IP Ownership Email Templates

📋 CopyHi [Name], Thank you for sending the NDA. Before we proceed, we need to address intellectual property ownership. The current draft doesn't include provisions protecting pre-existing intellectual property. During our discussions, we'll inevitably reference or demonstrate our existing technologies, methodologies, and know-how. Without clear language, there's ambiguity about whether any of this becomes subject to claims by the other party. We need to add provisions that: 1. Define Pre-Existing IP: Each party's intellectual property owned or developed prior to the Effective Date remains that party's exclusive property. 2. Prevent Inadvertent Transfer: Disclosure of pre-existing IP under this Agreement does not transfer any ownership rights or licenses (beyond those explicitly granted for evaluation purposes). 3. Background Technology: Our proprietary tools, frameworks, and methodologies that we might use during evaluation remain our exclusive property. We propose adding the following language: "Pre-Existing Intellectual Property. Each party shall retain all right, title, and interest in its Pre-Existing IP. 'Pre-Existing IP' means any intellectual property that a party owned, developed, or licensed prior to the Effective Date, or that a party develops independently of this Agreement. Nothing in this Agreement shall be construed to transfer, assign, or license any Pre-Existing IP, except as expressly provided herein." Would you be comfortable including this provision? Best regards, [Your Name]

📋 CopyHi [Name], As we scope our discussions, it's becoming clear that we may engage in some collaborative development work - even if just prototyping or proof-of-concept activities. We should address IP ownership for any jointly created work before we begin. The current NDA doesn't cover this scenario, which could lead to disputes if our discussions progress. We've seen situations where preliminary "exploration" leads to real innovations, and without clear rules, both parties end up in costly disagreements. We propose adding a joint development framework: 1. Definition: "Joint IP" means intellectual property that is jointly conceived or developed by personnel of both parties during activities under this Agreement. 2. Ownership Options (pick one): - Option A (Joint Ownership): Joint IP shall be jointly owned, with each party having the right to use, license, and exploit the Joint IP without consent or accounting to the other party. - Option B (Split by Contribution): Joint IP shall be owned by the party whose personnel made the primary inventive contribution. If contributions are equal, the IP shall be jointly owned. - Option C (Allocate to One Party with License): Joint IP shall be owned by [Party], who shall grant the other party a perpetual, royalty-free license to use such IP for its internal purposes. 3. Improvements: Each party shall own improvements it makes independently to its own Pre-Existing IP, even if inspired by discussions under this Agreement, provided such improvements do not incorporate the other party's Confidential Information. 4. Deferral: For any significant jointly developed IP, the parties agree to negotiate in good faith a separate IP agreement addressing ownership, licensing, and commercialization. Which ownership approach would work for your organization? Best regards, [Your Name]

📋 CopyHi [Name], We've identified a concern with Section [X] regarding feedback and suggestions. The current language states that any feedback, comments, or suggestions we provide become your exclusive property. This is problematic for several reasons: 1. Scope Concern: The language is extremely broad - it could capture our valuable insights, methodologies, and domain expertise that we share during discussions. 2. Competitive Impact: We may share observations based on our own R&D and market knowledge. Having those ideas become your exclusive property could harm our competitive position. 3. Chilling Effect: If every comment we make becomes your property, we'll have to be extremely guarded in our discussions, which defeats the purpose of the collaboration. We understand you want freedom to improve your products based on user input. Here's a balanced approach: "Feedback. Receiving Party may provide suggestions, comments, or feedback regarding the Confidential Information ('Feedback'). Disclosing Party may freely use any Feedback for any purpose without compensation or attribution. However, this Section does not transfer ownership of, or grant any license to, Receiving Party's Pre-Existing IP, trade secrets, proprietary methodologies, or confidential business information that may be reflected in such Feedback. For clarity, Receiving Party retains all rights in the underlying knowledge, experience, and know-how that informed any Feedback." This lets you use our feedback while preserving our underlying IP rights. Would this work? Best regards, [Your Name]

📋 CopyHi [Name], We need to discuss the implications of the NDA on our independent development capabilities. Our R&D team is actively working on [general technology area]. There's a risk that after seeing your Confidential Information, any similar work we produce could be challenged as derived from your disclosures - even if we developed it independently. This isn't a hypothetical concern. We've seen disputes where a party claims that anything similar to their disclosed technology must have been copied, creating years of litigation even when development was genuinely independent. We propose adding explicit independent development protections: "Independent Development. Nothing in this Agreement shall restrict Receiving Party from developing, acquiring, licensing, marketing, or distributing products or services that may compete with or be similar to those disclosed as Confidential Information, provided such activities do not use or incorporate Confidential Information. Receiving Party may: (a) pursue opportunities in the same general field as the Confidential Information; (b) develop products or services that address similar problems or markets; (c) hire personnel who may have general knowledge of the relevant technology area; and (d) engage in research and development that, through independent effort, may result in similar solutions. Documentation. In the event of any dispute regarding independent development, Receiving Party shall maintain and, upon reasonable request, provide documentation of its independent development process, including development records, version control history, and personnel involvement." This protects both parties - you're protected by confidentiality obligations, and we're protected from baseless claims of copying. Best regards, [Your Name]

