Joint Development Agreement Checklist: Background IP, Foreground Allocation, Improvements, and Exit

By Casey Scott McKay · 2025-08-06

Joint development agreements fail on provisions nobody negotiated and obligations nobody administered. This checklist runs one in sixteen phases: identify the shape, build the background schedules and keep them current, grant the cross-licenses, allocate the foreground, override the joint ownership defaults where joint ownership is unavoidable, handle improvements and grant-backs, set prosecution and enforcement, decide publication versus patenting, establish invention disclosure practice, address data and materials, address the other regimes, handle change of control and exit, administer the program, remediate an existing arrangement, apply the institutional and federal funding rules, and assemble the diligence file. Each box gives the reason, the authority, and the trap. A worked collaboration runs throughout.

IP and Technology > General IP | Checklist | Published 6 August 2025 - Updated 6 January 2026 | Casey Scott McKay - marksy.us

Summary. Joint development agreements fail on provisions nobody negotiated and obligations nobody administered. This checklist runs one in sixteen phases: identify the shape, build the background schedules and keep them current, grant the cross-licenses, allocate the foreground, override the joint ownership defaults where joint ownership is unavoidable, handle improvements and grant-backs, set prosecution and enforcement, decide publication versus patenting, establish invention disclosure practice, address data and materials, address the other regimes, handle change of control and exit, administer the program, remediate an existing arrangement, apply the institutional and federal funding rules, and assemble the diligence file. Each box gives the reason, the authority, and the trap. A worked collaboration runs throughout.

Keywords: relationship shape, background schedules, schedule updating, residual rule, cross-licenses, have-made rights, foreground allocation, field of use, joint ownership override, accounting obligation, prosecution control, abandonment step-in, enforcement joinder, improvements, grant-back scope, publication window, invention disclosures, data and materials, change of control, diligence file

How to use this checklist

| Phase | What it covers | |---|---| | 1 | Identify the shape | | 2 | Background schedules | | 3 | Cross-licenses | | 4 | Foreground allocation | | 5 | The joint ownership override | | 6 | Improvements and grant-backs | | 7 | Prosecution and enforcement | | 8 | Publication or patent | | 9 | Invention disclosure practice | | 10 | Data, materials, and other regimes | | 11 | Change of control and exit | | 12 | Administering the program | | 13 | Remediating an existing arrangement | | 14 | Universities and federal funding | | 15 | The diligence file | | 16 | Negotiating position by position |

Boxes marked [Gate] should clear before the work starts.

The matter. A sensor company and an equipment manufacturer developing a combined product. Eighteen months, a successful launch, and three failures that were administrative rather than doctrinal.

Phase 1. Identify the shape

[ ] [Gate] Name the relationship before drafting.
- Why. Supplier development, peer collaboration in different markets, customer-funded development, or research collaboration with an institution. The shape determines the allocation.
- Trap. Beginning with a form, which produces an allocation nobody chose.
[ ] For supplier development, plan for manufacturer ownership of product-specific results, supplier ownership of generally applicable improvements, a license with have-made rights, tooling addressed separately, and an alternative-source right.
[ ] For peer collaboration, plan for field-of-use allocation with a mechanism for field expansion.
[ ] For customer-funded development, plan for assignment of deliverables with a license back to platform components, or vendor ownership with a field-exclusive customer license.
- Trap. Assuming payment conveys ownership. The developer owns what it writes absent a written assignment. 17 U.S.C. § 201.
[ ] Ask what each party actually needs from the result.
- Why. Freedom to use, protection against the other competing, and a share of value. All three can be delivered by license, and naming them dissolves most ownership fights.

Phase 2. Background schedules

[ ] [Gate] Attach schedules at signature, listing patents, applications, know-how, software, and materials specifically.
[ ] Add a residual rule for unlisted items, typically ownership by the party showing prior possession.
[ ] Define background to exclude anything developed using the other party's confidential information.
[ ] Define sideground where useful — developed during the period but outside the scope — and say where it falls.
[ ] [Gate] Require the schedules to be updated on a cadence, with a proposal, an objection window, and acceptance of unobjected additions.
- Trap. A schedule frozen at signature, wrong within months, and the first document both parties reach for in a dispute.
[ ] Start the inventory before the first draft.
- Why. Two to four weeks, because someone must inventory what the company owns and that inventory frequently does not exist.

