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.