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Patent Co Ownership Agreement

Patent Co Ownership Agreement Template for Canada

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Key Requirements PROMPT example:

Patent Co Ownership Agreement

"I need a Patent Co-Ownership Agreement between our biotech company and a university research center, with specific provisions for academic publication rights and a 60-40 revenue split in favor of our company, while ensuring joint decision-making on patent prosecution."

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Document background
The Patent Co-Ownership Agreement is essential when multiple parties share ownership rights in a patent or patent application in Canada. This document becomes necessary when a patentable invention results from collaborative research, joint development projects, or when patent rights are partially transferred. It addresses crucial aspects including ownership percentages, patent prosecution responsibilities, commercialization strategies, and revenue sharing mechanisms. The agreement must comply with Canadian federal patent legislation and relevant provincial commercial laws. It's particularly important for establishing clear decision-making processes and preventing future disputes between co-owners regarding patent exploitation and management.
Suggested Sections

1. Parties: Identification of all co-owners entering into the agreement

2. Background: Context of the patent and how the co-ownership arrangement came about

3. Definitions: Defined terms used throughout the agreement

4. Ownership Rights: Specification of ownership percentages and rights of each party

5. Patent Prosecution and Maintenance: Responsibilities for patent prosecution, maintenance fees, and related costs

6. Decision Making: Process for making decisions regarding the patent, including voting rights

7. Commercialization Rights: Terms for commercial exploitation of the patent, including licensing to third parties

8. Revenue Sharing: Distribution of revenues from patent exploitation

9. Improvements: Rights and obligations regarding improvements to the patented invention

10. Enforcement: Procedures for enforcing patent rights against infringers

11. Confidentiality: Obligations to maintain confidentiality of patent-related information

12. Assignment and Transfer: Rules for transferring ownership interests to third parties

13. Term and Termination: Duration of the agreement and termination provisions

14. Governing Law: Applicable law and jurisdiction

15. General Provisions: Standard boilerplate clauses including notices, amendments, etc.

Optional Sections

1. Right of First Refusal: Gives co-owners priority rights to purchase another co-owner's share if they wish to sell

2. Geographic Territories: Used when different co-owners have rights to different geographic markets

3. Field of Use Restrictions: When co-owners agree to exploit the patent in different technical fields or applications

4. Patent Portfolio Management: For situations involving multiple related patents or patent families

5. Research and Development: When ongoing R&D collaboration is part of the co-ownership arrangement

6. Government Rights: When the patent resulted from government-funded research

7. Academic Use Rights: When one or more co-owners are academic institutions

8. Dispute Resolution: Specific procedures for resolving disputes between co-owners

Suggested Schedules

1. Schedule A - Patent Details: Detailed description of the patent(s), including application numbers, registration numbers, and jurisdictions

2. Schedule B - Ownership Percentages: Detailed breakdown of ownership shares and any special voting rights

3. Schedule C - Revenue Sharing Formula: Detailed calculations for revenue distribution among co-owners

4. Schedule D - Patent Prosecution Procedures: Specific procedures for handling patent prosecution decisions and costs

5. Schedule E - Commercialization Plan: Initial plan for commercial exploitation of the patent

6. Appendix 1 - Contact Information: Key contacts for each co-owner for various types of notices and decisions

7. Appendix 2 - Decision Making Procedures: Detailed procedures for different types of decisions and required approvals

Authors

Alex Denne

Head of Growth (Open Source Law) @ Genie AI | 3 x UCL-Certified in Contract Law & Drafting | 4+ Years Managing 1M+ Legal Documents | Serial Founder & Legal AI Author

Linkedin in social icon imageX social icon image
alex.den.21@genieai.co
Relevant Industries

Biotechnology

Pharmaceutical

Information Technology

Manufacturing

Chemical

Engineering

Electronics

Medical Devices

Clean Technology

Aerospace

Automotive

Research & Development

Academic Research

Relevant Teams

Legal

Intellectual Property

Research & Development

Technology Transfer

Business Development

Innovation

Corporate Development

Licensing

Patents

Scientific Affairs

Relevant Roles

Intellectual Property Counsel

Patent Attorney

Legal Counsel

Research Director

Chief Technology Officer

Innovation Manager

Technology Transfer Manager

Research & Development Manager

Business Development Director

Chief Scientific Officer

Patent Manager

Commercialization Director

Corporate Counsel

Vice President of Research

Licensing Manager

Industries
Patent Act (R.S.C., 1985, c. P-4): Federal legislation governing patent rights in Canada, including provisions for ownership, transfer of rights, and licensing of patents. This is crucial for establishing the fundamental framework of patent co-ownership.
Competition Act (R.S.C., 1985, c. C-34): Federal legislation that ensures patent co-ownership arrangements don't create anti-competitive practices or monopolistic situations in the market.
Commercial Law (Various Provincial Statutes): Provincial laws governing commercial transactions and business relationships, which will affect how the co-ownership is structured and managed.
Provincial Contract Law: Laws governing contract formation, enforcement, and remedies in the relevant province, as patent co-ownership agreements are fundamentally contracts.
Personal Property Security Act (Provincial): Relevant for any security interests that might be created in the patent rights, particularly if the co-ownership agreement involves financing or collateral arrangements.
Teams

Employer, Employee, Start Date, Job Title, Department, Location, Probationary Period, Notice Period, Salary, Overtime, Vacation Pay, Statutory Holidays, Benefits, Bonus, Expenses, Working Hours, Rest Breaks,  Leaves of Absence, Confidentiality, Intellectual Property, Non-Solicitation, Non-Competition, Code of Conduct, Termination,  Severance Pay, Governing Law, Entire Agreemen

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