Phase 3. Cross-licenses

[ ] Grant each party a license to the other's background to the extent necessary to perform the work and to use the foreground allocated to it.
- Trap. A foreground result the other party cannot practice without a background license is worthless to it.
[ ] Include have-made rights where the receiving party will need an alternative source.
[ ] State field, exclusivity, royalty, sublicensing, and term for each cross-license.
[ ] Tie the license term to the life of the foreground, not to the collaboration.
- Trap. A background license expiring while the foreground it enables remains.
[ ] State whether the cross-licenses survive termination.

Phase 4. Foreground allocation

[ ] Prefer sole ownership with a field license.
- Why. Cleaner and enforceable; the difficulty is political rather than legal.
[ ] Use field-of-use allocation where the parties operate in different markets.
[ ] Avoid allocation by inventorship.
- Trap. Unadministrable, because inventorship is determined claim by claim after drafting.
[ ] Consider a joint venture entity where the collaboration is substantial and long-lived.
[ ] Define foreground with four verbs.
- Why. Conceived, created, developed, or first reduced to practice in the performance of the program, solely or jointly.
[ ] Address who owns what when a field expands.

Phase 5. The joint ownership override

Where joint ownership is unavoidable, these five provisions make it workable.

[ ] [Gate] Require consent for licensing, or permit licensing only outside the other's field.
- Authority. 35 U.S.C. § 262.
- Why. By default each co-owner may license to the other's competitor, for free, forever.
[ ] [Gate] Impose an accounting obligation, as a percentage of net revenue with reporting.
- Why. Patent law supplies none. Copyright's joint authorship rules do, which is why parties sometimes prefer that framing.
[ ] Designate a prosecuting party, with countries, cost allocation, and consultation rights.
[ ] [Gate] Provide an abandonment step-in.
- Why. Sixty days' notice before any deadline, with the other party able to assume prosecution and take assignment. Thirty days is too short for a foreign associate to act.
[ ] [Gate] Require enforcement joinder at the other's request and expense.
- Why. All co-owners must ordinarily join, so a co-owner who refuses makes the patent unenforceable.
[ ] Supply a deadlock mechanism for filing, licensing, and enforcement disagreements.
- Trap. A structure with no tiebreaker stops working the first time the parties disagree.
[ ] Reference the statute expressly in the override, to foreclose an argument that the parties did not address it.

Phase 6. Improvements and grant-backs

[ ] Define improvement, distinguishing improvements to background from improvements to foreground.
[ ] Allocate background improvements to the background owner, with a license where necessary to practice the foreground.
- Trap. A background improvement the other cannot practice and cannot obtain, which is a deadlock built into the agreement.
[ ] Allocate foreground improvements consistently with the foreground allocation.
[ ] Draw grant-backs narrowly, with scope, field, exclusivity, and duration stated.
- Why. Overbroad grant-backs raise antitrust questions in some structures.
[ ] Address post-termination improvements and whether any license reaches them.

Phase 7. Prosecution and enforcement

[ ] Name the prosecuting party and the countries.
[ ] Allocate cost, with a unilateral filing right for a party that wants a filing the other declines, at its own expense, with the other retaining a license.
[ ] Provide consultation, with copies of office actions and a reasonable comment period.
[ ] Address inventorship determination.
- Authority. 35 U.S.C. § 116; 35 U.S.C. § 256.
- Why. Errors are correctable, and correction is far easier while the parties still cooperate.
[ ] Address derivation exposure.
- Authority. 35 U.S.C. § 135; 35 U.S.C. § 291.
- Why. Both remedies are narrow; the agreement should prevent the situation rather than remedy it.
[ ] [Gate] Confirm the employee assignments exist, present-tense, executed, before the work starts.
- Authority. 35 U.S.C. § 261.
- Trap. A collaboration producing a patent owned by individuals rather than by either company, discovered in diligence.

Phase 8. Publication or patent

[ ] Supply a mechanism, not a preference.
- Why. Who decides, on what timeline, and what happens on disagreement.
[ ] Understand the regimes are exclusive as to what is disclosed.
- Authority. 35 U.S.C. § 122.
- Why. Publication at eighteen months ends secrecy in the disclosed subject matter.
[ ] Note the partial answers. Non-publication requests where no foreign filing will occur, and provisionals that defer twelve months.
[ ] Set a publication review window with research collaborators: review period, filing delay, and a right to remove confidential information.
[ ] Preserve the trade secret elements.
- Authority. 18 U.S.C. § 1839.
- Trap. A collaboration where one party circulates results widely has defeated reasonable measures for both.
[ ] Address conference presentations and customer demonstrations, which nobody thinks of as publications.

