Archive for October, 2008

Patent Licensing – Negotiations

Monday, October 13th, 2008

Patent Licensing Negotiations

Now that you have a patented invention and are ready to license it, you still have to contend with the thorniest obstacle of all: the patent license negotiation. This is when you and the prospective licensee hash out what you believe a fair license agreement to be. However, this is not something you should rush into. In this article we’ll offer tips and suggestions for making sure the negotiation goes smoothly – and hopefully in your favor!

Patent Licensing Negotiations Tip #1:

Determine your objectives

Why are you trying to license your patent? What are you hoping to get out of it? The obvious answer is “Because I want money”, but it has to go deeper than just that. Do you want to wash your hands of the patent altogether? Do you still want some day to day interaction and a say on how it gets marketed? If so, these are things you need to specify and take into account during the negotiation, and it helps greatly if you go into it with your priorities fresh in mind.

Patent Licensing Negotiations Tip #2:

Assemble a team with the right players

According to a very detailed scholarly article called “Best Practices in Patent Negotiations”, you must enter into negotiations with the right “team” behind you.

“Whatever the reason, your team should include a business development executive, a scientific-technical expert, a decision maker and a licensing attorney. The business development executive (sometimes the CEO at smaller firms, or a technology transfer professional at a university) usually finds the deal, brings the parties together and keeps the process moving. The scientific-technical expert provides scientific and technological expertise and conducts due diligence research relating to the technology at issue. And the decision maker must have authority to commit your party to particular deal terms. In our opinion, document drafting is often easier when an attorney has the benefit of participating in negotiations and understands the positions of both sides. Once the team is in place, it’s important to meet and reach an understanding of the motivation for the deal and to go over each member’s responsibilities.”

SRC: Nature.com

We should note that it is not always necessary to have a separate person handle each task. For example, in your situation, you might be the businessman and the technology/scientific expert. If so, you don’t need to go out and bring in a separate businessperson. However, the point remains that all of these considerations must be accounted for by someone, and you should know exactly who is responsible for each one before negotiating to license your patent.

Patent Licensing Negotiations Tip #3:

Determine the value the licensee will add to the patent

Typically, the reason you are licensing the patent include not having the resources to market and capitalize on it yourself, or not wanting to. It is important, therefore, to assess how qualified the potential licensee is to capitalize on the patent. What assets, strengths, and abilities do they bring to bear that increase the value of the patent, over and beyond what it would be if you just held onto it? The article elaborates:

“Your team should evaluate and determine your own marketing, technical, sales and services strengths as well as the strengths of the other party in the field of the patented technology—all are relevant to licensing fee amounts and royalties to be paid back to the patent holder. These and other contract provisions will help the parties define the scope of the licensed technology and their competitiveness as potential licensing partners.”

Another step you should take leading up to negotiation time is exchanging a term sheet with the potential licensee. This helps establish a starting point so that both parties can get straight to business when the actual negotiation begins. Here are some of the things you might want to include or look for in a term sheet:

“The term sheet typically outlines the major issues in a potential deal. These include the following: the licensed product or process; licensed territory; preliminary thoughts on fees and royalties; technical information and training required to develop and manufacture, sell and service the licensed product (and who will be responsible for the same); sales and service support; degree of exclusivity; and duration of the license.”

As for the negotiation itself, the primary sticking point will how broad the licensee’s rights are (ie, how much it can do with the patent) and how much they will have to pay you. While this is inherently a somewhat speculative process, you can and must aim to create a license agreement both parties can live with. Here is one approach, using specific numbers, recommended by “Best Practices in Patent License Negotiations”

“A rational approach is to develop a win-win scenario by looking at the actual investment return of each party. If the licensor has spent $10 million to develop the compound, and the licensee will spend an additional $100 million to commercialize it, negotiating a deal in which the licensor receives 10% of the return may be realistic, although the licensee may want a greater return based on assuming a greater risk (greater investment). Alternatively, where a licensed compound is ready for commercialization or is on the market, more standard accounting techniques may be used because the risk/return ratio can be more directly calculated.”

