Tech & Sourcing @ Morgan Lewis


Effective management of intellectual property is crucial in the contracting stages of technology projects. Various types of intellectual property can be subject to protection in an agreement and may receive different types of treatment. For example, copyright protection, patent protection, and know-how (trade secrets) are all subject to different rules when it comes to contracting.

Types of IP

Copyright protection generally applies to written text, like manuals, reports, or computer-readable code, and does not require specific registration to be effective. Control over disposal rights is required in order to grant copyrights, and protection under copyright lasts 70 years from the death of the last author.

Patent protections apply to novel and nonobvious methods, devices, and systems and require extensive patent application procedures in order to secure protection. The length of a patent protection is limited; however, the term of such protection can be extended.

Know-how, or trade secret information, can be protected as commercially sensitive, confidential information for as long as the information remains confidential.

In some cases, more than one of these intellectual property protections can be applicable to a certain asset. For example, software can be protected under copyright rules, but certain software features may also be protected under patents and/or as trade secrets.


In managing intellectual property, it is important to establish internal measures to monitor the development and use of internal and external intellectual property. In any given agreement, a party may be granting and receiving intellectual property rights to access, use, and/or modify the intellectual property of the other party, and it is important that such exposure be carefully monitored to ensure compliance with the agreement.

Internal measures to monitor use include tracking an inventory of all intellectual property that is developed or otherwise acquired and used, setting up corporate repositories for intellectual property development, and instituting internal awareness programs to ensure employees are aware of and comply with internal rules and responsibilities.

Additional considerations for effectively managing and contracting for intellectual property rights are employment issues and how “work for hire” rules may vary by country, nondisclosure agreements or confidentiality clauses to prevent unauthorized access to proprietary information, tax implications, and regulatory risks including cross-border transfer of technology and required governmental authorizations.