Phase 9. Invention disclosure practice

[ ] [Gate] Require dated invention disclosures describing conception and naming who conceived what.
[ ] Require notebooks or their equivalent with reliable timestamps.
[ ] Record who proposed what in meetings.
- Why. Collaborative conception happens in conversation and is otherwise unrecorded.
[ ] Use version control for software contributions.
[ ] Log materials transfers.
[ ] Record filing and publication decisions with dates and reasons, including decisions not to file.
[ ] Classify each disclosure contemporaneously as background, foreground, or sideground, with reasons.
- Why. A contemporaneous classification is worth vastly more than one reconstructed later.
[ ] Understand why this matters more than the drafting.
- Why. An allocation by contribution is unadministrable without contribution records, and a poorly drafted agreement is frequently salvaged by good ones.

Phase 10. Data, materials, and other regimes

[ ] Address data expressly.
- Trap. Not a category of intellectual property. An agreement allocating "intellectual property" and silent on data has left the most commercially useful output unaddressed.
[ ] Set data ownership, use rights, aggregation, retention, and termination treatment.
[ ] Address materials.
- Why. Ownership of the physical thing is separate from rights in what it embodies. State who owns, what may be done, whether onward transfer is permitted, and what happens at the end.
[ ] Avoid joint trademark ownership.
- Why. A mark identifying two sources without control is vulnerable. Sole ownership with a license and real quality control is the answer.
[ ] Inventory open source components in deliverables.
- Why. Their conditions travel with the code regardless of the allocation, and neither party can allocate them away.
[ ] Address regulatory assets in regulated industries, which have their own transfer rules and frequently cannot be split.

Phase 11. Change of control and exit

[ ] [Gate] Include a change of control provision.
- Trap. Without one, a competitor acquiring the counterparty acquires the jointly owned rights and the background licenses.
[ ] State the termination triggers, including material breach with cure, insolvency, and milestone failure.
[ ] State what happens to foreground on termination, including whether jointly owned rights are divided, licensed, or assigned.
[ ] State which licenses survive.
- Trap. A license that is silent is a license that is argued about.
[ ] Address materials and data on wind-down.
[ ] Provide confidentiality survival with a trade secret carve-out.
[ ] Address any non-compete tail and its enforceability where the parties operate.
[ ] Set dispute resolution, including whether ownership disputes go to arbitration and whether interim relief is available.

Phase 12. Administering the program

[ ] Appoint a named program manager on each side.
[ ] Hold the committee meetings quarterly.
- Trap. Most agreements provide for a committee and most committees meet twice.
[ ] Run the schedule update cycle.
[ ] Review and classify disclosures on a cadence.
[ ] Make filing decisions on the record.
[ ] Track every license granted under jointly owned rights.
[ ] Maintain the materials and data registers.
[ ] Report annually to both parties' management.
- Why. This is the report that surfaces a boundary dispute while it is still small.
[ ] Calendar the term, milestones, and notice periods.

Phase 13. Remediating an existing arrangement

[ ] Establish the facts first. Who did what, when, and on what prior technology.
[ ] Determine inventorship on filed applications and correct errors while the parties still cooperate.
[ ] Confirm the employee assignments exist.
[ ] Paper the boundary retroactively, agreeing a background schedule as of a stated date with everything else treated as foreground.
[ ] Override the joint ownership defaults now, even where ownership cannot be renegotiated.
[ ] Address the omissions: data, materials, change of control, publication, and exit.
[ ] Use the next milestone as the occasion — an amendment, an extension, a new phase, or a funding round.
[ ] Where nothing will be signed, document the client's position in writing and send it.

Phase 14. Universities and federal funding

[ ] Read the institutional policy before drafting.
- Why. University ownership, student involvement, protected publication, and limited indemnities are frequently non-negotiable.
[ ] Ask about funding sources at the term sheet stage.
- Authority. 35 U.S.C. § 200; 35 U.S.C. § 202; 35 U.S.C. § 203.
- Why. Election of title, disclosure obligations, a government license, preference for domestic manufacture, and march-in rights all attach.
[ ] Expect the publication provisions to be firm.
[ ] Expect constrained exclusivity.

