Along with recent advances in automotive technology, we have seen a rise in collaborations between different companies. For instance, BMW recently announced that it is joining forces with Intel and Mobileye to develop self-driving cars. As another example, Volvo has formed a new autonomous driving software company with Autoliv, as discussed in our previous article: http://goo.gl/OAz56B.
These collaborations are fantastic ways of bringing exciting new products to market. However, it is vitally important that the relevant Joint Development Agreements (JDAs) are executed properly, particularly when it comes to Intellectual Property (IP).
Issues can arise when there is confusion about the ownership of inventions that are developed as part of a collaboration agreement. There may be entitlement and validity issues regarding inventors, which is discussed in the quote below. Furthermore, if two parties file and publish patent applications for the same invention at different times, this would be likely to jeopardise the prospects of grant for at least one of the patent applications.
In addition, it is crucial to understand which patents in the JDA cover which products produced as a result of the collaboration. For example, a dispute could arise where a product produced by a first party to the collaboration falls within the scope of patent owned by a second party to the collaboration, where the first party does not have the necessary licence for the patent.
As we see more automotive technology collaborations and their resulting products come to market, it will be interesting to see if this leads to a rise in disputes between collaborators.
When the rights of the parties to use existing IP are not clearly defined, a dispute may arise if one of the parties seeks to bring jointly developed technology to market that requires the use of existing IP owned by the other party, In addition, when there is confusion about ownership of jointly developed IP, the parties to the JDA may independently file patent applications covering jointly developed inventions. When this happens, said Gray, the validity of any subsequently granted patents may be jeopardized...