License Your Invention

by Stim, Richard; Gima, Patricia; Gima, Patricia

• ISBN13: 9780873375641
• ISBN10: 0873375645
• Edition: CD
• Format: Paperback
• Copyright: 2000-05-01
• Publisher: Nolo

Summary

License Your Invention shows you everything you need to know to enter into a good written agreement with the manufacturer, marketer or distributor who will handle the details of merchandising your invention.

Table of Contents

How to Use This Book
Gearing Up to License Your Invention
Licenses	1/3	(1)
Assignments	1/6	(1)
The Licensing Process	1/6	(1)
Avoiding Conflicts Among Multiple Agreements	1/8	(1)
Challenges to your Ownership	1/12	(1)
Disclosing Information About Your Invention	1/13	(1)
Keeping Your Records	1/13	(1)
No False Hopes! Reviewing Your Invention's Commercial Potential	1/14	(1)
Intellectual Property Protection
General Rules for Legal Protection of Inventions	2/3	(1)
Utility Patents	2/4	(1)
Trade Secrets	2/11	(1)
Trademarks	2/15	(1)
Design Patents	2/16	(1)
Copyright Law	2/17	(1)
Sorting Out Nonfunctional Features: Design Patents, Product Configurations & Copyright	2/18	(1)
Ownership Issues for Inventor Employees
What Type of Intellectual Property Is Involved?	3/2	(1)
Employer/Employee: Patent and Trade Secret Ownership	3/2	(1)
Inventions Covered by Copyright	3/6	(1)
Special Employment Situations	3/7	(1)
Working Out Ownership Issues With Your Employer	3/8	(1)
Joint Ownership of Your Invention
Joint Ownership	4/2	(1)
How Payments, Loans or Investments Can Create Joint Ownership	4/8	(1)
Transferring Ownership of Your Invention to Your Business	4/9	(1)
Licensing Agents and Representatives
Agents	5/2	(1)
Completing Agent Agreement	5/4	(1)
Attorneys as Agents	5/8	(1)
Invention Marketing Scams	5/10	(1)
Soliciting Potential Licensees
Before You Begin Your Search	6/3	(1)
How to Find Potential Licensees	6/3	(1)
How to Overcome a Licensee's Bias Against Submissions	6/7	(1)
What's the Best Way to Solicit a Potential Licensee?	6/8	(1)
Product Presentations	6/11	(1)
Protecting Confidential Information
Confidential Information and Nondisclosure Agreements	7/2	(1)
Proceeding Without an Agreement	7/9	(1)
Waiver Agreements	7/10	(1)
When You Have Sufficient Bargaining Power	7/11	(1)
Disclosing to Employees and Contractors	7/13	(1)
Disclosing to an Attorney	7/13	(1)
The Key Elements of Your Agreement
From Handshake to License	8/2	(1)
Identifying the Parties	8/3	(1)
Describing Your Invention and the Licensed Products	8/4	(1)
Specifying Which Rights Are Granted	8/7	(1)
Defining the Territory	8/10	(1)
Setting the Length (Term) of the Agreement	8/12	(1)
Money: It Matters
Some Basic Royalty Definitions	9/3	(1)
Ways to Get Paid	9/4	(1)
The Mysteries of Net Sales and Deductions	9/7	(1)
How Much Do You Get?	9/9	(1)
Royalty Provisions	9/11	(1)
Negotiating Your Agreement
What, Me Negotiate?	10/2	(1)
Documenting the Important Contract Elements	10/3	(1)
Letter of Intent	10/6	(1)
Option Agreements	10/8	(1)
What If the Licensee Wants to Proceed Without a Written License Agreement?	10/13	(1)
Sample Agreement
License Agreement	11/3	(1)
Optional License Agreement Provisions	11/26	(1)
Modifying the Sample Agreement for Your Needs	11/30	(1)
Warranties, Indemnification and Proprietary Rights Provisions
Promises, Promises ... Warranties, Representations and Covenants	12/2	(1)
Indemnity---The ``Hold Harmless'' Provision	12/4	(1)
Licensee Warranties and Indemnity	12/9	(1)
Proprietary Rights	12/10	(1)
Commercialization and Exploitation	12/12	(1)
Samples and Quality Control	12/12	(1)
Insurance	12/13	(1)
Termination and Post-Termination
Termination and Post-Termination	13/2	(1)
Termination Based Upon a Fixed Term	13/2	(1)
Termination at Will	13/3	(1)
Termination Based on Contract Problems	13/3	(1)
Termination and Bankruptcy	13/5	(1)
Post-Termination: What Happens Afterwards?	13/5	(1)
Survival of the Fittest	13/6	(1)
Boilerplate and Standard Provisions
Paying the Lawyer's Bills	14/3	(1)
Dispute Resolution	14/4	(1)
Governing Law	14/6	(1)
Jurisdiction	14/6	(1)
Waiver	14/7	(1)
Invalidity	14/8	(1)
Entire Understanding	14/8	(1)
Attachments and Exhibits	14/8	(1)
Notices	14/9	(1)
No Joint Venture	14/9	(1)
Assignments	14/9	(1)
Force Majeure	14/10	(1)
Headings	14/10	(1)
Establishing Escrow Accounts	14/11	(1)
Service Provisions
Service Provisions vs. Separate Service Agreements	15/2	(1)
Training the Licensee's Personnel	15/3	(1)
Installation of Equipment	15/4	(1)
Technical Support for the Licensee or for End Users	15/4	(1)
Improving, Modifying and Delivering the Invention	15/5	(1)
Handling the Licensee's Agreement
Dealing With Suggested Changes	16/2	(1)
Evaluating an Agreement Presented to You	16/3	(1)
Evaluating the Provisions and Suggesting Changes	16/4	(1)
After You've Signed the Agreement
Create Your Contract Calendar	17/2	(1)
Dealing With Royalty Statements	17/4	(1)
Resolving Licensing Disputes	17/6	(1)
Avoiding Patent Misuse and Illegal Agreements	17/7	(1)
The Taxman Cometh	17/9	(1)
Quality Control	17/10	(1)
Help Beyond This Book
Licensing and Intellectual Property Resources	18/2	(1)
Working With an Attorney	18/7	(6)
Appendices
A How to Use the Forms Disk
B Forms
Agreement Worksheet
Letter Confirming Employee's Ownership of Copyright
Joint Ownership Agreement
Assignment of Rights: Patent
Assignment of Rights: Patent Application
Assignment of Rights: No Patent Issued or Application Filed
Agent Letter Agreement
One-Way Nondisclosure Agreement
Mutual Nondisclosure Agreement
Contract Worksheet
Option Agreement
License Agreement
Escrow Agreement
Checklist for Reviewing a License Agreement
License Dates Chart
Index