Protecting Know-How and Trade Secrets in Collaborative R&D Relationships
Gene Slowinski, Edward Hummel and Robert Kumpf
The number of collaborative R&D relationships is increasing rapidly. Central to these relationships is the need to share proprietary intellectual assets. Equally important is the need to protect that information from unintended use. This article describes legal and non-legal methods firms use to protect intellectual assets. Legal methods include crafting a series of agreements and linking the agreements to the activities of the collaboration. Non-legal methods include ensuring employees in both firms understand what information MUST be shared with the partner, MAY be shared with the partner and MUST NEVER be shared with the partner. Training also includes a clear understanding of each firms’ rights-to-use the disclosed information.
Collaboration agreements, non disclosure agreements, joint development agreements, trade secrets, know-how, intellectual asset management, collaborative R&D, licensing, licenses, encumbrances, proprietary information, intellectual asset training
Technology is the currency of the new millennium. Firms that develop and/or acquire proprietary positions in leading edge technologies create a solid foundation for growth. However, the days when one firm internally creates all of the technology it needs to compete in the market place are over. Even simple products contain a bewildering number of sophisticated technologies as customers demand capabilities only dreamed about a few years ago.
To gain access to this technology a company can (a) develop the technology internally (b) obtain it from outside parties via license/purchase or (c) jointly develop the technology with an external firm. This article focuses on the third possibility, developing technology through a joint development agreement. Specifically, we will describe the issues and identify industry practices surrounding protecting the firm’s intellectual assets (IA) during interactions with outside parties.
The number of collaborative research and development agreements is increasing rapidly. Industrial Research Institute member firms are engaging small high technology companies, Federal Laboratories, Universities, international firms and competitors in ways not dreamed of just five years ago. Central to these collaborations is the need to share proprietary intellectual assets to meet the objectives of the collaboration. Equally important is the need to protect that information from unintended use.
The nature of intangible assets such as know how and trade secrets is a barrier to their protection. They are easily shared, travel effortlessly in peoples' minds, and resist being categorized into neat little piles labeled proprietary and non-proprietary knowledge. To complicate matters further, know-how is fun to talk about. Business and technical people are naturally drawn into discussions of how a particular technology works, or the reasons why one technology will outperform another in the marketplace. While these conversations are interesting, employees may inappropriately divulge proprietary information. In this article we will not distinguish between “know how”, which is information or skills required to do something useful, or “trade secrets”, which are valuable information the firm takes specific actions to protect. In particular there are statutory definitions of “trade secrets” that are not especially relevant to this discussion (see sidebar). The real issue is protecting proprietary information, i.e., valuable knowledge a firm wishes to protect from unintended use.
What is a trade secret?
In general a trade secret is information of value to a business that gives some advantage to the business and that the business keeps secret. This notion is a bit vague and a precise, uniform definition is not possible. The term 'trade secret' is defined in various federal and state statutes (e.g., The Uniform Trade Secrets Act, the Illinois Trade Secrets Act) and by legal associations (e.g., The Restatement of the Law Third, Unfair Competition by the American Law Institute). If a company's information meets a statutory definition there are specific protections that can be claimed. To avoid these details, we choose to use the term know-how in this paper, and are referring to proprietary information that a company views as valuable.
To understand how firms successfully share proprietary information in collaborative relationships, interviews were conducted with over twenty representatives of IRI companies. Participants represented a cross section of industry sectors including life sciences, consumer products, oil & gas, chemicals, materials, federal laboratories, control systems, defense/aerospace, electronics and academia. Each was selected because of his/her central role in protecting IA and their organization’s extensive experience in licensing and using collaborative research agreements to meet technology commercialization goals.
The results of this study fall into four general areas: (1) Collaborations require a series of agreements (2) Issues in Non - Disclosure Agreements (3) Issues in Joint Development agreements and (4) Organizational issues that effect intellectual asset protection.