Phase 15. The diligence file

[ ] The agreement and every amendment.
[ ] Background schedules with the update history.
[ ] The classification record for each disclosure.
[ ] Invention disclosures, notebooks, and contribution logs.
[ ] Employee assignments, both parties, present-tense, executed.
[ ] The patent family with prosecution status and the filing decision record.
[ ] Every license granted under jointly owned rights, by either party.
[ ] Materials and data registers.
[ ] The open source inventory.
[ ] The funding record.
[ ] Committee minutes.
[ ] Dispute correspondence, live or resolved.

Phase 16. Negotiating position by position

[ ] Open with the shape, not the allocation.
[ ] Concede the caption and negotiate the license where the counterparty insists on owning.
- Why. A broad, perpetual, irrevocable, field-exclusive license with have-made rights and improvement coverage delivers nearly everything ownership would.
[ ] Hold firm on five terms.
- Why. Enforcement joinder, abandonment step-in, schedule updating, change of control, and survival of licenses.
[ ] Trade the accounting percentage rather than the ownership question.
[ ] Resist joint ownership as a compromise.
- Why. It is what emerges when parties cannot agree, and it is worse for both than either party's preferred outcome.
[ ] Close on the administration, agreeing the committee cadence and the schedule update process at signature.

Phase 17. Model language

Six formulations carry most of the weight. Check each against the draft.

[ ] Background definition.
- "Background IP means all Intellectual Property owned or controlled by a Party as of the Effective Date, or developed by that Party independently of this Agreement and without use of the other Party's Confidential Information, including the items listed on the applicable Schedule as updated in accordance with Section X."
- Why. "Or controlled by" captures affiliate-held rights. The confidential-information exclusion prevents a party from developing something with the collaboration's benefit and calling it background. "As updated" makes updating an obligation rather than a courtesy.
[ ] Foreground definition.
- "Foreground IP means all Intellectual Property conceived, created, developed, or first reduced to practice in the performance of the Program, whether solely or jointly."
- Why. "Conceived" reaches inventions, "created" reaches works of authorship, and "first reduced to practice" reaches an invention conceived earlier and completed here.
[ ] Cross-license to background.
- "Each Party grants the other a non-exclusive, royalty-free license under its Background IP solely to the extent necessary to perform the Program and to make, have made, use, sell, and import the Foreground IP allocated to that other Party, in that Party's Field, for the term of the applicable Foreground IP."
- Why. "Have made" is the term suppliers resist and manufacturers need. Tying the term to the foreground's life prevents the background license from expiring first.
[ ] Joint ownership override.
- "Where Foreground IP is jointly owned, notwithstanding 35 U.S.C. § 262 or any similar law, neither Party may license, assign, or otherwise transfer any interest without the prior written consent of the other, and each Party shall account to the other for [X] percent of Net Revenue attributable to its exploitation."
- Why. The express statutory reference forecloses an argument that the parties did not address it.
[ ] Enforcement joinder.
- "At the request and expense of an enforcing Party, the other Party shall join as a party plaintiff in any action to enforce jointly owned Foreground IP, and shall execute all documents reasonably necessary for that purpose."
[ ] Abandonment step-in.
- "If the Prosecuting Party elects not to file, prosecute, or maintain in any jurisdiction, it shall notify the other Party at least sixty days before any deadline, and the other Party may assume prosecution and take assignment of the relevant rights in that jurisdiction at its own expense."
- Why. Sixty days is the operative number; thirty is too short for a foreign associate to act.

Phase 18. Failure modes, collected

[ ] A confidentiality agreement used for a development project.
[ ] No background schedules.
[ ] Schedules never updated.
[ ] No residual rule for unlisted items.
[ ] Cross-licenses too narrow to practice the foreground.
[ ] No have-made rights where an alternative source will be needed.
[ ] Allocation by inventorship, which nobody can administer.
[ ] Joint ownership accepted without overriding the defaults.
[ ] No enforcement joinder obligation.
[ ] No abandonment step-in.
[ ] Employee assignments never confirmed.
[ ] No filing decision mechanism, so either party may file naming its own people.
[ ] No publication window with a research partner.
[ ] No invention disclosure practice.
[ ] Data unaddressed.
[ ] Materials unaddressed.
[ ] Trademarks jointly owned.
[ ] Open source in deliverables not inventoried.
[ ] No change of control provision.
[ ] Licenses that do not state whether they survive.
[ ] Committee meetings that stop after the second one.

Phase 19. The economics

Ownership is negotiated as a legal question and decided as a commercial one. Price it explicitly.

