©2016 by Raymond Millien, Esq.
For educational and informational purposes only. Not intended to be construed as legal advice.
Page 3 of 5
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.