1

I filed a patent that is now in examination stage. I can't personally afford the legal fees to amend the claims that got rejected. However, the director of a company for which I'm doing some consulting said he would pay the legal fees to amend the claims. In compensation, I initially proposed a shared ownership but that seems to be problematic. He wants the patent for the company IP portfolio, and he says that having a shared patent ownership doesn't add value to the company in the event of an exit. I've done a bit of research on alternatives to share ownership of patents, and I see in some cases a company is created that owns the patent and then the company ownership is shared. However, I think this is not going to work in this case. So I proposed another alternative: they could own the patent but I would get a “special license” that would also give me right to a small royalty percentage of any other licensing or sales as a result of the invention, also right to use the invention but not of licensing to other parties.

My questions are: What would happened to such a license if the company gets sold? Could such a license exist independently of who owns the patent? Would such a license reduce significantly the value of the patent? and finally, are there any other alternatives that could work this case?

|improve this question

closed as off-topic by Robert Cartaino♦ Jan 13 '17 at 16:49

This question appears to be off-topic. The users who voted to close gave this specific reason:

  • "Copyright, Trademark, and Licensing Issues Are Off Topic — Ask Patents is a community-run website to ask about the patent process or to help find Prior Art on US Patents or Applications. Unfortunately, questions about copyright, trademark, and licensing issues are outside the scope of this site. Sorry about the confusion." – Robert Cartaino
If this question can be reworded to fit the rules in the help center, please edit the question.

  • @Robert: I realize this question might technically be off topic, but I think we should allow it anyways as it is about patent law too and at least for me it falls well into what I feel is (or should be) the scope of this site. And it's only secondary about licenses and primary about law (imho). I vote for reopening. – DonQuiKong Jan 14 '17 at 13:56
1

What would happened to such a license if the company gets sold?

As your contract for that license would be with the company, nothing, the contract would get sold too, you would have the same rights as before.

Could such a license exist independently of who owns the patent?

Sure, that should be specified in the contract. So basically, if they want to sell the patent, the new owner has to agree to continue the contract with you, else they may not sell the patent. (That should be stated in the contract between the company and you).

Would such a license reduce significantly the value of the patent? No, it's actually a quite common way for inventions made by employees to give them a part of the royalties.

and finally, are there any other alternatives that could work this case?

You could plainly sell the patent app. and be done with it or sell it and maintain the right to use the invention.

Concerning that, the question that is more difficult to solve is what you are allowed to do with the invention. From giving away licenses (which is the reason they don't want to as co-owner, co-owners may do that, so essentially you could always screw them out of making money with the patent by giving away licenses for free or less money) to only beeing allowed to use it personally, not commercially, there are quite some steps. You should probably try to get whatever you need, if you want to sell the invention too, you need a license allowing this. As you would have a free license, yes, this would reduce the patents value. How much depends on the situation and how many products of the invention you sell.

|improve this answer

Not the answer you're looking for? Browse other questions tagged or ask your own question.