Property”), will be the sole and exclusive property, including the entire right, title and

interest of Company-A.

2. Company-B New Intellectual Property. All Intellectual Property made, developed, conceived, first

reduced to practice, fixed in any tangible medium of expression, or created independently by Company-

B without any contribution from Company-A of any kind during the term of this Agreement (“Company-B

New Intellectual Property”), will be the sole and exclusive property, including the entire right, title and

interest, of Company-B.

3. Joint Intellectual Property. All Intellectual Property jointly made, developed, conceived, first

reduced to practice, fixed in any tangible medium of expression or created by Company-A and Company-

B during the term of this Agreement (“Joint Intellectual Property”), will be the joint property of and the

entire right, title and interest is hereby assigned jointly to Company-A and Company-B, and each party

may enjoy all rights and privileges accorded ownership of such joint property without accounting to the

other.

4 Assignment of Joint Intellectual Property. Each party hereby assigns and agrees to assign to the

other party, or its designees, an undivided one-half its full right, title and interest in and to all Joint

Intellectual Property. Each party agrees that, during the term of this Agreement and subsequent to the

completion or termination of this Agreement, they will, at the other party’s request and expense, execute

any and all applications for U.S and foreign patents, copyrights or other rights and otherwise provide

assistance (including, but not limited to, the execution and delivery of instruments of further assurance

or confirmation) to assign an undivided one-half interest in said Joint Intellectual Property to the other

party and to permit the other party to enforce any patents, copyrights or other rights in and to said subject

intellectual property. All copyrightable works that are created pursuant to performance under this

Agreement shall be considered “works made for hire” as defined by U.S. Copyright Law.

5. Filings. The parties agree not to file any patent, trademark, or copyright applications relating to

Joint Intellectual Property, without first notifying the other party.

For educational and informational purposes only. Not intended to be construed as legal advice.

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6. Disclosure. Each of the parties shall promptly and fully disclose to the other party all Joint

Intellectual Property and shall identify and maintain records of Joint Intellectual Property, and a copy of

all such records shall be promptly provided to the other party. Such records shall be considered

Confidential Information and subject to Section [x] of this Agreement.

7. Transfer, Assignment and Waiver. Each of the parties represents, warrants and covenants that

any Joint Intellectual Property will be created solely by their respective Personnel acting within the scope

of their employment, or under a written independent contractor agreement assigning Intellectual

Property rights.

8. Moral Rights. With respect to Joint Intellectual Property that qualifies as original works of

authorship under the copyright laws (either U.S. or foreign), if any moral rights (either U.S. or foreign) are

created, each party hereby waives and shall cause its Personnel to waive such rights in the Joint

Intellectual Property.

9. Joint Prosecution. Each party agrees to perform all acts that the other party may reasonably

request to assist in obtaining the full benefits, enjoyment, rights, title, and interest in the United States

and throughout the world, in the Joint Intellectual Property. Such acts shall include, without limitation,

execution of documents, assistance in the prosecution of patents, copyrights, trademarks, and trade

secrets. The parties shall each bear their own expenses under this Section 9.

10. Attorneys-in-Fact. In the event that a party is unable to secure the signature of the other party,

any of its Personnel, or its other legal representative, to any lawful document required to apply for or

enforce any of Joint Intellectual Property, for whatever reason, each party hereby irrevocably appoints

the other party and its duly authorized officers and agents as the other party’s agents and attorneys-in-

fact to apply for or enforce Joint Intellectual Property with the same legal force and effect as if executed

by the other party, its Personnel, or its other legal representative.

11. Joint Enforcement. Upon learning of any infringement of Joint Intellectual Property, from any

source, the parties shall first determine if they desire to jointly take action to suppress or eliminate such

infringement. If the parties decide to take such action jointly, the parties agree that they will share equally

in the expenses related to such actions, and share equally in any recovery as a result of such action.

[Company-A shall have the sole right to direct such joint action.] In the event that either party decides not

to participate in such action, the other party shall have sole discretion to take whatever action it

determines is necessary or appropriate under the circumstances, including without limitation legal action

to suppress or eliminate any such infringement, at the acting party’s expense. The non-acting party agrees

to cooperate with the acting party in such action and the acting party agrees that it will reimburse the

non-acting party’s reasonable and actual expenses incurred in such action. The acting party retains all

recovery from such action.

12. Arbitration. The parties agree to arbitrate any dispute or controversy regarding whether

intellectual property should be considered Joint Intellectual Property, Company-A New Intellectual

Property or Company-B New Intellectual Property under the Arbitration Rules of the American Arbitration

For educational and informational purposes only. Not intended to be construed as legal advice.

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Association, and any resulting award or judgment shall be binding and non-appealable and shall be

entered in any court of competent jurisdiction to enforce it.

Option 2: One Party Has the Option to Take the Lead

1. Except as specifically provided herein, each Party owns and retains all right, title and interest,

worldwide, in any and all of its Intellectual Property preexisting before the effective date of this

Agreement (“Background IP”).

2. Company-A shall own and retain ownership of any data, information, derivative works, work

product or other Intellectual Property it creates, without any contribution from Company-B of any

kind, hereunder (“Company-A IP”).

3. Company-B, subject to the licenses described herein, shall own and retain ownership of any data,

information, derivative works, work product or other Intellectual Property it creates, without any

contribution from Company-A of any kind, hereunder (the “Company-B IP”).

4. All Intellectual Property jointly made, developed, conceived, first reduced to practice, fixed in any

tangible medium of expression or created by Company-B and Company-A under this Agreement

(“Joint IP”), shall be the joint property of the Parties.

5. Each of the Parties represents, warrants and covenants that any Joint IP will be created solely by

their respective Personnel acting within the scope of their employment, or under a written

independent Company-B agreement assigning Intellectual Property rights.