Collaborations require a series of agreements
The reality of the collaborative process is that different legal agreements build on one another as the collaboration moves through various phases. The Non-Disclosure Agreement (NDA) is normally the first agreement in the series. It may be followed by an agreement covering development of new technology such as a collaborative research agreement, a joint development agreement, or an agreement to purchase developments from one of the parties. If the collaboration is successful, they are followed by agreements that enable the operation of a business such as purchase agreements, joint marketing agreements, and various types of licenses to assure each party has the necessary rights to operate their business. Figure 1 follows the process from the exploration period that ends with a signed joint development agreement, to the collaboration period that ends with a signed commercialization agreement. In each stage, specific people carry out specific activities under the appropriate agreements. The limits of each agreement, and an understanding of which agreements have and have not been signed, is a critical piece of information that guides the actions of technical and business staff. Employees’ ability to protect proprietary information is maximized when the legal agreements are in phase with the collaboration’s operational activities. Too often, these agreements get out of phase. For example, when operational managers see agreements as “boiler plate” or “legal stuff”, they press on with development while negotiations are underway but before an agreement is in place. These actions open up both firms to risk. Better to form an effective link between legal/business staff and technical staff that allows the firms’ to collaborate under well crafted agreements.
Issues in Non- Disclosure Agreement
The first line of defense for protecting proprietary information is the Non-Disclosure Agreement (NDA). Also known as the Confidential Disclosure Agreement (CDA), this document allows employees from different firms to share proprietary information; typically technical capabilities, application requirements and business models. This information can be extremely valuable. The hope is that the companies can combine capabilities, or match the capability of one with a need of the other, to create significant business value. These early discussions include information about the marketplace, the specific technical needs, and resources or capabilities that each firm requires to meet the need. These discussions are sensitive and should be held under a NDA.
Experienced technical and business staff understand that an NDA creates an opportunity, not an obligation to share information. These men and women temper its use by applying a large dose of common sense. They take time to understand the purpose of the disclosure and only describe enough information to meet that purpose. It is vital that employees from both firms understand what information is covered, and what information is not covered under the agreement. Neither side wants to be unnecessarily polluted with proprietary information of the other at this early date. Before the joint development agreement is in place, either firm may break off discussions and collaborate with another. Thus, the goal is to provide the disclosee with just enough information to allow them to make the next go-no go decision. This may require a series of meetings with each meeting exposing more and more details within the areas identified in the NDA.
While Table 1 (see below) identifies the major conditions NDAs must cover, three key issues require special attention:
1. what confidential information is being disclosed
2. each firm’s rights to use the disclosed information
3. the timing of confidentiality (both the disclosure and confidentiality period).
Firms avoid misunderstandings when the NDA clearly and accurately identifies the information each party will disclose under the agreement. Writing the description is a balancing act. It must be broad enough to allow each potential partner to evaluate the other’s intellectual assets (IA) and make a go/no-go decision to enter joint development negotiations. However, it must be narrow enough so that only that subset of the firm’s science base, relevant to the potential collaboration, is disclosed.
Once the parties understand what information will, and will not be disclosed, they must agree on each firms “rights to use” the information. The goal is to prevent misuse by either party by clearly stating the purpose of the disclosure. An example is helpful here. A common clause in NDAs state that each party can only use the information for the purpose of evaluating the technology or for discussions related to establishing a potential business relationship. Another common clause is to enable the parties to coordinate in preparing a joint response to a solicitation. These clauses protect the disclosing party from unintended use. They also place a burden on the disclosee to think through its freedom to operate after the disclosure. For example, will the disclosee be able to exit discussions with this firm, and enter into discussions with the firm’s competitor, given the nature of the disclosure? This is a realistic scenario given that the firms are exploring a potential collaboration and have not entered into a joint development agreement. After assessing the disclosed information, either party may decide to terminate discussions and search for a better partner.
This scenario is particularly troublesome for large firms. They are seen as “deep pockets” by small entrepreneurial and venture capital based firms. If any large firm business unit introduces a similar technology into the market, the small firm may feel that its proprietary knowledge was used, or that they stimulated the large firm to invent. It is hard for large technology-based firms to deal with this issue when they have multiple projects, in similar technical areas, proceeding simultaneously in diverse business units, often in different markets and countries.
The time periods specified in NDAs are information management tools. The first is the disclosure period. It states the specific dates during which the disclosure will take place. Information disclosed outside that time period is not covered by the agreement. The confidentiality period is the length of time the information must be protected. It is common to see three year, five year, or in some cases perpetual confidentiality periods. As a general rule, the discloser seeks longer confidentiality periods while the disclosee seeks shorter periods. This reflects each sides desire to minimize risk. Interestingly, the real risk has less to do with time, and more to do with managing information in a modern organization. As people transfer to other departments, leave the company, and simply forget what information was disclosed under NDA versus disclosed publicly, the risk of an improper disclosure increases.
