Intellectual Property Law Firm Representing Clients in Patent, Trademark, Copyright, and Trade Secret Matters
I have been working with The Cohen Law group for over 16 years. They made registering all of our trademarks a breeze.
- David O.
Los Angeles Patent Licensing Attorneys
Los Angeles Patent Lawyers Help Patent Holders Negotiate Fair, Reasonable, and Legally Compliant Licensing Terms
One of the benefits of holding a patent for an invention is the ability to exclude others from using the invention一unless they work out an agreement with you to do so.
Such an agreement is expressed in a patent license. A license gives another party the right to use your patented invention. In exchange, the licensee typically pays the patent holder for the right to use the invention.
Negotiating patent license agreements can be complex. To ensure your rights as a patent holder are protected, talk to an experienced Los Angeles patent attorney today.
Types of Patent Licenses
Patent licenses generally come in two forms: exclusive licenses and non-exclusive licenses.
Exclusive licenses transfer all the ownership rights in a patent to a licensee. As the patent holder, you retain the title to the patent. The licensee, however, gains the rights to create, use, and market the invention named in the patent, as well as the right to exclude others from doing so. An exclusive license is only effective if every patent owner agrees to its terms.
Non-exclusive licenses give only certain specified rights to a licensee. For instance, a non-exclusive license may allow the licensee to produce the invention or design but not exclude others from doing so. The patent holder retains the right to produce the invention or design on their own, and they also retain the right to license others to do so. A non-exclusive license is effective if at least one patent owner agrees to its terms.
Advantages of Licensing Your Patents
A patent grants you certain exclusive rights, including the right to produce and sell your product or design. Yet licensing these rights to others comes with benefits as well.
Outsourcing Production and Marketing Work
All inventors seek to create new products and ideas. But, not all inventors want to be responsible for creating or selling the products that result from the invention. Licensing allows patent owners to outsource this work to production and marketing experts, so inventors can focus on inventing.
Manufacturing and distributing products comes with business risk. By licensing a patent, the patent owners can allow others to take on that risk一shielding themselves from the risk while continuing to share in the benefits of production and sales.
Enabling Global Distribution
Many entrepreneurs and startup companies produce patent-able inventions, but they lack the infrastructure and labor power to release their inventions to a global market. Licensing allows these inventions to reach more people, resulting in potentially higher returns.
Preventing Costly Patent Infringement Issues
Patents grant exclusive rights to their owners. When others create or sell the patented invention, they infringe on these rights, requiring patent owners to respond with protracted and costly legal action. By granting permission in the form of a license, patent owners prevent the need for lawsuits – and share in the benefits of others’ uses of the invention.
Patent licenses can be limited, placing the patent owner in control of those limitations. The patent owner may choose who will receive a license, what powers the licensee will have, and the time limits on that agreement. Licenses thus allow patent owners to exercise control over their intellectual property without having to be solely responsible for production or marketing.
Mistakes to Avoid in Patent Licensing
Patent licenses must often be tailored to the invention, the intended uses, and the parties involved in the licensing agreement. As a result, patent licenses can be complex. Several common pitfalls may arise.
Saying “Yes” Before Creating a License Agreement
New business ventures can be exciting. Even if you give a potential licensee a verbal go-ahead, however, they may still be infringing on the patent without a legally binding written agreement. Resist the urge to jump into work with a potential licensee before completing the paperwork.
Underestimating Royalty Amounts
Patent owners know a great deal about their inventions, but they may know less about the market for finished products. Without this information, a patent owner may greatly underestimate the value of their patent – and the value of the royalties they should receive in a license agreement.
Omitting a Performance Obligation
As a patent owner, you control the content of your patent – but you don’t control what a licensee does with it. A performance obligation clause in a patent license requires the licensee to meet specific milestones. It requires the licensee to show they are building the business they promised to build around your invention. To protect your investment, ensure your license includes performance obligations.
Skimping on the Grant Clause
The grant clause specifies which rights the patent owner licenses to the licensee. When this clause is vague or hastily written, it can produce arguments about what it does or does not cover. Avoid these battles with a comprehensive, specific grant clause that identifies both what rights are licensed and what rights are not.
Doing It Yourself
Licensing a patent requires deep knowledge not only of patent law but also of markets, business, and intellectual property litigation. Protect your rights by working with experts as needed.
To avoid these potential problems, work with a dedicated patent attorney in Los Angeles. Your lawyer can help you avoid common mistakes. Work together with your attorney to ensure that your license agreements reflect your true intentions while also protecting your rights.
Work With an Experienced Los Angeles Patent Licensing Attorney Today
A patent represents a considerable investment of time, money, and effort. Licenses offer a way to see a tangible, quantitative return on that investment. To ensure your patent licenses reflect the investment you’ve made, work with an experienced Los Angeles patent attorney on patent licensing questions. The team at Cohen IP is here to help. Contact us today to learn more.
Trademarks are a form of intellectual property rights for elements that identify a product or service’s source.
Patents help those who have developed an invention and seek to protect it.