AGREEMENTS ON PATENTS AND INVENTIONS
A patent provides the strongest protection of any type of intellectual property, inventions, conferring on its owner the right to exclude others from making, using, selling, offering to sell, and importing the claimed invention in the United States during the term of the patent. Patent owners may assign their patent rights, in whole or in part, in exchange for royalties, a fixed sum or other compensation. Alternatively, the rights may be licensed, exclusively or non-exclusively, in given territories and markets for limited times. Of course, the patent owner may prefer exclusively selling patented products directly to the buying public.
The law of contracts and torts are two bodies of law that define patent license agreement. The law of contract enforces the people’s promises, while the law of torts enforces the reasonable conduct of people. A license provides that the Licensor retains legal title of the property. Freedom Rings can help you in preparing the correct documents to help you navigate through the difficulties encountered under intellectual property law.
A typical patent agreement should have the following:
- Heading of the agreement, date the agreement was made and the parties involved.
- Material to help interpret the agreement. It’s usually not a binding part of the agreement (but may be made so if the attorney desires).
- Definitions– Devote some time to the definitions. It makes the rest of the agreement easy to understand. Identify the licensed patents, licensed products, territory covered, and such terms as Net Sales, Improvements, etc.
- Grant of License– Is the license to be exclusive or non-exclusive? May the Licensee grant sublicenses? What rights do you reserve solely to yourself? Make sure these are clearly stated.
- Records and Reports.
- Infringement– Who’s responsible for enforcing (ie. prosecuting infringers of) the patent?
- Patent Markings.
- Other Obligations of Licensee– Will Licensee promise to produce some quantity-level of product?
- Disclaimer of Agency.
- Insolvency of Licensee.
- Waivers and Modifications.
- No Warranties.
- Transfer of Interest.
- Term– How long is the license to last?
- Termination– This is an important section — it’s your way out if things don’t work out as expected.
- Compliance with Law.
- Entire Agreement.
- Final Provisions– What law governs the agreement? Statement that the agreement is binding on heirs, successors, etc.
- Execution of Agreement.
Contact Freedom Rings today so that we can get your patent process started.