Table 1 – Key Components of a Non – disclosure Agreement
A well-crafted NDA includes statements that describe:
· The identity of the parties
· The purpose of the discussion and/or a description of the potential collaboration
· Whether the agreements is a one-way or two-way disclosure of information
· The rights of each party to use the disclosed information
· What information is protected and what information falls outside the scope of the agreement (i.e., was in the public domain, already in the receiving parties possession, subsequently disclosed by a third party not under the obligation of confidentiality)
· How information will be protected by each party during discussions and returned upon completion of the discussions
· That the agreement does, or does not, create an obligation between the companies (i.e., grant a right, license or commitment to enter into any other agreement)
· The definition of confidential information (i.e., anything marked confidential or verbal information followed up in 30 days by a written description marked confidential)
· Whether or not the agreement can be assigned
· A process for exchanging the information (meetings and discussions are best followed up in writing)
· Governing law.
· An entire agreement clause
· Timing (both the disclosure and confidentiality period)
How much protection does an NDA actually provide?
It is safe to say that thousands of NDAs are signed each month. However, the number of NDA disputes that actually go to court each year is very small. The number of disputes that result in dollar awards sufficient to cover the expense of litigation, and the associated organizational costs, is even smaller. This might lead to the conclusion that NDAs provide true protection in only a small number of very high value, very egregious cases. However, the reality of NDAs is that they serve two valuable functions. First, they raise awareness in the minds of both firms’ employees about the proprietary nature of the information being shared. Second, they protect the patent rights of the disclosing party. In many parts of the world, once an invention is publicly divulged, the right to file for patent protection is forfeited. When the disclosure takes place under confidentiality, the patent filing rights are preserved.
Potential Misuse of an NDA
The most common misuse stems from the enthusiasm of technical staff, not malicious intent. Comforted by the fact that a NDA is in-place and the negotiating teams are hard at work on a JDA, the two firms’ technical staffs begin brainstorming in ways that lead to invention. While no-one wants to stifle innovation in a collaborative relationship, if an invention is jointly created by members of both firms without an agreement in place, that invention is considered a joint invention. Under United States law joint inventorship results in joint ownership. Either partner can do whatever it wants with their patent rights, without the consent of the other joint owner. This includes licensing or selling their ownership interest to anyone they wish including the partner’s chief competitor1. Joint ownership may, or may not maximize the value of the innovation for either firm. Better for both firms to negotiate how intellectual property developed during the course of the agreement will be allocated between the parties and write that agreement into the JDA. Absent that contract, any jointly developed patent defaults to joint ownership with few restrictions on how it can be used.
“Joint ownership – the international perspective”
Collaborations with foreign firms introduce some wrinkles for United States firms that are used to dealing with the United States’ system of allocating and protecting IA rights. One example is the default method of handling jointly owned patentable IA. In the United States the usual practice is allow any one of the owners to use or license the patent without accounting to, or requiring the consent of, the other owner. In most of the world, a patent co-owner is allowed some consideration unless the agreement specifically states otherwise. This could require the co-owner’s approval prior to commercialization or the sharing of financial returns. Another common concern with certain countries is the lack of a proven track record in the courts that demonstrates IA rights are enforceable. Local legal counsel should be consulted about the risks related to enforcing patent rights against infringers, protecting IA against misappropriation, pirating and collecting fees and royalties.
Issues in Joint Development Agreements
Anyone familiar with collaborative research understands the complexity of structuring and negotiating an agreement. While a complete discussion of JDA terms and conditions is outside the scope of this article2, Table 2 contains a list of key components that must be considered in every JDA. We will go into detail on three of them as they relate to protecting tacit knowledge:
1. Developing a clear description of the joint development
2. Bounding the agreement
3. Defining each firm’s rights to use both background and foreground IA.
Developing a clear description of the joint development is difficult because each firm is good at what it does, but not so good at what the partner does. Therefore, it’s hard to assess each others skills and capabilities, and ensure that the firms’ combined resources are sufficient to carry out the development. The result is uncertainty when writing the Statement of Work.
Good Statements of Work carefully and completely describe the obligations of the parties including, what each party will do separately and what the parties will do together. However, since collaborative agreements often target projects at the edge of both firms’ capabilities, the outcome is uncertain. The worst case scenario is when employees in both firms carry out their responsibilities but the end result is lacking because the initial plan was incomplete. While there is no sure cure for this situation, a well-crafted Statement of Work minimizes the risk. Part of crafting the agreement is ensuring that each side has access and rights to the specific know-how needed to carry out their roles (and joint roles).
