Document type: Toolkit Practice area: Intellectual Property — Technology Transactions Jurisdiction: United States Last reviewed: 5 September 2026

Tool 1 — Background IP schedule

SCHEDULE [1] — [PARTY A] BACKGROUND INTELLECTUAL PROPERTY

A. Patents and applications

Ref Jurisdiction Number Title Status Relevant to

B. Know-how and trade secrets

Ref Description (category level) Form Custodian
A-KH-1 Polymer curing process parameters Written procedures, process data R&D

C. Software

Ref Name Description Third-party / open source components Licence

D. Materials and biological materials

Ref Description Restrictions on use

E. Data

Ref Description Source Restrictions

F. Third-party rights. Party A confirms that the Background IP listed above is [owned by Party A / licensed to Party A under the agreements listed below], and that Party A has the right to grant the licences contemplated by the Agreement in respect of each item, except as noted:

Ref Restriction

Procedure for additions. Either party may request confirmation whether a specified item constitutes Background IP of the other. Confirmation shall not be unreasonably withheld and shall be given within [10] Business Days.

Annotations.

  • This schedule is tedious and it is the most valuable annex in the agreement. A dispute about whether something was background or foreground is a dispute about ownership.
  • Section C's third-party and open source column is what a diligence reviewer looks for first in a software collaboration.
  • Section F is the one parties omit, and it is where a conflicting exclusive licence or an upstream field restriction surfaces — ideally before signing rather than after.
  • The additions procedure handles the reality that no schedule is complete, and it converts a future dispute into a ten-day process.

Tool 2 — Field of use definition

"Medical Field" means the development, manufacture, use, sale, offer for sale, or importation of any product or process (a) intended for implantation into the human body; (b) intended for contact with human tissue, blood, or other bodily fluids for a continuous period exceeding [24] hours; or (c) regulated as a medical device or a combination product by any Regulatory Authority in any country.

For the avoidance of doubt, the Medical Field expressly EXCLUDES: (i) veterinary applications; (ii) laboratory, research, and analytical instrumentation not intended for contact with human tissue; (iii) food-contact and food-processing applications; (iv) personal care and cosmetic applications not regulated as medical devices; and (v) industrial process applications.

"Industrial Field" means every use other than the Medical Field.

Overlap. Where any Foreground IP is applicable to both Fields, it shall be owned by [Party] and licensed to [the other] on the terms of Section [__], and the Parties shall jointly prosecute the relevant applications, each bearing [50]% of the costs.

Characterization. Any question whether particular Foreground IP, or any product, falls within a Field shall be referred to the Joint IP Committee. If the Committee does not resolve it within [30] days, either Party may refer it to an independent expert appointed under Section [__].

Annotations.

  • Define on multiple axes — application, duration of contact, and regulatory classification — because any single axis leaves gaps.
  • The exclusions paragraph is the one that prevents litigation. Name the adjacent applications the parties will otherwise argue about: veterinary, research, food contact, and cosmetics are the recurring ones in this example, and every industry has its own.
  • Test the definition against three plausible future products, with the engineers, before signing.
  • The characterization mechanism matters because no definition covers everything, and an expert resolves in weeks what litigation resolves in years.

Tool 3 — Ownership allocation, three alternatives

Alternative A — sole ownership with a licence:

Ownership. All Foreground IP shall be owned solely by [Party A]. [Party B] hereby assigns to [Party A] all right, title, and interest in and to any Foreground IP that would otherwise vest in it, and shall cause its personnel to execute such documents as are necessary to perfect such assignment.

Licence. [Party A] grants [Party B] an exclusive [or non-exclusive], perpetual, irrevocable, worldwide, royalty-free, sublicensable licence under the Foreground IP in the [B] Field, to make, have made, use, sell, offer for sale, and import products and processes. This licence survives expiration or termination of this Agreement for any reason other than [Party B]'s uncured material breach.

Alternative B — field of use:

Ownership. Foreground IP shall be owned by [Party A] to the extent applicable to the Industrial Field and by [Party B] to the extent applicable to the Medical Field, regardless of which Party's personnel are inventors or authors. Each Party hereby assigns to the other such right, title, and interest as is necessary to give effect to this allocation, and shall cause its personnel to execute such documents as are necessary.

Cross-licences. Each Party grants the other an exclusive, perpetual, irrevocable, worldwide, royalty-free, sublicensable licence under the Foreground IP it owns, in the Field owned by the other, to make, have made, use, sell, offer for sale, and import. These licences survive termination other than for the licensee's uncured material breach.

Alternative C — subject matter:

Ownership. Foreground IP shall be owned as follows: (a) Foreground IP that constitutes an improvement to, or is dominated by, a Party's Background IP shall be owned by that Party; (b) all other Foreground IP shall be owned by [Party / jointly, subject to Section __].

