A lifetime of work: the possibilities and problems of co-owned IP

The recent news that Stefano Gabbana stepped down from his role as Chair of Dolce & Gabbana S.r.l. got me thinking about his collaboration with Domenico Dolce – a collaboration beginning in 1982 and delighting fans of their deeply Italian aesthetic since! Readers of The Patent Lawyer may fear a deep dive into artisanal lace and religious iconography in their long-running work with Madonna is coming, but fear not: instead, we are going to consider key concerns arising from a lifetime of developing joint IP.

Co-ownership arises

IP co-ownership may involve two or more parties and arise automatically through the collaboration of the parties in the invention. By default in the UK, the inventor is usually the first owner of an invention unless they devised the invention in the course of their employment, wherein ownership will generally pass to their employer. 

Where the invention is the product of collaboration between two or more institutions or companies, the situation becomes more complex, depending on who contributed to the underlying inventive concept.  

Navigating international exploitation of co-owned IP

It is easy to consider co-ownership only from the perspective of the jurisdiction in which the IP is developed, but each co-owned patent will be subject to different national laws. 

Under UK law, a co-owner may not, without the consent of its co-owner, assign, license, or take security on a patent. Whilst in Germany, profits must be shared between co-owners in proportion to their shares in the patent (which may not be equal); consent for another co-owner to license must not be unreasonably withheld. These asymmetries can create real commercial friction, particularly for cross‑border licensing strategies, freedom‑to‑operate assessments, and investor due diligence.

Common catalysts for disputes between owners of joint IP success are a sure-fire way to smoke out disputes between potential co-owners. 

Take the case of Bionome Technology Limited v. John Russell Clearwater [2024] EWHC 3155 (Ch), in which three collaborators jointly developed new weed-killing technology. 

They had a draft collaboration agreement intended to establish IP ownership (and remuneration) between them, but it was never signed, creating uncertainty as to ownership of the resulting invention. Over time, one of the three original collaborators (Clearwater) ceased to be involved. Ultimately, a patent application was filed, and Clearwater brought an entitlement claim asserting that they should be a co-owner of the invention. 

The Judge held that the draft agreement “was neither an assignment nor an agreement to assign. There was just too much uncertainty and too many intervening future steps or pre-conditions referred to in the Objectives section, which needed to be satisfied before such an assignment could take place.” The result of the High Court’s decision was that the patent was co-owned by Bionome and Dr Clearwater.

Fairness parties will often perceive co-ownership as a neutral or fair outcome. Disputes may arise where a contributor feels they are not fairly credited as a co-owner.  In the copyright case of Kogan v Martin and others [2019] EWCA Civ 1645, the Court of Appeal determined that Ms Kogan should be identified as a “co-author”, with her contribution (and therefore ownership) relating to 20% of the finished work.

These situations inevitably cause issues in commercializing IP, but for patents, problems can start earlier – whether through entitlement claims or through uncooperative co-owners seeking to make mischief in the prosecution of the patent through correspondence with the patent office.  In one example we saw, a co-owner objected to its co-owner assigning its rights in the patent application to a third party, forcing the patent office into an extremely tricky position!

Clarity in co-ownership and collaboration

As we’ve seen, parties may fall into co-ownership by accident or an attempt to create a “fair” division of ownership between collaborators, but without clearly apportioning each owner’s individual rights in relation to the invention. Consequently, joint owners may find themselves deadlocked: unable to license, enforce, or exit the arrangement without unanimity. 

Co‑ownership agreements offer a way out of uncertainty by supplementing or displacing default local law and instead allocating specific rights to each of the parties: exclusive fields or territories, defining licensing rights, and setting out enforcement mechanics.

Collaboration remains fundamental to innovation, but collaboration without clarity is a fertile ground for dispute. We therefore recommend clarifying ownership at the outset or, if that isn’t possible, whilst the parties are still on speaking terms. 

And, as to Stefano and Domenico, well, you’ll be pleased to know that this is not the end of their collaboration; whilst Stefano Gabbana has stepped down as Chair, he and Domenico Dolce remain co-creative heads of Dolce & Gabbana and, with luck, their collaboration will continue for some time to come.

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