6. With respect to Joint IP that qualifies as original works of authorship under the copyright laws

(either U.S. or foreign), if any moral rights (either U.S. or foreign) are created, each Party hereby

waives and shall cause its Personnel to waive such rights in the Joint IP.

7. Company-A shall have the right to adopt and use its own trademarks, trade dress and identifying

information to be used in association with any Joint IP or Company-A IP. Except as expressly

provided for in this Agreement, neither Party grants to the other any rights to use its trade names,

trademarks, service marks, logos or designations (each a “Mark” and collectively the “Marks”) in

connection with exploiting Joint IP. Any license to Marks shall only be granted pursuant to a

separate trademark license mutually agreed by the Parties.

8. Each Party agrees to and hereby assigns to the other Party, or its designees, an undivided one-half

of its full right, title and interest in and to all Joint IP. Each Party agrees that, during the term of this

Agreement and subsequent to the completion or termination of this Agreement, they will, at the

other Party’s request and expense, execute any and all applications for U.S and foreign patents,

copyrights or other rights and otherwise provide assistance (including, but not limited to, the

execution and delivery of instruments of further assurance or confirmation) to assign an undivided

one-half interest in said Joint IP to the other Party and to permit the other Party to enforce any

patents, copyrights or other rights in and to said subject Intellectual Property.

For educational and informational purposes only. Not intended to be construed as legal advice.

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9. Each of the Parties shall promptly and fully disclose to the other Party all Joint IP and shall identify

and maintain records of Joint IP, and a copy of all such records shall be promptly provided to the

other Party. Such records shall be considered Confidential Information hereunder.

10. For each Joint IP identified hereunder:

a. The Parties agree not to file any patent, trademark or copyright applications relating to

such Joint IP, without first notifying the other Party.

b. Company-A shall have the first right, but not be obligated to, file, prosecute and control

any and all patent applications for such Joint IP and control any action or proceeding to

restrain infringement of any resulting patents at its sole expense (the “Company-A Joint

IP Option”). Company-A agrees to pay a reasonable exclusive license royalty to Company-

B to be negotiated in good faith for such sole use and control of such Joint IP. Any

exclusive license to such Joint IP granted to Company-A pursuant to this paragraph, shall

include at least the following terms: (i) a reasonable and customary running royalty on

net sales from licensed products and services based upon at least Company-B’s

contribution to the Joint IP and not to exceed [x]%; and (ii) the right to grant sublicenses.

c. Should Company-A not exercise the Company-A Joint IP Option: (i) the Parties shall share

equally in the expenses to file and prosecute any and all patent applications for such Joint

IP; and (ii) either Party will be free to treat, exploit or dispose of any such Joint IP as it

sees fit, including, but not limited to, the right to make, have made, use, offer for sale, sell

or otherwise distribute, perform and display, reproduce, modify, make derivative works

of, combine with such Party’s other products, electronically transfer, import and export,

such Joint IP without a duty to account or pay any royalties to the other Party.

d. In the event that Company-A does not exercise the Company-A Joint IP Option and either

Party declines to share the cost of patenting, the other Party may continue to pursue

patent prosecution at its sole expense, subject to the following: (i) if the non-paying Party,

later assigns, licenses or otherwise transfers any of its rights in such Joint IP to a third

party, such non-paying Party shall pay the other Party a royalty of [y]% of the gross

compensation received for such transfer of rights; and (ii) for a period of [z] months from

the date such Joint IP is identified, neither Party will assign, license or otherwise transfer

any of its rights in such Joint IP to a third party and either Party will have a no-cost option

to elect to negotiate, subject to a reasonably-negotiated royalty and terms, the purchase

or exclusive license of the other Party’s ownership rights in such Joint IP, to the extent

permitted by law. For clarity, Company-A’s standard commercialization or licensing to

customers of Company-A products or services incorporating Joint IP shall not be

considered a third-party assignment, license or transfer of the rights of Company-A in the

Joint IP.

For educational and informational purposes only. Not intended to be construed as legal advice.

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11. In the event that a Party is unable to secure the signature of the other Party, any of its Personnel,

or its other legal representative, to any lawful document required to apply for or enforce any of

Joint IP, for whatever reason, each Party hereby irrevocably appoints the other Party and its duly

authorized officers and agents as the other Party’s agents and attorneys-in-fact to apply for or

enforce Joint IP with the same legal force and effect as if executed by the other Party, its Personnel,

or its other legal representative.

12. If Company-A does not exercise the Company-A Joint IP Option, then: (i) upon learning of any

infringement of Joint IP, from any source, the Parties shall first determine if they desire to jointly

take action to suppress or eliminate such infringement; (ii) if the Parties decide to take such action

jointly, the Parties agree that they will share equally in the expenses related to such actions, and

share equally in any recovery as a result of such action; (iii) Company-A shall have the sole right to

direct such joint action; (iv) in the event that either Party decides not to participate in such action,

the other Party shall have sole discretion to take whatever action it determines is necessary or

appropriate under the circumstances, including without limitation legal action to suppress or

eliminate any such infringement, at the acting Party’s expense; (v) the non-acting Party agrees to

cooperate with the acting Party in such action and the acting Party agrees that it will reimburse the

non-acting Party’s reasonable and actual expenses incurred in such action; and (vi) the acting Party

shall retain any recovery from such action.

13. The Parties agree to arbitrate any dispute or controversy regarding whether Intellectual Property

should be considered Joint IP, Company-A IP or Company-B IP under the Arbitration Rules of the

International Arbitration Association, and any resulting award or judgment shall be binding and non-

appealable and shall be entered in any court of competent jurisdiction to enforce it.