F.8 The public sector body will need to clarify in the JV Agreement and/or IPR agreements the position in relation to new IPRs created in the future by either the JV, the public sector body or any of the JV partners in connection with the JV.
Future IPRs created by the JV: The options are set out in the Table F.1 below.
Options | Comments |
Owned by the JV | Does the public sector body or any other shareholder want a right to use IPRs in particular sectors? What will be the terms of the licence to use? If not possible to agree terms now, should public sector/other shareholders have an option to call for a licence? What is to happen to the IPR/licence to use on any winding up of the JV? |
Owned jointly by the shareholders | In the UK IPRs can be jointly owned. This is not the case in all jurisdictions. Unless joint owners have set out express obligations in relation to the IPR, a joint owner can only use and exploit the IPR in the course of its own business. There is no right to exploit the IPR through third parties. If joint ownership is chosen, suitable cross licensing provisions will need to be drafted between all the shareholders to deal with exploitation rights and maintaining the IPRs. This option is potentially complicated and should be avoided if possible. |
Owned by one of the shareholders | The JV will need a licence to use the IPRs Will any of the other shareholders be able to use the IPRs? If so under what terms? What will be the position if the owning shareholder leaves the JV? |
Future IPRs created by a shareholder: If a shareholder creates IPRs which are relevant to the JV, consideration will be needed on how these IPRs will be made available to the JV, whether the IPRs should be licensed to the JV and if so on what terms, or whether the JV should have an option to acquire the rights. This may vary depending on whether the new IPR is created on the back of the existing IPR or not.