Stephan Bank

The topic of this panel on international joint ventures and intellectual property focuses on specific questions that arise when two or more parties from different jurisdictions join forces to set up a common international project as a joint venture, and one or more of such partners contributes a part of its IP to the intended collaboration. The discussion will focus on the panelists’ practical experience with respect to IP at the different stages of a joint venture, from (1) the pre-contractual stage (confidentiality agreement, term sheet, due diligence), over (2) the formation and contribution stage (assignment and licensing of existing background IP, terms of transfer, reps and warranties), to (3) the operation stage (future contribution of existing and future background IP, ownership and exploitation of foreground IP, maintenance and protection of background and foreground IP) and, eventually, (4) the termination stage (fallback of background IP, division of foreground IP). Against this background, the discussion will touch upon the key topic and experiences on the different stages of a joint venture, the pain points for the parties involved, the mechanisms that should be implemented at each stage to adequately protect IP, the contentious provisions in the agreements for a joint venture and usual IP-related showstoppers in negotiations. We hope that the panelists will share some of the highlights of their practice with respect to IP in international joint ventures and present their view on the dos and don’ts , i.e., what items are critical for the success or failure of a joint venture project which involves IP.