Chapter 9 explores the many situations in which new IP is developed under a licensing or other agreement, and how that IP is owned and licensed. Attention is given both to licensee developments (improvements and derivative works of licensed rights), which may be subject to grantback and license-back arrangements (Kennedy v. NJDA) and new IP developed by a licensor under a services arrangement (e.g., commissioned works, customizations) (IXL v. AdOutlet) and the incorporation of third party components in developed technologies. The chapter also addresses the complex issues that arise from joint development of IP, including treatment of foreground, background and sideground IP, and how IP is used in the context of joint ventures (Pav-Saver v. Vasso). The chapter concludes with a discussion of the allocation of responsibility for IP management, maintenance and prosecution.

Chapter 26 covers IP pooling arrangements, first discussing the efficiency and enablement goals of such arrangements, including motivations for pooling. It then discusses the antitrust analysis of IP pools beginning with Standard Oil (Indiana), which established that pooling for the purpose of eliminating blocking positions can be viewed as procompetitive, and then discussing more recent agency pronouncements. The use of pools for patented standards is discussed in the context of DOJ business review letters for the MPEG-2 and 3GPP pools. Features such as complementarity, essentiality, defensive termination, grantbacks and nondiscrimination are discussed. The chapter concludes with a discussion of defensive patent aggregation and how it differs from other forms of pooling.