How to License a Patent
Looking to license a patent. Learn how to manage negotiation strategy, determine the length of "the term", the geographic scope, & how to enforce copyright infringement. Here is your complete guide!
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Registered USPTO patent attorney, J.D. Houvener from Bold Patents Law Firm, share's how to license a patent.
Below we have provided resources and timestamps with brief explanations for each step of how to license a patent.
Quickly find what you are looking for by clicking on the timestamps below.
Timestamps for important areas of this video are located below along with a detailed blog article that I wrote that goes into this topic even more in-depth.
➡️0:57 Determine the Underlying Patent Rights.
✔️Understanding what you own and your scope of rights.
➡️1:26 Do Your "Due Diligence".
✔️Find out what you don't know about your patent.
➡️2:16 Negotiation Strategy
✔️Planning to make a solid deal.
✔️What are your goals or walkaway terms?
➡️3:10 The "Grant Clause"
✔️What is being licensed?
✔️Granting portion of your patent.
➡️4:10 Exclusivity and Sublicenses
✔️Who will it be licensed to?
✔️Exclusive vs. Non-exclusive
➡️4:50 The Term
✔️How long will it be licensed?
✔️Changing terms in changing markets.
➡️5:26 The Geographic Scope
✔️Where will it be Made/Used/Sold/Imported?
➡️6:07 Infringement
✔️Who Enforces Patent Rights?
➡️6:46Termination
✔️When is the license Over?
✔️When to terminate?
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Patent Pending Guide: boldip.com/patent-pending
Patent Prosecution: boldip.com/patent-prosecution...
PCT/International Guide: boldip.com/pct-guide
Patent Portfolio Guide: boldip.com/patent-portfolio-g...
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Sorry, occupational hazard: This is not legal advice, nor can I give you legal advice. I AM NOT YOUR LAWYER. Sorry! Everything here is for informational purposes only and not for the purpose of providing legal advice. You should contact your attorney to obtain advice with respect to any particular issue or problem. Nothing here should be construed to form an attorney-client relationship. All non-licensed clips used for fair use commentary, criticism, and educational purposes. See Hosseinzadeh v. Klein, 276 F.Supp.3d 34 (S.D.N.Y. 2017); Equals Three, LLC v. Jukin Media, Inc., 139 F. Supp. 3d 1094 (C.D. Cal. 2015).
Пікірлер: 30
Thank you for the great information on patents.
@j.d.houvener6868
10 ай бұрын
You are welcome! Let me know if I can help with anything you're working on.
Great important knowledge
Very clear explanations. Thank you.
@boldpatents
Жыл бұрын
You're welcome! Let me know if you have any follow-up questions.
Great info I’m a new subscriber and enjoy your information thank you so much.
@j.d.houvener6868
4 жыл бұрын
BANNACIS you are welcome! If you have any questions after watching shoot me an email at info@boldip.com or suggest a new video topic :)
Interesting"..
Thank you so much for sharing 🌹
@boldpatents
3 жыл бұрын
You are so welcome
Great video, really appreciate your time and efforts. My question is: Can I already licence my patent to other parties during the patent-pending phase, meaning after filing, but before potential grant? Also: If I sold products based on my patent online during patent-pending phase: What would stop other parties from copying and selling my idea claiming "yeah, I get you filed a patent, but it's not yet granted"? Would be grateful if you could clarify :)
@boldpatents
11 ай бұрын
Yes you can license while a patent is pending! Yes, publicizing your inventions prior to patent grant does come with small risks of other parties ripping you off/copying your invention prior to grant and when you can enforce. However, if you can show that the infringing party was put on actual or constructive notice (by labelling "patent pending" on the product/software), then you can later go back for retroactive damages. And, because they were likely "willful" infringers, you can get treble (extra) damages. Shoot me an email if you have more questions: jd@boldip.com
@user-xf7yb6nu5u
11 ай бұрын
@@boldpatents Really appreciate it, thank you very much for that helpful response. So, I understand that by labelling it "patent pending" and - optionally - even send an additional friendly notice to the infringing party ("hey, we would kindly let you know that we filed a patent ...") would be a good solution to selling own products before actual grant. By the way: I hope those comments also help you a little bit for the KZread algorithm, your videos deserve more views! Have a good one :)
@boldpatents
11 ай бұрын
@@user-xf7yb6nu5u You're welcome - glad to be of service! And, I'm hoping to get more youtube subscribers, so thank you!
your website in the video doesn't match your link in the description. (probably should add a bubble to give the real Website IP
@boldpatents
4 жыл бұрын
Thanks for letting us know. I am not 100% sure what you are referring to though since the article we link out to is the licensing article. Could you please elaborate? Thanks in advance!
I would like to know benefits of international Granted patents.
@boldpatents
3 жыл бұрын
If you have rights in foreign jurisdictions, then you have the ability to prevent others from making, using, or selling in/out of that country. In order to get these rights, it is often helpful to file under the Patent Cooperation Treaty (PCT) which most countries are members of - it reduces costs and streamlines the filing. Check out my article on it here: boldip.com/blog/international-patent-applications/
Can I ask the licence to pay the whole royalty amount upfront?
@rat_king-
2 жыл бұрын
Yes. its your deal
how to make money from a DESIGN PATENT IN INDIA or another country.
Can I license my own patent before trying to WK with a company?
@boldpatents
3 жыл бұрын
You certainly can, but it will take a lot of time!
There is a book - licensing without patent - is it legit ?
@boldpatents
Жыл бұрын
It can’t be. Without a patent, there is literally no asset to license.
I need help I join Davison don't know what I'm doing paid money 900 now owe 10.000.00
@boldpatents
Жыл бұрын
We have many ex-Davison clients. Schedule a free screening session to see if we can save ya: calendly.com/business-consultations/am06-youtube
15 $ ? Good thoughts.
@boldpatents
Жыл бұрын
What’s the question?