Prenuptial Patenting: Responsible Engagement with Engineering Firms

​​Patently Strategic - Patent Strategy for Startups

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You have your big idea and now it’s time to breathe it into existence, but you need some help with the development. Like many others, you may turn to the aid of an engineering firm or dev shop. This relationship is a marriage of sorts. But it’s a marriage that is designed to inevitably end in divorce! How cleanly, smoothly, and successfully this separation goes depends on the steps that you take before it officially begins.
Both parties come to the relationship with existing assets – IP, software, prototypes, ideas, documentation, etc. More will be created collaboratively throughout the course of the relationship. But how do you ensure you exclusively get back out what you came with and also get what you contributed and uniquely paid for?
In this month’s episode, Dr. Ashley Sloat, President and Director of Patent Strategy here at Aurora, leads a discussion into Responsible Engagement with Engineering Firms, or what we affectionately refer to here as “Prenuptial Patenting”. Ashley and our all star patent panel walk you down the aisle and explore everything you need to know to experience marital bliss and an amicable divorce with your engineering partners. This talk covers the full life cycle from vetting partners to post development concerns and everything in between – with particular focus on relationship complexities like IP ownership, assignment from engineering firm inventors back to you, and how to avoid the traps of viral IP.
Ashley is also joined today by our always exceptional group of IP experts including:
⦿ Kristen Hansen, Patent Strategist at Aurora
⦿ David Jackrel, President of Jackrel Consulting
** Resources **
⦿ Show Notes
⦿ Slides
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And as always, thanks for listening!
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Note: The contents of this podcast do not constitute legal advice.

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1. Intro (00:00:00)

2. Key Considerations (00:02:57)

3. Value of a Patent (00:03:24)

4. Value of Outsourcing (00:03:41)

5. The Problem of Ownership (00:04:47)

6. Relationship Stages (00:05:16)

7. Single Life (00:06:30)

8. NDAs (00:12:36)

9. Dating Life (00:14:37)

10. Geography and Jurisdiction (00:15:00)

11. Security and Conflict of Interest Management (00:16:21)

12. Relevant Expertise (00:17:24)

13. Working Model (00:18:02)

14. Engagement (00:21:55)

15. Prenuptial Contract Considerations (00:22:22)

16. Scope of Work (00:22:51)

17. IP Ownership (00:27:20)

18. Inventorship vs Ownership (00:28:42)

19. Termination and Other Legalities (00:32:55)

20. Marriage - Product Development (00:34:04)

21. Sources of Innovation Contribution (00:34:55)

22. Code Ownership (00:36:23)

23. Impact of Agile Methodology (00:43:30)

24. Patentability and FTO (00:44:22)

25. Open-source Considerations (00:46:16)

26. FDA Compliance (00:47:31)

27. Device Considerations (00:47:56)

28. Divorce (00:48:46)

29. Anecdotal Experiences (00:50:07)

30. Key Takeaways (00:52:47)

31. Outro (00:54:13)