Managing IP and Sensitive Data Risks in Co-Development Arrangements

 Guiding Gershman Law, PLLC, as founder and partner, Dyan Gershman delivers legal counsel that meets the needs of international businesses maintaining or exploring US operations. One area in which Dyan Gershman regularly assists clients is forging business and commercial contracts in areas such as distribution, licensing, and co-development.

Also known as joint development agreements, co-development arrangements synergistically bring together two companies that each have technical competencies and/or financial resources that the other lacks. Together, they undertake the research and development of specific products and services that would be challenging to develop alone, with the aim of introducing them commercially.

In many cases, co-development agreements are undertaken between enterprises that are natural competitors. All too often, co-development is arranged with a default joint ownership arrangement in place, which becomes problematic when one of the companies moves to commercialize a project’s work without obtaining the co-owner’s consent (and often without sharing resulting revenue).

This potential pitfall makes it essential to negotiate the co-development agreement carefully, in ways that protect the intellectual property (IP) that each party brings to the table. Undertaken at the outset of a project, carefully drafted contracts safeguard against IP infringement and also provide control to specified parties for all aspects of IP disposition, such as licensing. In addition, they address areas of risk through confidentiality and nondisclosure agreements that are a prerequisite to sharing confidential data and trade secrets.

A well-crafted co-development agreement goes in-depth in defining which components of intellectual property used in complex joint undertakings are owned by which party, as well as ensuring that sensitive material are not shared beyond the strict shared parameters of the project.

Brief History of Tennis

 Dyan Gershman received her juris doctor degree from Boston College Law School, where she was also executive editor of the Boston College Law Review. She has been practicing law for over 25 years and is a resident of New York City, where she is the founder and partner of Gershman Law, PLLC, a boutique corporate law firm serving both U.S. and international clients. Away from work, Dyan Gershman enjoys playing tennis.

The sport of tennis, in which two or four players hit a ball back and forth over a net using rackets, has a long history. Tennis was invented in the 12th century in France and was first played with just the palms and a ball. It was initially known as jeu de paume (game of the palm), a tough indoor ball game. King Louis X of France was the first documented tennis player. In the 16th century, the game evolved to being played with rackets and balls made with wood. It later became known as lawn tennis (courte paume), a name coined by the British, who started playing on grass courts.

The game grew in popularity over the next few hundred years, eventually reaching across Europe. Henry VII and Henry VIII, both of whom commissioned tennis courts across England, were enthusiasts of the game. Competitive tennis grew in the United States over time. The first court in the United States (a grass court) was established in 1874 in Massachusetts. Only men's singles were played in the first year of the Wimbledon Championships (1877), and women weren't allowed to compete until 1884. In the late 1960s, significant championships became available to both pros and amateurs, and this trend continued into the 1970s with increased television coverage of the tournaments.

WBASNY Opposes U.S. Supreme Court Decision on Women’s Health Law

 

New York attorney Dyan Gershman leads Gershman Law, PLLC, where she provides corporate legal services to clients ranging from large corporations to small businesses. Active in her professional community, Dyan Gershman is a member of the Women’s Bar Association of the State of New York (WBASNY), which provides resources and education to 4,000 legal professionals statewide.

In May 2022, WBASNY made a public statement on behalf of the right of women to choose and make their own decisions about reproductive health care. The context was the U.S. Supreme Court’s expected decision to repeal key protections in this area offered by Roe v. Wade. For nearly a half century, this precedent safeguarded women’s access to abortion as a “fundamental constitutional right.”

The dangers posed by the Supreme Court’s then-pending (and since issued) decision in “Dobbs v. Jackson Women’s Health Organization” is not as acute in New York, as the Reproductive Health Care Act passed in 2019 codifies Roe v. Wade protections into state law. This means that women will continue to have access to safe abortions in New York, even though Roe v. Wade is now overturned. However, discussions are underway on ending women’s right to abortion at the federal level, and that would have a major impact. The WBASNY recommends that New York respond by replacing the present “patchwork of laws” with an Equal Rights Amendment enshrined within the state constitution.

About NYWBA's Mentoring Circles Program

A successful corporate lawyer, Dyan Gershman leverages nearly three decades of legal experience to serve as managing partner of Gershman Law, PLLC, in New York City. Since founding her law firm in 2014, Dyan has assisted and counseled many clients on a wide range of legal and corporate matters, including corporate law, mergers and acquisitions, joint ventures and strategic alliances, and equity investments. Dyan Gershman holds membership with several legal associations, including the New York Women’s Bar Association (NYWBA).

The New York Women’s Bar Association’s (NYWBA’s) Mentoring Circles Program allows members to gather in sessions where they interact and share pertinent professional development knowledge and ideas. The program is voluntary and welcomes professionals at all stages of their careers. Any member can share personal experience and helpful ways to tackle specific professional challenges with other members. Most importantly, the Mentoring Circle’s program creates a conducive, supportive professional development environment in a less formal setting.