A patent owner can sell or lease 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 through a licensing agreement to a developer in exchange for royalties. If all the patent rights are sold to a person, the sale is called an assignment.
Licensing the rights to make, use, or sell a product is the best way for inventors to make money and profit from their inventions. Since the inventor is usually the patent holder, the inventor can keep the ownership of the invention and receive royalty payments on any future sales of the invention or product through licensing.
There are several marketing ways to sell and license your invention or product:
Depending on what kind of license you grant to someone, you may or may not be able to manufacture and sell your patented 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 manufacture and sell the invention.
Yes, any assignments of patent rights must be in writing in order to be valid. However, all licenses do not have to be in writing in order to be valid. A license can be oral and will be enforceable if it is qualified as a general contract and follows all the general contract principles, including satisfying the Statute of Frauds.
You are not required to record your licenses and assignments with the United States Patent and Trademark Office (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. Thus, although it is not necessary to record your license, it is probably in your best interest to record your license, even though it is not necessary to do so.
Generally, patent laws do allow you to challenge the validity of a patent after you have obtained a license for some of the patent rights.
You cannot challenge the validity of a patent that you sold to someone else. This is called assignor estoppel.
If you have questions or concerns about licenses and assignments of patent rights, you may want to contact a patent attorney. A patent lawyer who is experienced with licensing agreements will be able to help you draft a license or assignment agreement that best meets your needs. Also, a patent attorney can represent you in court if your rights are violated.
Last Modified: 09-30-2016 02:26 PM PDTLaw Library Disclaimer
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