If you’re a technology firm serving the agriculture sector, intellectual property (IP) is one of your most valuable assets. But you can’t extract value from IP that you don’t actually own.
If you’re developing new technology for producers or engaged in breeding to create a new plant variety, chances are you’re relying on a number of people – including employees, consultants, advisors and other contractors – to assist you. However, engaging and paying people to create technology for you doesn’t necessarily mean you own the IP in that technology.
Alternatively, perhaps you’re collaborating with another organization to develop new, or improve upon existing, technology. With multiple parties contributing to this effort, consideration of who will own the IP in technology created as a result of the collaboration, and how that IP may be used or exploited when your collaboration ends, is important.
No matter how you go about creating and developing technology, documenting the ownership of the IP in that technology, and establishing an appropriate chain of title, is critical to ensuring that you can extract value from the products of your hard work. With that in mind, here’s what you need to think about in order to protect your IP.
IP Created by Employees and Contractors
Before an employee or contractor begins working for you, have them sign an agreement that addresses ownership of IP in technology that they may create for or with you and assigns you the ownership rights in such IP.
When hiring new employees or contractors, check to see if they are subject to any non-compete clauses or other relevant restrictions due to an agreement with a previous employer or client before you hire them. If they are using IP or confidential information generated or obtained in the course of their employment or engagement with a previous employer/client in the work they perform for you or to generate new IP for you, their work product or that IP could end up belonging to or being subject to rights held or owned by their previous employer/client.
Keep detailed records of who within your organization is involved in creating your IP, always making sure that they have assigned their rights to their work product to you. In certain circumstances, you may want to seek out additional or confirmatory assignments of IP, or waivers of certain rights.
Have employees and contractors sign confidentiality/non-disclosure agreements with you. Agreements of this type mandate the maintenance of the confidentiality of confidential material or trade secrets that they may access or use in the course of their engagement with you, and therefore help safeguard your IP. This is especially important if you wish to preserve the ability to patent certain proprietary processes or inventions, as inventions that have been disclosed so as to become known to the public are not eligible for patent protection.
Finally, if you’re a software developer, be wary when using open-source code to develop your software. Many open-source licences are “copyleft” agreements that will effectively prevent you from using the code to generate your own proprietary software.
IP Created in Collaboration with Another Organization
If you’re collaborating with another organization to develop technology, you should enter into an agreement with that other organization that clearly spells out who owns the IP in the technology that may result from your collaboration, and what happens to it when your collaboration ends.
Collaborations typically involve parties with complementary technologies, skills or resources. For example, perhaps you have the technical know-how, but lack the facilities and equipment to realize your vision. Or perhaps you’ve developed a technology that would be even better, or be able to be used for a new application, when paired with another organization’s technology.
Collaboration agreements take many forms depending upon what each party is bringing to the collaboration, who is funding the activities that form part of the collaboration, and whether one or both parties’ existing technology or IP is required for the collaboration. These agreements are complex, however, and should consider the following key items at a minimum:
- What is each party contributing to the collaboration?
- What rights does each party retain in their contribution, and what rights do they grant?
- Who owns the IP arising from use of these contributions in the course of the collaboration? Who is permitted to use it? How are they permitted to use it?
You and your collaborator may both be bringing your own IP – often referred to as “background IP” – into a collaboration. If your collaboration is successful, it will result new IP – often referred to as “foreground IP.”
Your collaboration agreement should address how foreground IP is to be managed. For example, is ownership granted to only one party? Is ownership granted to one party, but usage licensed to another? Will the parties have joint ownership of the foreground IP? How will these joint ownership rights be exercised?
Another consideration is what will happen when your collaboration ends. This is especially important if you’re involved in collaborative endeavors such as breeding activities or software development. If you and your collaborator develop new germplasm or novel code, who can use it when you’re no longer working together? Can it be developed further or incorporated/placed into new applications?
In many cases, these questions are answered by defining who owns the foreground IP arising from your collaboration. However, if your agreement contemplates joint ownership or if the foreground IP relies upon, incorporates or requires usage of the background IP of one or both parties, things can get complicated quickly.
When drafting collaboration agreements, it’s important to remember that both parties are working together, and both should benefit from the results or output of the collaboration. Consulting a legal professional before entering into a collaboration agreement can help ensure your efforts are appropriately rewarded.
How Can MLT Aikins Help?
Whether you’re relying on employees, contractors or collaborators to create and develop IP for the agriculture sector, it’s important to consider and document the ownership of that IP. The MLT Aikins Agriculture & Food group has advised many agtech firms on protecting their IP. Contact us for a consultation on safeguarding your IP and protecting your ability to bring new IP to market.
Kristal Allen to Speak at World Agri-Tech Innovation Summit
Calgary lawyer Kristal Allen will be a panellist at the upcoming World Agri-Tech Innovation Summit, an annual conference for the global agtech ecosystem attended by growers, agribusiness leaders, technology pioneers and investors from around the world. The event will take place virtually and in-person in San Francisco from March 22 – 23, 2022.