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   Author  Topic: Patent strategy  (Read 1304 times)
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Patent strategy
« on: Jul 30th, 2007, 12:52pm »
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Hi!
I am working for a small chemistry start-up, who recently got a first cooperation project with a major global multinational company.  
As responsible for patents I wonder how we could take advantage of this by patenting?
My strategy was to file joint-patents to raise value of our start-up, involve this company and attract venture capitalists. Moreover we could get aquired by this firm?
Futhermore we could get involved in their contracts internationally.  
How could be benefit more? What would be the risks of such a joint-patent ?
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Bill Richards
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Re: Patent strategy
« Reply #1 on: Jul 31st, 2007, 8:24pm »
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You must exercise great care at the outset of any joint development.  If you're bringing IP (inventions, concepts, ideas, copyright, etc.) into the mix, you'll want to clearly establish who owns what before any information changes hands or joint work begins.  Even more important, decisions need to be made and solid agreements put in place that define who owns what IP that is jointly developed.  What about improvements to your core technology developed by the other party?  And, of course, all this works both ways.
You really need to speak with an attorney versed in such matters to protect not only what you have now, but what may likely be developed in the future.  It's no time to try to save a few bucks, because it could mean problems down the road.
I'd also be interested in what kind of position the large company is taking.  Aren't they raising these same issues?
Don't let the possibility of great things down the road cloud your good business judgement in the present.
« Last Edit: Jul 31st, 2007, 8:32pm by Bill Richards » IP Logged

William B. Richards, P.E.
The Richards Law Firm
Patents, Trademarks, and Copyrights
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boozerker
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Re: Patent strategy
« Reply #2 on: Sep 17th, 2007, 4:39pm »
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on Jul 31st, 2007, 8:24pm, Bill Richards wrote:
Don't let the possibility of great things down the road cloud your good business judgement in the present.

Solid advice there, never just assume that all the details work themselves out in the end. Rarely is everyone on the same page , especially when agreements are complex and verbal -- but even with simple plans things can quickly go sour and become way more unmanageable when trying to fix miscommunications after the fact. And that's just with friends/acquantices.  
 
Business decisions in writing is often critical. Especially when sharing ideas, people often believe they had contributed an idea even if not originally theirs. It's a common human error.  
 
on Jul 31st, 2007, 8:24pm, Bill Richards wrote:
You must exercise great care at the outset of any joint development.  If you're bringing IP (inventions, concepts, ideas, copyright, etc.) into the mix, you'll want to clearly establish who owns what before any information changes hands or joint work begins.  Even more important, decisions need to be made and solid agreements put in place that define who owns what IP that is jointly developed.

Bill, is that still possible if you enter the joint development with an already established group? Let's say you get the owners of a toy-making place to sign a Nondisclosure agreement, they like your prototype and have the resources to get the product out quicker. Can you form a legal agreement where you own a smaller percentage of the final design and/or any of its variations that you might help with afterwards?  
 
Curious.  
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Bill Richards
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Re: Patent strategy
« Reply #3 on: Nov 2nd, 2007, 4:06pm »
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on Sep 17th, 2007, 4:39pm, boozerker wrote:
Bill, is that still possible if you enter the joint development with an already established group? Let's say you get the owners of a toy-making place to sign a Nondisclosure agreement, they like your prototype and have the resources to get the product out quicker. Can you form a legal agreement where you own a smaller percentage of the final design and/or any of its variations that you might help with afterwards?

As I think I've said before, a plain NDA does not, in my opinion, go far enough in protecting IP rights.
To the extent I understand the question, an agreement on the disposition of IP rights can take many forms.  It's always possible to adjust rights in the invention based upon whatever the parties agree.  It's generally more difficult to fix these issues after the fact.  Remember that inventorship is not based upon an agreement, it's a decision for the practitioner to make based upon the facts of the case.  Ownership, based upon agreements to assign, is another, albiet related, issue.
Does that help?
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William B. Richards, P.E.
The Richards Law Firm
Patents, Trademarks, and Copyrights
614/939-1488
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