The second challenge is bounding the agreement. Boundaries are a clear statement of the scope of the alliance. Inside the boundaries, the firms are allied. They will play by a set of rules defined by the alliance agreement. Outside the boundaries, the firms are not allied, and a different set of rules will apply. Boundaries are determined by translating each firm’s business and technical intents into a set of statements that determine the scope of the alliance. The scope is often determined by asking each firm to describe its business and technical intent along four dimensions; technologies, markets, products and geographies.
Severe problems arise when boundaries are not clearly defined. Take the example of two firms collaborating to develop one or more products, under an agreement in which the firms agree on significant restrictions on the use of each other’s background intellectual property. The management of Company A views the product boundaries of the collaboration as the circle on the left in Figure 2, while the management of Company B believes the product boundaries are represented by the circle on the right. The first product being cooperatively developed is in the overlapping area, which both firms agree it is inside the boundaries. Now suppose Company B uses Company A’s background intellectual property in a different product represented by Point 1. Company B believes that such use is allowed under terms of the alliance agreement that permits use of the partner’s background intellectual property in products within the boundaries. But Company A does not recognize the product represented by Point 1 as inside the boundaries, and is angered since the alliance agreement does not permit the use of each other’s background intellectual property outside the boundaries. Company A’s managers react badly since they view Company B’s behavior as a deliberate violation of that agreement. Managers in Company B do not understand Company A’s reaction because they believe Point 1 is within the boundaries. Actual disputes can be more complex than this example, since the dimensions of boundaries can encompass not only products, but also underlying technology, classes of applications or customers, or geographical regions. To avoid this arguments, which sometimes stem from genuine misunderstandings, it is essential that prospective alliance partners carefully define the boundaries as part of the negotiation3.
The third challenge is defining each firm’s rights to use background and foreground intellectual assets. For any collaborative research agreement to succeed, each partner must have the necessary background rights from the other (and possibly from third parties) to carry out its roles in the alliance. Furthermore, the agreement must allocate foreground rights between the collaborators in a mutually satisfactory way. Our interviewees are careful to outline the rights each firm has to the background of the other, and the jointly developed foreground under three conditions; inside the boundaries of the collaboration, outside the boundaries, and upon termination of the agreement. These rights extend to all types of intellectual assets, not just patents.
Table 2 – Key Components of a Joint Development Agreement
· Clear Understanding of Value Proposition from both firms’ perspective
· Description of relationship
· Statement of Work
· Funding and Costs
· Boundaries of the agreement
· Each firms rights to use Background intellectual assets inside/outside the boundaries and upon termination
· Each firms rights to use foreground intellectual assets inside/outside the boundaries and upon termination
· Which partner(s) are responsible for third party relationships
· What rights do third parties have to the partners’ intellectual assets
· License terms (if a licensing agreement)
· Supply terms (if a supply agreement)
· Protection of confidential Information
· Term and termination clause
· Governing Law
· Assign ability
· Indemnifications, warranties, and disclaimers
· Compliance Issues (export etc)
NDAs and JDAs are documents that provide legal protection to intellectual assets. These documents are most effective when they are supported by specific organizational actions. One action is to ensure
that both firms will provide the quantity and quality of resources (including know-how) needed to make the collaboration a success. There is a subtle but critical insight related to this issue. Every research collaboration is really “three collaborations in one” (See Figure 3). The first is the alliance between Company A and Company B. The second is the internal alliance among key groups inside Company A. The third is that same internal alliance inside Company B. If any of these internal groups do not understand the agreement, or fail to coordinate their resources with those of the other internal groups, problems arise. For example, if one group in Company A’s internal alliance is out of phase with the others, and does not provide the appropriate quantity or quality of resources/information; the entire relationship may be at risk.
Experienced companies deal with this issue by assigning members of all key groups to the planning and negotiating team. This ensures effective communication of the agreement, as well as buy-in of key stakeholders. The best teams involve members from every group that will provide critical resources to the collaboration during implementation, and members from key corporate groups that have decision making authority (i.e., finance, tax, IP).
