Technology Licensing Lawyers

Technology licensing is a legal agreement in which a licensee may purchase or obtain access to a licensor’s patents, trademarks, copyrights, trade secrets, or other intellectual property in exchange for payment. This payment could be made in the form of a single sum of money, a percentage of production, or a combination of both.

Is a Technology License Necessary?

An agreement to license technology can result in a successful transaction because:

• It enables quick entry into international markets and poses fewer financial and legal risks than conducting overseas operations or joining a joint venture;
• It removes many of the obstacles that can prevent the export of American-made goods; and
• Foreign technology can also be acquired through licensing.

What Could Be the Consequences of Using Technology Licenses?

Technology licensing may have certain disadvantages as well. The list of drawbacks to licensing includes the following:

• Technology licensing typically yields lower profits than exporting actual goods;
• Technological control is reduced because it has been handed to an unaffiliated entity;
• There may be issues with appropriately securing the licensed technology from unlawful usage by other parties.

Foreign Nations

Because the licensing agreement frequently needs to be approved by the host country’s government before it can go into force, it is crucial to look into the licensee’s nation.

Prospective licensees must consider the following in the host nation: Royalty and dividend rules, exchange restrictions, product liability laws, antitrust and tax laws, and laws governing patents, trademarks, and copyrights.

Antitrust Concerns

International technology licensing agreements that unduly limit the entry of competing technology into the United States or that unreasonably stifle domestic competition or exports by Americans are prohibited by antitrust laws in the United States.

This choice is made by taking into account the following:

• Rival products or technologies
• Market percentage
• Obstacles to entry
• The reasons for and length of contractual limitations that are related to business
• Copyrights, trademarks, and valid patents

Prospective U.S. licensees should also check if the U.S. Department of Commerce or other governing bodies require them to get an export license.

What Are Some Options for Licensing?

Your invention or product can be sold and licensed in a variety of ways through marketing:

• Direct Contact: Get in touch with manufacturers and potential customers directly and present your invention to them.
• Trade Fairs: Participating in trade shows where you can display your idea to prospective buyers and users, purchasing advertising space in magazines and business periodicals to expose your goods to consumers and potential customers, attempting to post on patent websites after doing some research on them in order to promote your innovation.
• Find Investors: Make contact with those who might be interested in investing in your idea and giving you the money you need to launch it.

After Obtaining a Patent License, May I Produce and Market the Invention?

You may or may not be able to manufacture and sell your copyrighted innovation yourself, depending on the type of license you provide to someone. Only the individual to whom you provide an exclusive license or an assignment of your patent rights is permitted to produce and market the innovation.

Do I Need to Write Down My License?

In order to be legally binding, all assignments of patent rights must be made in writing. However, all licenses do not need to be in writing to be legitimate. If a license qualifies as a general contract and complies with all general contract standards, including the Statute of Frauds, it can be oral and still be enforceable.

Should I Record My Assignments and Licenses?

The United States Patent and Trademark Office (USPTO) is not required to record your licenses and assignments, but you might want to. You cannot provide your license to a secured creditor or sell it to subsequent buyers without first recording it. Consequently, even though it is not required, it is usually to your best advantage to register your license even though it is not required to do so.

How Do I Get My Invention Patented?

The United States Patent and Trademark Office processes patent applications and renders decisions pertaining to patents. The USPTO requires inventors to submit an application with detailed drawings and a blueprint of their intended invention.

The applicant must also attach a fee with the application. The invention strategy must adhere to a very tight and precise format.

The USPTO normally asks an applicant any questions the office may have after reviewing the individual’s application. It is significant to highlight that beginning in September 2011, exclusive rights will belong to the person who initially filed a patent.

Prior to September 2011, the person who created the technology or product in question received patent protection.

Is it Possible to Transfer a Patent to a Family or a Business Partner?

A patent can be given to a family member or business partner, yes. The Constitution gives Congress the authority to grant an inventor exclusive rights.

According to the federal code, patents may be treated in the same ways as other types of property, including buying, leasing, mortgaging, transferring, and abandoning them.

Does a Patent Ever Expire Too Soon?

A patent may prematurely expire on occasion. This could happen if the inventor doesn’t pay the required maintenance fees or if the patent is found to be invalid.

It will enter the public domain after the patent expires. Any person may thereafter make use of the patent, sell it, or import it.

The holder of a patent loses all rights to it after it expires. However, if their patent was violated while it was still in force, the owner may file a lawsuit for infringement or file for enforcement.

What Can Invalidate My Patent?

There are numerous grounds for invalidating a patent. When the alleged infringer asserts the patent is invalid in an infringement lawsuit, patents are typically found to be invalid.
Other grounds for invalidating patents include the following:

• It wasn’t truly possible to patent the invention: The USPTO can declare a patent invalid if evidence is shown that demonstrates the invention lacked the necessary utility, novelty, or non-obviousness that was required for the patent;
• The patent was obtained fraudulently by someone: The patent may be deemed invalid even if the innovation was patentable if someone can demonstrate that it was obtained by tricking the USPTO;
• The patent was employed to carry out unlawful activity: The USPTO has the authority to invalidate a patent if someone uses it to commit a crime.

Can I Contest the Legality of a Patent that has Been Licensed to Me?

Generally speaking, once you have secured a license for some of the patent rights, patent laws do permit you to contest the patent’s validity.

After I Assign My Rights to the Patent, Can I Contest its Validity?

A patent that you have sold to another party cannot be contested. It’s known as assignor estoppel.

Do I Need Legal Advice on Technology Licensing?

You should consult a knowledgeable intellectual property lawyer before signing a technology licensing agreement due to the inherent complexity of such contracts.

Licensors may also choose to consult with competent legal counsel in the host nation to get guidance on relevant legal requirements. You’ll be more likely to have your technology license agreement interests protected if you get good legal guidance.