Technology: Maintaining rights to IP assets in an outsourcing deal

6 key considerations to discuss with your supplier

When outsourcing critical services to a supplier, the treatment of intellectual property rights is both complicated and necessary if the parties are to maintain the appropriate rights to the IP assets provided and created during their relationship. Before negotiating an outsourcing agreement with a supplier, counsel should be aware of the potential IP issues that may arise in each stage of the outsourcing relationship, which include:

1. Rights to deliverables provided during the transition

4. Embedded supplier-owned materials

At times, supplier-owned materials may be embedded in developed materials. Companies will likely need a broad license to these materials, with the right to sublicense, provided that these supplier-owned materials remain embedded and are not commercially exploited separately. Under some circumstances, a company may also need the supplier to provide upgrades, maintenance, support and other services for a period of time after termination until these embedded materials are no longer required or the company can maintain them.

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James Kunick

James M. Kunick is Chair of the Intellectual Property & Technology group at Chicago-based law firm Much Shelist. He has nearly two decades of experience...

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Michael Minea

Michael A. Minea is an Associate in the Intellectual Property & Technology group at Chicago-based law firm Much Shelist. He represents entrepreneurs and multinational clients...

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Tracy Kocourek

Tracy Kocourek is Special Counsel in the Intellectual Property & Technology practice group at Chicago-based law firm Much Shelist. She represents clients ranging from start-ups...

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