License Your Invention

by Stim, Richard; Gima, Patricia; Pakroo, Peri

• ISBN13: 9780873374071
• ISBN10: 087337407X
• Edition: Disk
• Format: Paperback
• Copyright: 1998-05-01
• Publisher: Nolo

Summary

"License Your Invention" tells inventors everything they need to enter into a good written agreement with the manufacturer, marketer, or distributor who will handle the details of merchandising their invention. It shows step by step how to draft a license that will be fair to all parties and addresses such issues as ownership, applicable patent, copyright and trademark laws, and more. All forms are provided on disk. Illustrations.

Table of Contents

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