Characterization. Whether particular Foreground IP falls within clause (a) shall be determined by the Joint IP Committee, and failing agreement within [30] days, by an independent expert under Section [__].

Cross-licences. [As in Alternative B.]

Annotations.

  • Alternative A is the cleanest and produces the best diligence position. Use it where one party is clearly the technology owner.
  • Alternative B requires the field definitions to hold, which is why Tool 2 warrants the effort.
  • Alternative C requires the characterization mechanism to work, which is why the expert determination clause is not optional.
  • The assignment language in each is essential. Allocation without assignment leaves ownership where the law puts it — with the inventor's employer — regardless of what the parties agreed.
  • Note the "regardless of which Party's personnel are inventors" in Alternative B. Without it, the allocation and the inventorship analysis produce different answers.

Tool 4 — Exploitation licence to background IP

The provision that determines whether the allocation is worth anything.

Background Licence for Exploitation. Each Party (the "Licensor") hereby grants the other (the "Licensee") a non-exclusive [or exclusive in the Licensee's Field], perpetual, irrevocable, worldwide, royalty-free [or royalty-bearing at the rate in Schedule __], sublicensable (through multiple tiers) licence under the Licensor's Background IP, solely to the extent necessary to make, have made, use, sell, offer for sale, import, and otherwise exploit products and processes embodying Foreground IP owned by the Licensee, in the Licensee's Field.

Survival. This licence survives the expiration or termination of this Agreement for any reason, other than termination by the Licensor for the Licensee's uncured material breach [and, in such case, shall convert to a non-exclusive licence at a royalty of [__]%].

Third-party components. To the extent the Licensor's Background IP incorporates third-party rights, the Licensor shall use commercially reasonable efforts to procure equivalent rights for the Licensee, or shall disclose the limitation on Schedule [__].

Improvements. [Improvements to a Party's Background IP made during the Term shall be owned by that Party and included in this licence / shall constitute Foreground IP allocated under Section [__].]

Annotations.

  • Without this provision, a party may own foreground IP it cannot practise, because practising it requires the other's underlying technology. That is owning nothing.
  • "Solely to the extent necessary" is the limit that makes the grant acceptable to the licensor — it is not a general licence to the background technology.
  • "Have made" and sublicensing through multiple tiers matter for a party that will use contract manufacturers or a distribution chain.
  • The survival clause is the whole point, and the bracketed conversion to a royalty-bearing non-exclusive licence on breach is the compromise that gets it agreed.
  • The third-party components paragraph surfaces the limitation before it matters.

Tool 5 — Co-ownership agreement (where the parties genuinely want it)

Section 262 permits agreement to the contrary. Every default must be addressed.

Co-Ownership. The Parties shall be joint owners of the Joint Patents, each holding an undivided [50]% interest. The following provisions apply notwithstanding 35 U.S.C. § 262 and any similar law:

(a) Practice. Each Party may practise the Joint Patents without accounting to the other.

(b) Licensing. Neither Party may grant any licence under any Joint Patent without the other's prior written consent, which shall not be unreasonably withheld [except that each Party may grant licences within its own Field without consent].

(c) Revenue sharing. Net revenue from any licence of a Joint Patent shall be shared [50/50] after deduction of the licensing Party's reasonable out-of-pocket costs, with quarterly reporting and audit rights.

(d) Enforcement. If either Party wishes to enforce a Joint Patent, the other shall, at the enforcing Party's cost, join as a party plaintiff and provide reasonable cooperation, and shall not withhold consent to such joinder. The enforcing Party shall control the action and bear the costs, and shall share any recovery [50/50] after reimbursement of its costs. This obligation to join is specifically enforceable.

(e) Defence. The Parties shall consult on any challenge to a Joint Patent and shall share the costs of defence [50/50]; a Party declining to share shall have no right to participate.

(f) Prosecution. [Party A] shall control prosecution, using counsel acceptable to both, and shall provide the other with copies of all correspondence and a reasonable opportunity to comment before any substantive filing. Costs shared [50/50].

(g) Abandonment. A Party wishing to cease funding prosecution or maintenance in any jurisdiction shall give [60] days' notice, and the other may assume sole funding, whereupon the abandoning Party shall assign its interest in that jurisdiction to the other.

(h) Transfer. Neither Party may assign its interest in any Joint Patent except (i) to an Affiliate, or (ii) in connection with a sale of the business to which it relates, and in each case only if the transferee agrees in writing to be bound by this Section. Any other transfer requires the other Party's consent, and each Party has a right of first refusal exercisable within [30] days.

(i) Administration. Maintenance fees, marking, and inventor remuneration shared [50/50].

Annotations.