Tracking the portfolio of licenses and collaborative agreements
Companies maximize the value of their IA portfolio by entering into a wide variety of licensing and collaborative agreements. Tracking these agreements is an onerous task, especially when exclusivity is granted. Exclusivity is the third rail of collaborative agreements. Large technology-intense firms shy away from exclusivity because tracking the myriad of constraints increases exponentially with the number of signed exclusive agreements. The problem of tracking patents is trivial compared to tracking note book entries and know-how never captured on paper. Few firms have a neural net powerful enough to track exclusivity in all its forms. Furthermore each asset can be exclusively licensed in terms of field of use, time, based on continued payments, and geography. The use of exclusive agreements is particularly burdensome in JDAs because managers must ensure that potential jointly developed foreground is not constrained by exclusively licensed background in either partner.
Having outlined the negative impacts of exclusivity, there is one overriding positive impact. Exclusive agreements can unlock real value. There are potential partners that will only collaborate on an exclusive basis. Some firms can only maximize the relationship’s value when they receive exclusive rights. It is easy to lose sight of the market place impact of exclusive relationship when focusing on tracking. It may be worth the investment to acquire a sophisticated commercial tracking tool and remain focused on value creation4.
These tracking tools can pay for themselves during JDA negotiations.
A common challenge during joint development negotiations is tracking each firm’s IA needs as those needs unfold. During early negotiations the parties may discuss the need to grant each other background rights that are not encumbered in either firm. As negotiations continue, the parties may add requirements that sweep in additional IP that is encumbered. To deal with this challenge, one interviewee conducts three (3) intellectual asset checks during negotiations. The first occurs during early discussions. That IA check informs the internal team and the potential partner of any IA encumbrances that impacts the current vision of the collaboration. A second check occurs midway through negotiations and checks for encumbrances on any additional intellectual assets the collaboration requires. The final check occurs prior to signing the agreement. This last check is particularly is important because large swings in each firm’s negotiating positions often occur at the end of negotiations. Those swings may have an important impact on IA needs.
Training employees to protect intellectual assets through their every day behaviors.
Well crafted NDAs and JDAs are a necessary but not sufficient condition to protect intellectual assets. An equally important line of defense is a technical staff that understands how IAs create value for the firm, and knows how/when to share them.
Taking employees through a well constructed intellectual asset training program breaths life into everything outlined above. Management takes a giant step forward when it creates an environment in which every member of business and technical staff understand more than just the principles, but the rigors of protecting IA. While most technology managers believe their staff is well versed in this area, they may be overconfident. Take this simple test. Ask five technologists to answer the following question, “What are our firm’s proprietary intellectual assets as they relate to this collaboration?” The alignment or lack of alignment of the responses is a useful indicator. Intellectual asset training is an organizational protection mechanism that augments the legal protections of the NDA and JDA. At a minimum, this training must clearly outline to team members what intellectual assets they:
1. must share with the partner
2. may share with the partner
3. must never share with the partner.
When technical staff understands these limits, they monitor their own behavior.
Protecting your know-how in University relationships
The university culture of open sharing is both a leverage point and a barrier to industrial collaboration. From a leverage point perspective, university researchers nurture the leading edge thinking that results in future products. From a barrier perspective, university researchers share information vigorously. When dealing with universities, leading firms use all the techniques outlined in this article and take two additional steps to protect their commercial interests. First, they clearly outline the university’s rights to disclose the results of the collaboration at conferences and in academic journals. Second, they ensure that every academic colleague working on the project, including graduate students, understand the terms of the agreement(s). Most graduate students have little or no experience with contracts such as non-disclosure agreements. While the university should describe the obligations of the agreement to its personnel, the corporate partner is well advised to ensure each university employee understands these obligations.
Educating your employees solves half the problem. The other half is ensuring that the partner’s employees are equally sensitive to IA protection. Do the partner’s employees know how to protect your IA? Do they know which disclosed material is sensitive and which is not? Apart from the assurances in the contract, behavioral training ensures that employees in the partner firm understand the basic principles of IA management and how they apply to this particular collaboration. The collaboration’s kick off meeting is an important intervention point. It may be one of the few times that all of the collaborators are together at the same time. Leading companies use this opportunity to ensure that team members from both firms come to a common understanding of what will be shared, and how the shared information will be protected.
