Q: What is your seasoned opinion on how to best proceed to negotiate a profitable and fair licensing deal under the following circumstances.

I most appreciate opinions from those who have actually gone through this process, at least once.

Situation: I have one PCT patent application under prosecution (Phase I) and multiple provisional applications active. The provisionals are essentially continuations-in-part (possibly divisionals) of the PCT invention. Omnibus claims are included in the provisionals for the primary purpose of satisfying technicalities in international law but are probably far from what would be claimed in a regular or PCT patent application.

To add more layers, the provisionals contain multiple inventions (as is allowed by US patent law). These multiple inventions are all in a related field but certainly different inventions (lack unity of invention).

I have demonstrated two of my inventions to and am in discussions with a major corporation regarding licensing. The licensing is more appropriately associated with the latter provisionals (CIP's). At this point, I have been asked to divulge my patent apps and I responded with an OFFER to divulge my full PCT app, LESS CLAIMS, and to divulge EXCISED versions of my provisionals (where I had cut out text for other inventions in the provisionals that had not been marketed to this potential licensee). The inventions of primary interest are in one of the provisionals. I upped the bar, also asking them to honor (sign) an invention submission agreement that mitigates them "designing around," or modifying and patenting based on my fundamental IP.

They have paused and did not yet agree to accept access to my PCT and provisionals and instead are asking "what claims" I have in my patent applications. (privately, the answer for this is "no, claims, really. The specification awaits being further claimed against!"). Negotiations are quite friendly, at this point.

This is a money/strategy/patenting/sales kind of thing. But isn't compensation the true and ultimate objective of all those participating in this site? Of course, I would only engage in ethical and truthful negotiations. But, the real question is:

What is your seasoned opinion on strategy as to best proceed to negotiate a profitable and fair licensing deal under these circumstances. (I have had trouble even finding an attorney that I like to even answer my initial emails - they must be swamped helping the big corporations, is all I can think).

Thank you

  • I am not posting this an answer because the question is probably OT here and because it is hard to give a good answer without knowing more. I like the idea of withholding the claims in the PCT from the people you are negotiating with. However, it does leave them with no clue of what in the disclosure you think is new and is yours. You will need to address that somehow. If they are interested in your field it is hard to see them signing the no-design around unless the wording narrowly defined what constitutes a explicit design-around project.
    – George White
    May 23 '14 at 7:16
  • Thank you, George. Always a good and considered response from you.
    – SirCut
    May 25 '14 at 16:55

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