I am a licensee of an invention patent. the patents is registered in some countries only.an I manufacture the patent in the country that the patent is registered and sell it to another country that the patent is not registered and not pay the royalty fee?


If you manufacture in a country that has a granted patent covering the product, it doesn’t matter where you sell the product. The patent still is in force and you would need to abide by your license.

  • I didn't understand the question at first but your answer made it clear. "Abide by the license" is a great answer. It might matter where he sells. It is possible that his royalty is triggered by a U.S. sale. – George White Feb 27 at 19:27
  • Thank you for your answers. the license agreement says: immunity for infringement of the Patent Rights in the Territory to: a. use the Licensed Process to make Licensed Product; b. make, have made, use, sell, offer to sell, rent, lease, export, import, support, maintain, provide, and repair Licensed Products . So now the product is being made in Canada which the patent is registered. If I sell the patented product to a third country such as Malaysia that the patent is not registered can I avoid Royalty fee or that still applies because it is being made in Canada ? – Nandos Mar 1 at 13:57
  • I am not a lawyer and licensing is off topic here. The point is if there is a product made in the country that the patent is granted than the patent holder can sue you for selling in any other country if you don't follow your license terms. This is not legal advice, but I believe it is true. In any case, if you agreed to a license agreement then you are legally required to abide by that agreement. It is a contract. – Eric S Mar 1 at 15:02

Not likely

Patents give the owner the right to control who is allowed to make, sell, offer for sale, import and use anything that would infringe one or more claims. They are territorial so one could make something in a location where no patent was issued and sell in in that or another place where no patent has issued.

As a licensee, I would look to the terms of your license to see what rights that gave you. If it allows you to make and sell in the U.S. those are probably two different rights. It is possible that your agreement only requires royalties on units sold in the U.S.


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