Third party involvement is another aspect of protecting know-how that deserves management attention. Most research collaborations include one or more consultants, contract employees, and/or third party companies. The concern goes beyond what is written in the NDA concerning third parties. The concern goes to the third party’s understanding of what is proprietary, and a clear understanding of their responsibility to protect that information. Again, training employees to identify and protect proprietary information is key. This is particularly important in university relationships. Universities have a culture of open sharing. Graduate students must produce a thesis that is publishable. They are encouraged to share intellectual assets, not protect them. These students will work in their chosen field, and may work for your competitor. Their continuing responsibility to protect your firm’s IA upon graduation is an important discussion topic.
This discussion highlights the two-fold challenge of protecting intellectual assets. From a legal/contractual perspective, nothing substitutes for a series of well-crafted legal agreements such as a Non-Disclosure Agreement and a Joint Development Agreement. These documents contain the intellectual asset terms and conditions each side must abide by during the collaboration. They also ensure that collaborating researchers have the necessary rights to carry out the collaboration and take the fruits of the work into the marketplace.
From the human behavior perspective, firms must ensure that collaborating researchers have an understanding of the relevant terms of the contract, including what information must and must not be shared. While this sounds straightforward, it is not. The real challenge with protecting intellectual assets is that they are both “leaky” and “sticky”. They leak out of the organization with every visit of an outsider, and they stick in the minds of anyone who hears them. It takes one nanosecond for the person who just learned interesting information to convince themselves that they always knew that information, and therefore have a right to use it. Providing training to members of both firms, with a specific focus on protecting sensitive information during the course of the collaboration, pays enormous dividends.
) The actual words are found in The United States Patent law at 35 U.S.C. 262. They state “in the absence of any agreement to the contrary, each of the joint owners of a patent may make, use, offer to sell, or sell the patented invention within the United States, or import the patented invention into the United States, without the consent of, and without accounting to the other owners”
2) The interested reader is directed to The Strongest Link: forging a profitable and enduring corporate alliance by Gene Slowinski and Matthew Sagal, AMACOM Press, June 2003, Corporate Partnering: structuring and negotiating domestic and international strategic alliances by T. Villeneuve, R. Gunderson and D. Kaufman; Aspen Law and Business, third edition and The New Companion to Licensing Negotiations: Licensing Law handbook 1996-1997 edition By Robert Goldscheider, Clark Boardman Callaghan, New York, NY.
3) Slowinski, Gene and Matthew W. Sagal, “Allocating Patent Rights in Collaborative Research Agreements”, Research * Technology Management, January-February 2006.
4) A fairly comprehensive list of IP Management software can be found at http://www.ipmenu.com/ipsoftware.htm
The link includes a short description and a link to their websites. The
magazine Intellectual Property Today has issued a comparison of many of these tools (see Richard C. Woodbridge and Maria Christos “Do You have the Right IP Docketing System?” Intellectual Property Today, April, 2002).
Gene Slowinski, Ph.D. is the Director of Strategic Alliance Research at Rutgers University Business School and the Managing Partner of the Alliance Management Group Inc., Gladstone NJ. An author and lecturer, Dr. Slowinski has over 20 publications in the areas of technology management and business development. He is the author of two books, The Strongest Link: forging profitable and enduring corporate alliances and Reinventing Corporate Growth. firstname.lastname@example.org
Edward Hummel is Director of Business Development for Bell Laboratories in Murray Hill, NJ. He has worked at Bell Labs/Lucent Technologies for 20 years. In his current position he is responsible for R&D collaborations, technology transfers, and government programs for Bell Labs Research. Hummel received a Ph.D. in Physics from New York University and an MBA from the Wharton School. email@example.com
Robert J. Kumpf is Vice President of Future Business at Bayer MaterialScience in Pittsburgh, PA. In his current position he leads Bayer Material Science groups in the Americas region focused on identifying and developing new markets and applications for Bayer’s products and technologies. Dr. Kumpf received a Ph.D. in Material Science from Penn State University. Robert.firstname.lastname@example.org
hactual words are found in The United States Patent law at 35 U.S.C. 262. They state “in the absence of any agreement to the contrary, each of the joint owners of a patent may make, use, offer to sell, or sell the patented invention within the United States, or import the patented invention into the United States, without the consent of, and without accounting to the other owners”
 The interested reader is directed to The Strongest Link: forging a profitable and enduring corporate alliance by Gene Slowinski and Matthew Sagal, AMACOM Press, June 2003 and Corporate Partnering: structuring and negotiating domestic and international strategic alliances by T. Villeneuve, R. Gunderson and D. Kaufman; Aspen Law and Business, third edition.