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Author Topic: Patent Rights Licensing Question  (Read 540 times)

VegasMike

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Patent Rights Licensing Question
« on: 04-13-17 at 11:21 am »

I have developed and filed a PPA on an electronic device. A company is interested in licensing, manufacturing, and selling the device. The company estimates they will spend $50,000 to $100,000 to gear up for production, injection molds, etc.   From past conversations with the company, I'm fairly sure they will want to share in my patent rights and or intellectual property rights. Is this normal and customary or should I insist on retaining complete intellectual property and patent rights even though they may spend $100,000 making my device ready to manufacture? What is normal and customary in this situation?

Mike
« Last Edit: 04-13-17 at 11:31 am by VegasMike »
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MYK

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Re: Patent Rights Licensing Question
« Reply #1 on: 04-14-17 at 02:17 pm »

There's no "normal and customary", it depends on what you and they want and can mutually agree upon.

They may only be interested in acquiring ownership of the patent rights.  They may be willing to license them from you.  That license might be exclusive or nonexclusive.  They may decide to let you battle it out with the USPTO and only pay you if you succeed in getting a patent.  It all depends.

My employer recently had a similar situation.  The application in question was so badly done that there was no point in licensing or acquiring it -- which was a shame, because we wanted it to be able to block others from the space.  It would have been much better if we could have bought a valid, enforceable patent, but it wasn't going to happen.

On the other end of the spectrum, one of our former forum regulars knew an inventor who spotted an opportunity to patent something that Intel would need for its future generations of processors.  He got the patent on it, and when Intel finally reached the point of needing it, he licensed it to them for eight figures.

So, it really depends.
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"The life of a patent solicitor has always been a hard one."  Judge Giles Rich, Application of Ruschig, 379 F.2d 990.

Disclaimer: not only am I not a lawyer, I'm not your lawyer.  Therefore, this does not constitute legal advice.
 



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