[ ] Establish who is paying for the development.
- Why. A party funding the work has the stronger claim, and shared funding should be reflected in the allocation.
[ ] Identify each party's scarce contribution.
- Why. Background technology, market access, manufacturing capacity, regulatory position, or capital. The contribution the other cannot obtain elsewhere earns the better position.
[ ] Ask what each party actually loses if the other owns.
- Why. Usually less than assumed, because a broad field-exclusive license delivers the commercial outcome without the caption.
[ ] Price the ownership where both want it, converting a positional dispute into a transaction.
[ ] Consider a royalty in lieu of ownership.
- Why. The non-owning party receives a running royalty on exploitation outside its field. Frequently better than joint ownership for both, because it produces revenue rather than deadlock.
[ ] Consider milestone-based reallocation where the parties cannot agree at the start.
- Why. Ownership follows the party that commercializes first, or reverts if a party fails to develop within a stated period.
[ ] Watch the sophistication asymmetry in both directions.
- Why. A large party's form allocating everything to itself may be acceptable with a good license back; a small party's insistence on joint ownership may reflect a misunderstanding of what joint ownership does.

Phase 20. Timeline and effort

[ ] The shape conversation: one hour, with the business people rather than counsel alone.
- Trap. Skipped in favor of exchanging drafts, which is how an allocation nobody chose ends up in the agreement.
[ ] The background schedules: two to four weeks.
- Why. Someone must inventory what the company owns, and that inventory frequently does not exist. Start before the first draft.
[ ] The first draft: one week, from a form matched to the shape rather than a general form.
[ ] The negotiation: three to six weeks for a peer collaboration; longer with an institution.
[ ] The assignment confirmation: days, and before the work starts.
[ ] The administration: roughly two days a quarter for a program manager.
- Why. The cheapest insurance in the arrangement.
[ ] The diligence file: continuous, or six weeks under deadline with a buyer watching.
[ ] Direct the effort to the schedules and the shape.
- Trap. Three rounds on limitation of liability and none on whether the background schedules describe reality.

Phase 21. How these disputes actually arise

Joint development disputes rarely begin as ownership disputes. They begin as commercial disagreements with no answer, because ownership was never settled. Recognize the pattern early.

[ ] The successful product. One party commercializes and the other wants a share. Where ownership is joint with no accounting obligation, patent law supplies none.
- Authority. 35 U.S.C. § 262.
[ ] The competitor's license. One co-owner licenses the jointly owned patent to the other's competitor. Permitted by default, devastating commercially, and unfixable afterward.
[ ] The enforcement refusal. A third party infringes; one co-owner declines to join; the patent is unenforceable.
[ ] The departure. One party exits and continues developing in the same area. Whether it may use what it learned depends on the confidentiality terms and on whether anyone drew the background boundary.
[ ] The acquisition. The counterparty is bought by a competitor, and the rights and licenses travel.
[ ] The inventorship correction. A patent issues naming one party's employees; the other believes its people contributed to conception. The remedy requires establishing conception claim by claim, years later, from notebooks and recollection.
- Authority. 35 U.S.C. § 256.
[ ] The publication. A research partner publishes before anyone files, and the disclosure becomes prior art against both.
[ ] Recognize what they share.
- Why. Each is a question the agreement could have answered in a paragraph, and each becomes intractable once value exists.

Phase 22. What to tell the client at the outset

[ ] Explain that the defaults are worse than any allocation they would negotiate.
[ ] Explain that joint ownership is not shared control.
- Why. It converts an exclusive right into a shared non-exclusive one that neither party can enforce alone.
[ ] Explain that inventorship is a legal test, not a credit allocation.
- Why. Conception of the subject matter of a claim, determined claim by claim. Funding, direction, management, and ordinary skill do not qualify.
[ ] Explain that ownership follows inventorship, then assignment.
- Authority. 35 U.S.C. § 261.
[ ] Explain that a license usually delivers what they want.
- Why. Freedom to use, protection against the other competing, and a share of value. None of the three requires ownership.
[ ] Explain that the records decide the disputes.
- Why. Invention disclosures, notebooks, and contribution logs, created before anyone knew there would be a dispute.
[ ] Explain that the agreement has ongoing obligations.
- Why. Schedule updates, disclosure classification, committee meetings, and filing decisions. An agreement nobody administers produces the same disputes as one badly drafted.
[ ] Explain that an acquirer will read all of it literally.

