Patent License Lawyer NYC Francelina M. Perdomo Klukosky - Perdomo Law
Patent Licensing Law Firm, Perdomo Law in Manhattan New York, NY 10007
Patent licenses are a critical leg of the intellectual property
estate. In many cases, a patent license is the easiest and most efficient way to monetize a patent.
To a first approximation, many inventors who apply for or obtain a patent may think that they must manufacture and sell their invention themselves to make money from their invention. This is an incorrect belief – a patent license may be a much better way to go. In fact, many large organizations that file a lot of patents (universities for example) are not in the manufacturing and marketing business at all and seek to license all of their patents to someone else who can manufacture and market it.
What is Patent Licensing?
Patent licenses are predicated on the principle that patents are a form of intellectual property. As a property right, patents have many attributes of other property forms, in particular, real property (i.e., land and buildings). Much of patent property rights can be thought of in terms of real estate. Patents can be bought, sold, or licensed. As an approximation, you can think of a patent license as similar to a rental of real property. In real estate, a property owner who owns a building can rent it to someone else. The renter gets a legal right to use the building (for example, to live there) in exchange for payment of rent. Of course, in real estate, this happens all the time.
Much of the real property in the world is owned by large holdings companies and investors, and they must rent it (also called leasing) to earn a return on their investment. A patent license is very similar. In a patent license, a patent owner permits someone else to practice the invention claimed in the patent usually in exchange for payments.
Exclusive vs. Non-Exclusive Patent Licenses
Patent licenses come in two broad flavors, exclusive and non-exclusive licenses.
In an exclusive license, a single entity gets the entire right to use the patent and exclude others. Usually, an exclusive licensee acquires all rights in the patent, including the right to enforce the patent and sue alleged infringers. In this sense, and exclusive license is almost like selling the patent. Usually, in an exclusive license, there is a payment of royalties, and typically, there is a provision that the patent owner can take the patent back if the exclusive licensee can’t seem to sell the thing, i.e., meet sales targets, or if the exclusive licensee goes bankrupt.
In a non-exclusive license, the patent owner gives more than one other party the right to use the thing. For example, with a product, several different manufacturers or brands may license the right to use the patent. Normally, with a non-exclusive license, the patent owner retains the bulk of the ownership rights and is obligated to enforce the patent and sue infringers.
There are variations on these two licenses. For example, different licensees may have an exclusive license to market and sell a licensed product in different territories, where they will not compete with one another. An example of this is a licensee with an exclusive license to sell a product on the west coast, and another to sell the product on the east coast.
What is Best for Your Needs?
The type of license that is best for you depends entirely on the product and the potential licensees that are interested. Some products are more amenable to an exclusive license. For example, a product that can be sold in stores nationwide can be efficiently licensed with an exclusive license covering the entire country. On the other hand, a patent that covers a small part of something else may be more amenable to a non-exclusive license so that it can be used in multiple products.
Do You Need A Patent Lawyer?
A patent license is a complex document that should have many different sections. There will be a license grant, royalties, termination provisions, and provisions on the length of the agreement, to name just a few of the many parts that should go into a patent (or other IP) license agreement. You should get an experienced attorney in Patent Law, who has drafted many licenses and understands the nuances and can draft a competent agreement that will stand up in the Patent Litigation
process, in the event there is a dispute. A good attorney will understand the entire nature of the deal and can insert language and provisions that protect you from future misunderstandings and preserve your rights in the future if the deal goes bad.
Contact a NYC Patent Licensing Attorney Francelina M. Perdomo Klukosky for a Case Assessment
At Perdomo Law, our experienced attorneys can help you draft and negotiate the best possible deal. We can prepare a license agreement for you that meets your needs. One of our competitive advantages is that we always want to understand your business in order to help you with the best possible outcome.
We have prepared many licenses, and we constantly follow the law and expert commentary pertaining to intellectual property licenses. We are experts at crafting language to protect your interests. We look forward to working with you!
Please contact us for a case assessment.
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