📋 CopyHi [Name], Before we begin sharing technical details, we need to strengthen the IP ownership provisions in the NDA. We'll be disclosing [describe generally - proprietary algorithms, trade secrets, patented technology, etc.] that represents significant investment and competitive advantage. The current NDA protects confidentiality but doesn't clearly establish our continued ownership. We need to add explicit ownership language: "Ownership of Confidential Information. All Confidential Information disclosed by Disclosing Party shall remain the sole and exclusive property of Disclosing Party. Receiving Party acknowledges and agrees that: (a) Disclosing Party retains all right, title, and interest in and to all Confidential Information, including all intellectual property rights therein; (b) Disclosure of Confidential Information does not constitute a sale, license, or transfer of any intellectual property rights; (c) No implied license or other right is granted to Receiving Party by virtue of disclosure; (d) Any derivative works, modifications, or improvements made to Confidential Information shall be owned exclusively by Disclosing Party, and Receiving Party hereby assigns to Disclosing Party all rights in any such derivative works, modifications, or improvements; (e) Receiving Party shall not file any patent applications or seek any intellectual property protection for any invention, discovery, or innovation that incorporates, is derived from, or is based upon Confidential Information." This protects our investment while still allowing you to evaluate the technology. Would this addition work for your organization? Best regards, [Your Name]

📋 CopyHi [Name], As we prepare to share technical information, we need to discuss how improvements and derivative works will be handled. Our concern is that during your evaluation, your team may develop ideas or improvements based on our technology. Without clear rules, ownership of these improvements becomes disputed territory. We've experienced situations where: - An evaluating party developed "improvements" and claimed ownership - Joint insights during demos became the subject of competing patent applications - "Independent" developments were clearly inspired by our disclosed technology To prevent these issues, we propose: "Derivative Works and Improvements. (a) Definition. 'Derivatives' means any modification, enhancement, derivative work, translation, adaptation, improvement, or extension of Disclosing Party's Confidential Information. (b) Ownership. All Derivatives conceived, developed, or created by Receiving Party (whether alone or jointly with others) shall be owned exclusively by Disclosing Party. Receiving Party hereby irrevocably assigns to Disclosing Party all right, title, and interest in any such Derivatives. (c) Disclosure. Receiving Party shall promptly disclose to Disclosing Party any Derivatives it conceives or develops, in sufficient detail for Disclosing Party to understand and protect such Derivatives. (d) Assistance. Upon Disclosing Party's request, Receiving Party shall execute any documents and take any actions necessary to perfect Disclosing Party's ownership of Derivatives, including patent assignments. (e) Carve-out. This Section does not apply to developments made by Receiving Party using only its Pre-Existing IP, general knowledge, and skills, without use of Confidential Information." The carve-out protects your independent work while ensuring we own anything derived from our technology. Best regards, [Your Name]

📋 CopyHi [Name], Thank you for raising the joint development question. You're right that we should address this before proceeding. We're prepared to agree to a joint development framework, with some modifications to ensure both parties' interests are protected. Here's our proposed approach: "Joint Development IP. (a) Joint IP Definition. 'Joint IP' means intellectual property jointly conceived or developed by employees or contractors of both parties during collaboration under this Agreement, where such IP would not have been created without the contributions of both parties. (b) Ownership. Joint IP shall be jointly owned by both parties, with each having an undivided interest. (c) Exploitation Rights. Each party may use, license, and exploit Joint IP for its own business purposes without the consent of the other party, subject to: - Neither party may grant exclusive licenses to Joint IP without the other's written consent - Neither party may assign its interest in Joint IP without the other's written consent (except in connection with a merger or acquisition of all or substantially all assets) (d) Patent Filing. Either party may file patent applications covering Joint IP, provided it notifies the other party and offers joint filing. Filing costs and prosecution shall be shared equally if both parties elect to participate. (e) Enforcement. Either party may enforce Joint IP against third-party infringers, with the other party's reasonable cooperation. (f) Formal Agreement. For any significant Joint IP, the parties agree to negotiate in good faith a separate written agreement governing development, ownership, licensing, and commercialization within 30 days of identifying such Joint IP." Does this framework address your concerns? Best regards, [Your Name]

📋 CopyHi [Name], As we move toward potential collaborative work, we need to establish clear protection for each party's background intellectual property. Any joint development will inevitably build upon our respective existing technologies. Without clear boundaries, there's risk that one party's foundational IP becomes entangled with joint work products in ways that create disputes. We propose adding: "Background Intellectual Property. (a) Definition. 'Background IP' means intellectual property that: (i) a party owned or controlled prior to the Effective Date; or (ii) a party develops independently during the term of this Agreement without use of the other party's Confidential Information or contributions. (b) Identification. Within [30] days of the Effective Date, each party shall provide the other with a written description of the Background IP it expects to contribute to collaborative activities. This description shall be updated as needed during the term. (c) Ownership Retained. Each party retains all right, title, and interest in its Background IP. Nothing in this Agreement shall transfer any ownership interest in Background IP to the other party. (d) License Grant. To the extent a party's Background IP is necessarily incorporated into Joint IP: - The contributing party grants the other party a non-exclusive, perpetual, royalty-free license to use that Background IP solely as embodied in the Joint IP - This license does not extend to the Background IP on a standalone basis or for uses outside the Joint IP (e) Improvements. Each party shall own all improvements it makes to its own Background IP, even if developed during collaborative activities, provided such improvements do not incorporate the other party's Confidential Information." This ensures we both protect our foundational IP while enabling genuine collaboration. Best regards, [Your Name]