This is a fairly complex article for legal practitioners, detailing why it's so important for licensees to have an "exclusive" or "controlling" right to use a patent. If you are simply granted a right to use someone else's patent, you are given no rights to defend yourself or your use of it if that patent ends up infringing on someone else's property.
Yes, we all hope that after several long years with the patent examiners of the USPTO, every patent has been thoroughly vetted and compared with everything else under the sun. But it's not always the case -- sometimes patent examiners miss something, or other technology not yet in the market jumps ahead in line of your patent. Sometimes patent owners wait on purpose until you use infringing technology so they can sue for damages. It's a tough world out there.
The point of sharing this more complex article springs from an article I'm working on for a magazine about common pratfalls that licensing professionals make when negotiating big deals. Don't think that the "boring" part of a contract is not important because it's basically the same for every deal. We sign so many contracts in our daily lives -- from cell phone services to Netflix user agreements to privacy policies at the doctor's office -- that we run the risk of getting numb to the value of the words therein.
Think of it this way: every contract has "boring stuff" like indemnities and warranty clauses, choice of laws, termination, and scope of rights BECAUSE IT'S SO IMPORTANT. It's not a rug or floor covering, it is the floor. Without understanding these parameters of the agreement, you don't have a complete agreement. If you are considering granting a license or getting one for your business, call us. The first 30 minute consultation is free and we can help you demystify some of the "boring" parts of any agreement you are being asked to sign.
HLR specializes in empowering small business owners to help themselves: we will explain anything we draft for you to you so that you can negotiate it yourself. You will understand what you are asking for and why, what you are giving away and what it's worth to you, and what the counterpart is asking for and why. Some larger law firms pat you on the head and take care of these "details" for you. That's great if you have deep pockets or little time to build your own alliances. But for those of you who are hands-on, it's crucial that you understand the mechanisms by which your products and services are shared and controlled.
Yes, we all hope that after several long years with the patent examiners of the USPTO, every patent has been thoroughly vetted and compared with everything else under the sun. But it's not always the case -- sometimes patent examiners miss something, or other technology not yet in the market jumps ahead in line of your patent. Sometimes patent owners wait on purpose until you use infringing technology so they can sue for damages. It's a tough world out there.
The point of sharing this more complex article springs from an article I'm working on for a magazine about common pratfalls that licensing professionals make when negotiating big deals. Don't think that the "boring" part of a contract is not important because it's basically the same for every deal. We sign so many contracts in our daily lives -- from cell phone services to Netflix user agreements to privacy policies at the doctor's office -- that we run the risk of getting numb to the value of the words therein.
Think of it this way: every contract has "boring stuff" like indemnities and warranty clauses, choice of laws, termination, and scope of rights BECAUSE IT'S SO IMPORTANT. It's not a rug or floor covering, it is the floor. Without understanding these parameters of the agreement, you don't have a complete agreement. If you are considering granting a license or getting one for your business, call us. The first 30 minute consultation is free and we can help you demystify some of the "boring" parts of any agreement you are being asked to sign.
HLR specializes in empowering small business owners to help themselves: we will explain anything we draft for you to you so that you can negotiate it yourself. You will understand what you are asking for and why, what you are giving away and what it's worth to you, and what the counterpart is asking for and why. Some larger law firms pat you on the head and take care of these "details" for you. That's great if you have deep pockets or little time to build your own alliances. But for those of you who are hands-on, it's crucial that you understand the mechanisms by which your products and services are shared and controlled.
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