Phase 23. The four shapes, in detail

Run the boxes for whichever shape applies.

Supplier development

[ ] Manufacturer owns foreground specific to its product.
[ ] Supplier owns generally applicable improvements to its own technology.
[ ] Manufacturer receives a license including have-made rights.
[ ] Tooling ownership stated separately from intellectual property.
[ ] A supply commitment, or a right to have the part made elsewhere if the supplier exits.
[ ] Trap. The supplier sells the same component, developed at the manufacturer's expense, to the manufacturer's competitor. Permitted unless the foreground boundary was drawn.

Peer collaboration in different markets

[ ] Fields defined precisely, with the boundary tested against foreseeable expansion.
[ ] Each owns foreground in its field, with a license to the other outside it.
[ ] A mechanism for what happens when a field grows.
[ ] Trap. Field definitions that overlap at the edges, and a market that grows into the gap.

Customer-funded development

[ ] Deliverables assigned to the customer, with a license back to the vendor's generally applicable components — or vendor ownership with a field-exclusive customer license.
[ ] Present-tense assignment language.
- Authority. 17 U.S.C. § 201; 17 U.S.C. § 204.
[ ] Deliverables and acceptance criteria defined.
[ ] The vendor's reuse carve-out defined rather than left open.
[ ] Trap. Assuming payment conveys ownership. It does not.

Research collaboration with an institution

[ ] The institutional policy read before drafting.
[ ] Funding sources established at the term sheet stage.
[ ] Publication window agreed, typically thirty to ninety days with a short filing extension.
[ ] Exclusivity expectations calibrated to what the institution can grant.
[ ] Student involvement and its assignment implications addressed.
[ ] Authority. 35 U.S.C. § 202.

Outcome. The agreement got the schedules, the cross-licenses, the field allocation, the joint ownership override, and a quarterly filing committee right. It failed on three things: the schedules were never updated, so a background-versus-foreground dispute in month twelve had no document to resolve it; data was never mentioned, and a valuable body of field performance data was resolved commercially at cost to the relationship; and no change of control provision existed, so when the manufacturer was acquired in year three the jointly owned rights and the background licenses travelled to a competitor. What saved it was the invention disclosure practice, which answered the inventorship questions from records rather than recollection and resolved a contested application in a week.

Key Authorities at a Glance

| Authority | Proposition | Phase | |---|---|---| | 35 U.S.C. § 262 | Joint owners; agreements to the contrary | 5 | | 35 U.S.C. § 261 | Assignment in writing | 7 | | 35 U.S.C. § 256 | Correction of inventorship | 7, 13 | | 35 U.S.C. § 116 | Joint inventors | 7 | | 35 U.S.C. § 135 | Derivation proceedings | 7 | | 35 U.S.C. § 291 | Derived patents | 7 | | 35 U.S.C. § 122 | Publication at eighteen months | 8 | | 35 U.S.C. § 200 | Federal funding policy | 14 | | 35 U.S.C. § 202 | Election of title; government license | 14 | | 35 U.S.C. § 203 | March-in rights | 14 | | 17 U.S.C. § 101 | Joint work; work made for hire | 4 | | 17 U.S.C. § 201 | Copyright ownership | 1 | | 17 U.S.C. § 204 | Transfers require a writing | 4 | | 18 U.S.C. § 1839 | Trade secret definition | 8 | | 18 U.S.C. § 1836 | Trade secret civil action | 10 |

The five things people get wrong

One: they use a confidentiality agreement for a development project. An NDA addresses disclosure and says nothing about creation, which means the parties papered the least important question and left ownership to defaults nobody would have chosen.

Two: they accept joint ownership without overriding the defaults. Each co-owner may then practice and license independently, to the other's competitor, without accounting — and neither can enforce alone. 35 U.S.C. § 262.

Three: they never update the background schedules. Both parties develop background during the collaboration, and a schedule frozen at signature is wrong within months. It is also the first document both sides reach for in a dispute.

Four: they omit the enforcement joinder obligation. All co-owners must ordinarily join to sue, which means a co-owner who declines makes the patent unenforceable and a co-owner who licenses the infringer supplies a complete defense.

Five: they never confirm the employee assignments. A collaboration between two companies can produce a patent owned by individuals rather than by either of them, and it is discovered in diligence years later. Present-tense language, executed before the work. 35 U.S.C. § 261. See Structuring a Joint Development Agreement.