What Does It Mean to License a Patent?
A patent owner can sell the rights granted to him through his patent by giving another person a license to make or sell his invention. Typically, a patent owner will grant these rights to a developer in exchange for royalties. If all the patent rights are sold to a person it is called an assignment.
If I License My Invention to Someone, Can I Continue to Manufacture and Sell the Invention Myself?
Depending on what kind of license you grant to someone, you may or may not be able to manufacture and sell your invention yourself. If you agree to give someone an exclusive license, or if you give someone an assignment of your patent rights, only that person has the ability to exercise those rights.
Do I Have to Put My License in Writing?
Yes, any assignments of patent rights must be in writing in order to be valid.
Should I Record My Licenses and Assignments?
You are not required to record your licenses and assignments with the USPTO, but you may want to do so. Unless you record your license, you cannot sell it to subsequent buyers or offer it to a secured creditor. So, although it is not necessary to record your license, it is probably in your best interest to do so.
If Someone Licenses their Invention to Me, Can I Challenge the Validity of the Patent?
Generally, patent law does allow you to challenge the validity of a patent after you have obtained a license for some of the patent rights.
If I Have a Patent and Assign All My Rights to Someone Else, Can I Later Challenge the Validity of the Patent?
Generally you cannot challenge the validity of a patent that you sold to someone else. This is called assignor estoppel.
Should I Consult a Patent Attorney?
If you have questions or concerns about licenses and assignments of patent rights, you may want to consult a patent attorney. An experienced patent attorney will be able to help you draft a license or assignment agreement that best meets your needs. A patent attorney can also represent you in court if your rights are violated. |
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