Ownership – which entity will own IP?
If co-ownership, build necessary protections (enforcement, maintenance, confidentiality, etc.)
Licensing – which entities will receive licenses to IP?
Terms – royalty-bearing, restricted to fields of use, geography, etc.
“Foreground” v. “Background”
“Foreground IP” - IP owned by the JV and can be an improvement of Background IP ("Project IP")
“Background IP” - IP licensed by either partner to the JV
Foreground IP conundrum – if you don’t have rights to the Background, you can’t use any Foreground that is an improvement to the Background...“Embedded IP” problem