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  • 9 - Development, Allocation and Management of IP

  • from Part II - License Building Blocks
  • Jorge L. Contreras, University of Utah
  • Book:
    Intellectual Property Licensing and Transactions
    Published online:
    21 June 2022
    Print publication:
    30 June 2022, pp 248-279
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  • Summary

    Chapter 9 explores the many situations in which new IP is developed under a licensing or other agreement, and how that IP is owned and licensed. Attention is given both to licensee developments (improvements and derivative works of licensed rights), which may be subject to grantback and license-back arrangements (Kennedy v. NJDA) and new IP developed by a licensor under a services arrangement (e.g., commissioned works, customizations) (IXL v. AdOutlet) and the incorporation of third party components in developed technologies. The chapter also addresses the complex issues that arise from joint development of IP, including treatment of foreground, background and sideground IP, and how IP is used in the context of joint ventures (Pav-Saver v. Vasso). The chapter concludes with a discussion of the allocation of responsibility for IP management, maintenance and prosecution.