  • Clause (d) is the one without which the patent is unenforceable, and Ethicon, Schering, and STC.UNM are why. Make it specifically enforceable.
  • Clause (b) is the one that prevents a co-owner from licensing the other's competitor — the default permits exactly that, with no accounting.
  • Clause (g) prevents a patent being abandoned by default because one party lost interest.
  • Clause (h) prevents a co-ownership interest reaching a hostile third party through a transaction.
  • Co-ownership with all nine clauses is workable. Co-ownership without them is the failure this toolkit exists to prevent.

Tool 6 — Invention disclosure form

INVENTION DISCLOSURE — Project [__]

1. Title: ______ Disclosure date: ______ Disclosure no.: ______

2. Description of the invention. [Technical description sufficient to understand what is new.]

3. Problem solved and prior approaches.

4. Date of conception: ______ Evidence: [notebook reference, email, meeting minutes] 5. Date of first written description: ______ 6. Date of first reduction to practice (if any): ______

7. CONTRIBUTORS. For each person who contributed to the conception, state what they contributed. This section determines inventorship and therefore ownership.

Name Employer What this person conceived or contributed Date Contribution to which aspect

8. Persons who assisted but did not contribute to conception (built, tested, supervised, funded, or explained known art):

Name Employer Role

9. Background IP used. [Reference the Schedule items relied on.]

10. Allocation. Under Section [__], this invention appears to fall within: ☐ [A] Field ☐ [B] Field ☐ Both ☐ Improvement to [A] Background IP ☐ Improvement to [B] Background IP ☐ Uncertain — refer to Committee

11. Public disclosure. Has this been disclosed, published, offered for sale, or used publicly? ☐ No ☐ Yes — date and circumstances: ______

12. Recommendation. ☐ File patent application ☐ Maintain as trade secret ☐ Publish defensively ☐ Take no action

Submitted by: ______ Reviewed by Committee on: ______

Annotations.

  • Section 7 is the point of the form. Inventorship disputes are decided on contemporaneous evidence of who conceived what, and this table created at the time is worth more than any later reconstruction.
  • Section 8 is equally important, because it records the people who are not inventors and why — building, testing, supervising, and funding do not confer inventorship.
  • Section 11 catches the bar dates before they are missed.
  • Section 10 forces the allocation question at the moment the facts are fresh.

Tool 7 — Joint IP committee charter

1. Purpose. To manage intellectual property arising from the Project.

2. Composition. [Two] representatives from each Party, at least one of whom shall be technical. Patent counsel for each Party may attend.

3. Meetings. Monthly during the Development Period and quarterly thereafter, and at any time on [10] days' notice from either Party.

4. Standing agenda. (a) New invention disclosures since the last meeting (b) Inventorship determination for each, with counsel's analysis recorded (c) Ownership allocation under Section [__], and any characterization questions (d) Filing decisions: whether, where, who prosecutes, who pays (e) Prosecution review — any pending amendment that may affect inventorship or allocation (f) Third-party developments and freedom-to-operate (g) Patent versus trade secret decisions (h) Publication requests and the review clock

5. Decisions. By unanimous agreement of the representatives. Failing agreement within [30] days, either Party may refer the matter to an independent expert under Section [__], or, for filing decisions, may proceed at its own cost, in which case [state the consequence].

6. Minutes. Prepared by [Party A] and circulated within [10] Business Days. Minutes shall record the inventorship and allocation determinations and their bases.

Annotation. Item 4(e) is the discipline that matters most and is most often neglected. A claim amended during prosecution to incorporate the other party's contribution creates co-inventorship, and therefore co-ownership, in a patent that was solely owned. Patent counsel must flag every substantive amendment before filing, and the minutes must record the review.

Tool 8 — Expert determination clause

Expert Determination. Any dispute concerning (a) whether particular Foreground IP or a product falls within a Field, (b) whether Foreground IP constitutes an improvement to a Party's Background IP, or (c) whether particular information constitutes Background IP, shall be referred to an independent expert.

Appointment. The Parties shall agree an expert within [10] Business Days, failing which either may request appointment by [naming body], who shall appoint a person with not less than [ten] years' experience in [the relevant technical field] and no material relationship with either Party.

Procedure. Each Party may make one written submission of not more than [20] pages within [15] Business Days, and one reply of not more than [10] pages within a further [10] Business Days. The expert may request further information and may meet with the Parties' technical personnel. The expert shall issue a reasoned written determination within [30] days of the final submission.

Effect. The determination is final and binding, absent manifest error, and is not an arbitration.

Costs. Shared equally, unless the expert determines otherwise. Each Party bears its own costs of participation.

Interim. Pending determination, the Parties shall continue to perform, and neither shall take any action inconsistent with either possible outcome in respect of the disputed IP.

Annotations.

