Another evergreen topic in this golden oldie- what does it mean in legal terms to own and assign know-how?
First scenario: late at night in the final stages of a corporate transaction. You are asked to produce IP-related documents for completion (closing). The documents are to include a know-how assignment. You look on your office computer system but can’t find a suitable template. What do you do? It may be tempting to use a patent assignment, deleting the word patent wherever it appears and replacing it with the word know-how. But is this good enough?
Second scenario: negotiation of a contract to perform R&D services. The customer requests that a clause be inserted in the contract stating that the customer owns the data produced in the course of performing those services.
In both cases, the required assignment/clause appears to be based on the premise that know-how or data is property that can be owned and transferred. Under English law, our understanding is that know-how and data are simply…
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