Five patents, the subject matter of which had been developed during the joint venture, were the subject of the Original Orders. The patents were owned by companies associated with one of the joint venture parties (“the Grooms”). The Original Orders required the other joint-venture parties to pay a proportion of the costs associated with the development of the subject matter of the patents, and in return, the other parties were to acquire a proportionate proprietary right in those patents.

Variation of the Original Orders was sought by the Grooms who claimed that another joint venture party (“the Wicketts”) had also developed intellectual property during the joint venture agreement and thus the Grooms should be entitled to own a proportion of the Wicketts’ intellectual property. The Wicketts asserted their intellectual property had been developed after the joint venture ended and so was solely theirs.

His Honour declined to vary the Original Orders because, among other reasons, it was nearly four years after the Original Orders were made that the Grooms first indicated that they wanted to amend the orders. His Honour relied on authority that an application to set aside orders should be made as soon as possible after it comes to the applicant’s knowledge.

This case illustrates the potential for lengthy disputes to arise over the ownership of jointly developed intellectual property. To avoid disputes parties should both define from the outset how jointly developed intellectual property is to be owned and funded and then monitor compliance with agreed arrangements throughout the joint venture.