  • These are technical questions with technical answers, and an expert resolves them in six to eight weeks. Litigation takes years and produces a worse answer from a decision-maker with no technical background.
  • The page limits and timetable are what make it fast. Without them, an expert determination becomes a small arbitration.
  • The final paragraph prevents a party from creating facts on the ground while the determination is pending.

Tool 9 — Present assignment language

For employees:

Assignment. Employee hereby assigns, and agrees to assign, to Company Employee's entire right, title, and interest in and to all Inventions, whether or not patentable, that Employee conceives, develops, or reduces to practice, alone or with others, during the period of employment and that (a) relate to the Company's business or actual or demonstrably anticipated research or development, (b) result from work performed for the Company, or (c) are developed using the Company's equipment, supplies, facilities, or Confidential Information. This assignment is effective as of the moment of conception without further act, and Employee shall execute such documents as the Company requests to perfect and record it.

[Where required by state law, include the statutory notice regarding inventions developed entirely on the employee's own time without company resources and unrelated to company business.]

For contractors and consultants:

Assignment. Contractor hereby assigns to Company all right, title, and interest in and to all Work Product and all intellectual property rights therein. To the extent any Work Product constitutes a work made for hire, it is a work made for hire; to the extent it does not, Contractor hereby assigns it. Contractor shall cause each of its personnel to execute an agreement containing equivalent present assignment language, and shall provide copies on request.

For secondees:

Inventions. Any Invention conceived by the Secondee during the Secondment and arising from the Project shall be owned as provided in Section [__] of the Development Agreement. The Secondee hereby assigns to [Home Employer] all right, title, and interest in and to such Inventions, and [Home Employer] shall give effect to the allocation in the Development Agreement. The Secondee shall promptly disclose all such Inventions to both Parties in accordance with the disclosure procedure.

Annotations.

  • "Hereby assigns" effects a present transfer of future inventions; "agrees to assign" is a promise that may lose to an intervening present assignment. FilmTec and Stanford v. Roche make the distinction dispositive, and Omni MedSci shows that a policy statement of intended ownership is not an assignment at all.
  • The contractor provision's belt-and-braces structure — work made for hire where it applies, present assignment where it does not — is standard and necessary, because work-made-for-hire treatment is limited to enumerated categories for commissioned works.
  • The secondee provision solves the routing problem: the invention must reach the home employer, which then gives effect to the collaboration's allocation. Direct assignment by the secondee to the wrong party is a common and difficult error.

Tool 10 — Survival and change of control

Survival. The following survive expiration or termination: Sections [] (Definitions), [] (Ownership of Foreground IP), [] (Background Licence for Exploitation), [] (Co-Ownership, if applicable), [] (Confidentiality, for [ten] years or, for trade secrets, for so long as they remain trade secrets), [] (Data and Regulatory Rights), [] (Payments and Audit), [] (Warranties and Indemnities), [] (Limitation of Liability), and [] (Dispute Resolution).

Prosecution after termination. Each Party shall continue to bear its share of prosecution and maintenance costs for Joint Patents. A Party wishing to cease shall give [60] days' notice, and the other may assume sole funding and take assignment of that Party's interest in the relevant jurisdiction.

Data. Each Party retains a perpetual, irrevocable right to use and reference all Project Data generated during the Term, for any purpose within its Field, including in support of regulatory filings, and each grants the other a right of reference to any regulatory filing incorporating Project Data.

Materials. Each Party shall return or destroy the other's materials within [60] days of termination, except that each may retain [one] archival sample and any material incorporated into a product.

Change of Control. (a) Each Party shall notify the other within [10] Business Days of any Change of Control. (b) If a Party undergoes a Change of Control in which the acquirer is a Competitor of the other Party: (i) the other Party may, on [30] days' notice, suspend the exchange of Confidential Information and the participation of the affected Party's personnel in the Project; (ii) the Parties shall negotiate in good faith for [90] days regarding continuation; and (iii) failing agreement, the other Party may terminate this Agreement on [30] days' notice, provided that all licences granted hereunder shall survive such termination in accordance with their terms. (c) "Competitor" means, in respect of a Party, any Person that derives more than [__]% of its revenue from, or has a material business in, [that Party's Field / a defined activity].

Annotations.

  • The prosecution-after-termination provision prevents patents being abandoned by default because a terminated collaboration has no owner willing to pay.
  • The data and right-of-reference provision is essential in regulated industries and is almost never included. A party that cannot reference the data cannot file.
  • The change of control provision addresses the most predictable crisis in any collaboration, and it must be negotiated at the outset when neither party knows which side of it they will be on.
  • Clause (b)(iii)'s proviso is the critical drafting point: termination must not destroy the licences, or a party that has built a product on licensed technology loses its business because its partner was acquired.

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