IP Ownership Considerations in Multi-jurisdictional Software Development Agreements

By and on June 10, 2021

As a result of the healthcare sector’s growing dependence on software, health IT companies are increasingly taking advantage of globalisation to engage contractors in low wage jurisdictions to develop their user-facing software applications. This can trigger unforeseen legal risks owing to the differing laws across jurisdictions related to the ownership and transfer of intellectual property (IP) rights.

At the most extreme end, best practices in some jurisdictions are unenforceable or even impermissible in others. In view of these issues, it is strongly recommended that a company looking to take advantage of cross-border contracting for critical development eorts should carefully consider the choice of law provisions in their agreements, and engage with local counsel to ensure proper vesting of intellectual property rights.

An inability to demonstrate proper ownership of such rights can be a substantial obstacle for later financings or in corporate activities. Depending on the jurisdictions involved, a contracting company may need to concern itself with at least three types of IP in the software that is developed on its behalf: copyrights, moral or author’s rights, and patents.

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Katya Ascher
Katya Ascher focuses her practice on patent law issues in litigation and transactional matters across technology sectors. She regularly negotiates every type of agreement associated with technology transfer, research and development, manufacturing and distribution. She has over a decade of experience counseling clients in the United States, France, and the United Kingdom. Her clients include mid-sized companies and start-ups, operating in the biotechnology, pharmaceutical, medical device, and engineering fields. Read Katya Ascher's full bio.

Edouard Becker
Edouard Becker focuses his practice on intellectual property law, with a particular focus on pharmaceutical, medical device, biotech and healthcare industries. He regularly advises French and foreign companies on transactional, licensing and regulatory matters. He particularly advises life sciences companies in the preparation and negotiation of collaborations, licensing and distribution agreements. Read Edouard Becker's full bio.