When Ideas Collide: Navigating Joint Ownership of Intellectual Property 

Intellectual Property (IP) can arise in various shapes and sizes. Understanding the various forms of IP is useful for considering who and how your IP is owned and can be used. In business, it is common for multiple parties to desire the rights in certain IP. The following is an overview of the rules of joint ownership of IP for the distinct types of IP. 

Trade Marks 

Under the Trade Marks Act 1994, a UK registered trademark can be co-owned by two or more parties via the Intellectual Property Office. If the trade mark application is successful, the parties will each be a co-owner of the trade mark. In such circumstances, each co-owner holds an equal, undivided share in the trademark. This means each owner can use the trade mark independently for their benefit, without needing to account to the other owners.  However, they shall only be able to assign or licence their rights provided they seek the consent of all other co-owners. 

Although this arrangement can foster collaboration and resource pooling, allowing different parties to benefit from shared intellectual property, co-ownership of a trademark does have potential downsides. Each co-owner has a vested interest in being able to control use of the trademark and therefore certain parties may be restricted. Moreover, having multiple owners reduces the ability for your business to be recognised through use of the trade mark.  

Patents 

Similarly to trade marks, it is common for patents for inventions to be co-owned by co-inventors who applied together. Each is entitled to an equal, undivided share of the patent or application, and each co-owner may work the patent for their own benefit. However, they may not licence, assign, or mortgage their share in the patent without the other co-owners’ consent. 

Copyright 

In the rules of copyright, the first owner of copyright is generally the person who creates a work. If two or more people collaborate in creating a single work, the joint creators will become joint owners. If those in collaboration produce separate, distinct contributions in the same works then there are multiple copyright works, and each creator will have separate rights. In turn, this would require an agreement to determine certain matters such as royalties. 

Registered Designs 

Certain businesses may wish to register their designs should they meet the necessary requirements. Registration of designs can provide additional rights and protection. Two or more parties can be joint owners of the design. It is advisable for joint-owners in a registered design to draft an agreement which is water-tight in setting out each parties’ rights and obligations in their use of the design. 

The Benefits and Burdens of Joint Ownership 

A joint ownership arrangement can offer several advantages and disadvantages depending on the specific circumstances. By collaborating with additional parties, it nurtures shared expertise and resources including collaborative innovation and a shared financial burden. However, the relationship can ask cause decision-making complexities such as where there may be conflicts of interest as well as limiting each party’s control over the IP’s exploitation. 

To avoid these disadvantages, joint owners should have a well-drafted agreement in place that clearly defines: 

  1. The ownership shares and rights of each party. 
  2. The procedures for making decisions related to licensing, assignment, and enforcement. 
  3. How profits will be shared. 
  4. How disputes will be resolved. 

Having a comprehensive agreement can significantly reduce the risks and complications associated with joint ownership of the relevant IP.

Email: commercial@berrysmith.com
Phone: 02920 345511

For more insights check out our news here
Follow us on Linkedin