Maximizing Value of Joint Inventions through Management Agreements, Patent Pooling, and Bundling Strategies

AuthorElizabeth Rodriguez - Sean Solberg
Pages145-155
Stephanie Adamany1
The nature of research collaborations in the academic setting, whether the collaboration is
with academia, nonprot research organizations, the government, or for-prot companies,
encourages the development of joint inventions and follow-on inventions and portfolios.
Sometimes inventions are developed in the academic setting that are compatible with
other portfolios of patents that are owned by that same institution, and sometimes the
compatible patents are owned by different institutions or companies. Since two of the
key goals of technology transfer are managing intellectual property (IP) in a manner that
promotes development of inventions to benet society and licensing technology to gen-
erate revenues to advance the associated research enterprise, having mechanisms for the
management of jointly owned inventions and singly owned inventions that are compat-
ible with other technologies is of critical importance. There are a variety of mechanisms
for managing, licensing, and commercializing technology in each of these scenarios, and
this chapter will address some of those strategies and provide some legal context.
1. Stephanie Adamany is the Associate General Counsel of the Wisconsin Alumni Research Foundation (WARF).
This chapter reects the personal views and thoughts of Adamany and is not to be construed as representing
in any way the views or advice of WARF. The content is solely for purposes of discussion and illustration and
should not be relied upon as legal advice.
145
Chapter 7
Maximizing Value of Joint Inventions
through Management Agreements, Patent
Pooling, and Bundling Strategies

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