Defining Your Rights

A patent can be extremely valuable, provided it is brought to commercial viability. Often, the inventor of the patent finds that it makes the most financial sense to let third parties license, or use, the patent. Royalties from licensing, when structured correctly, have extremely profitable rates of return.

The problem arises in that patent licenses are extremely complex agreements. Without proper guidance, you may give away valuable rights. Additionally, a properly drafted license agreement will avoid future disputes while allowing you to collect the check.

How Epiphany Law Can Help

Epiphany Law’s intellectual property experience in patent, technology and software licensing will help guide you through the myriad issues related to licensing. Should the license be on a per product, per use or other basis? Are there required minimum royalties? What is the geographical scope of the license: world-wide or a specific territory? Are there inspection or audit rights? And the list goes on.

There is no one size fits all when it comes to licensing. Patent rights can be valuable, but only if utilized to their fullest extent with proper protection. To make the most of your patent rights, rely on Epiphany Law.

Questions & Answers

Q: What are the benefits of licensing my patent? 
A: Cost. It’s that simple. Having a patent is only a small part of the cost of bringing the patented idea to commercialization (i.e. revenue producing). Bringing an idea to market requires significant cash outlays for machinery, labor, buildings, marketing, operations, etc., etc. If you can license your patent to a company that already has made these investments, you can avoid these costs and simply collect the checks.

Q: Who would own improvements to my patent, me or the licensee? 
A: That will depend entirely upon what the license agreement provides. Obviously, if you are the licensor, you want to own all improvements. However, if the agreement is not clear, you may find that you now have an unintended co-inventor.

Q: Should I impose minimum royalties? 
A: In general, the answer is yes. While you might not have specific minimums during the ramp-up period, it is imperative that the licensee devotes substantial efforts to commercialization and sale of your patent. Ultimately, as the licensor, you are looking to be paid for your rights. If the licensee is allowed to simply sit on its rights, your patent will become worthless.