What is the best method to request use of a patented technology for use in a specific project? Is it possible to develop a simple agreement for a specific project or is it necessay to enter into a general technology licensing/royalty agreement, provided the patent holder is willing.
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John - This varies greatly by industry and patent owner, etc. Can you provide a bit more info regarding the industry, type of patent, type of company that owns the patent, and the scope of potential use within your overall project?– Dennis CrouchOct 17, 2012 at 16:08
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Mass transit application to control door actuation using an RF signal through glass. A large transportation conglomerate owns the patent on the core of the system - the transmission of an RF signal through glass and the use of it in a door actuation system. We have developed a complete solution around this concept but it apears it is already protected. Our interest is to provide a solution to this one customer, in this one application.– JohnOct 17, 2012 at 16:19
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1 Answer
Lots of avenues to explore here. First is the breadth or scope of use of the patented technology. Is it going to be used only within your business? Or will it be part of a product or service that your customers use? Is it essential or just nice to have - i.e., how much is it worth to you? Is your project the iPhone 6 or a neighborhood car pool web site?
The patent holder may be eager or wary - may consider your project to be too small to merit effort of negotiation or complications of policing the agreement.
At root what you are looking for is ordinary - a business agreement between a willing buyer and a willing seller. Issues are price, compliance, duration, scope, etc. Just be aware that the law recognizes many "slices" of interest that can be transferred to a patent licensee, some of them pretty arcane. It may be OK to initiate a conversation with a patent holder concerning a license on your own, but you should have professional legal help to evaluate any agreement before you sign on the dotted line.