As the licensor, you will want to grant as narrow exploitation rights as you possibly can. While the licensee will want as much leeway to capitalize on the patent as possible, it is in your best interest to be able to license it out to others if you see fit. One way to provide for this is to only license the patent out for specific uses, leaving you free to license it to other people for other uses.

Here are some other ways to get your licensee to accept narrower exploitation rights:

“There are compromises: you may grant a broad field of use with the right to retract fields if you present a use to your partner and your partner elects not to pursue it, or you may grant a narrow field of use and give your licensee the right of first refusal on other uses. Alternatively, your licensee could convince you to restrict any future licensees from particular uses that fall within the licensee’s specialty or area of expertise.”

As you can see, being focused before the negotiation and creative during it lets you grant a patent license that puts money in your pocket and leaves you free to pursue other options.

Recommended Articles:
1. Patent Licensing

Sell My Patent

Monday, October 13th, 2008

10 Tips for Commercializing Your Patent

When it comes to selling or licensing your patent, there are a number of ways to close the sale. Whether you directly approach a buyer, place ads or join listing websites, the methods open to you are virtually limitless. The key is to use the techniques that suit your own needs, strengths, and weaknesses. In this article, we’ll explore 10 different ways to sell or license a patent and you can evaluate which one(s) suit you best. The first five will focus on attracting a buyer, and the latter five on closing the deal.

1. Use a listing website

Thanks the Internet, various websites exist for buyers and sellers of patents to find each other. One such website is IdeaBuyer.com, where patent holders can list their patent and receive professional help in finding a buyer for it. Other websites do this as well, and the advantage is that everyone on the site is ostensibly there to accomplish this same task. This cuts down on the friction involved with other methods, where you are trying to take someone out of some other task and get them into the mindset of buying or licensing a patent.

2. Approach manufacturers directly

If you already have a manufacturer or a few manufacturers in mind, you can approach them directly about setting up a meeting. The key is to get in touch with their buyers or business development personnel, as these are the people with the scope and authority to make decisions like buying or licensing patents.

3. Set up a website

If your patent is complex or highly desirable, you might want to set up a website explaining it. Additionally, this website would offer a way for interested buyers or licensees to get a hold of you and learn more information. Having a website gives off an air of professionalism and seriousness that high-spending buyers will like to see. It helps defray the fact that they will be dealing with “just some guy.” You can combine this strategy with placing ads or using listing websites for maximum effectiveness.

4. Search the Thomas Register

If your patent is at all mechanical in nature, the Thomas Register is an excellent place to look. Not only does the Thomas Register list a lot of manufacturers and suppliers, they allow you to search for them based on the products they make. This makes it very easy to find people who create or sell things relevant to your patent, which is where you want to target your efforts. The link below will take you to the Thomas Register’s website. You can search by product/service, company name, brand name, and more.

SRC: http://www.thomasnet.com/

5. Place ads

Another effective way of selling or licensing patents is to advertise for it in places your target buyers are likely to see. For example, a patent covering new industrial equipment could be advertised in a trade magazine or journal relating to that field. Ads can also be placed in general interest locations like Craigslist.com. The idea is to place it where people you want to reach are likely to see it. Think about the types of magazines or websites those people visit and make your ad placing decisions from there.

6. Use an exclusive license

When you license a patent, the first decision should be whether it will be an exclusive or non-exclusive license. In general, people looking to license your patent will prefer an exclusive license. This way, they will be the only ones allowed to profit from the patent, and have the right to enforce violations of it if anyone tries to “copycat” what they end up bringing to market. However, you may prefer a non-exclusive license.

7. Use a non-exclusive license

As the name suggests, a non-exclusive license grants someone rights to utilize the patent, but on the understanding that you may license those rights to others as well. For obvious reasons, potential licensees do not usually like this kind of licensing deal. It creates the threat of competition in the future that will make their lives harder. However, some licensees will agree to this, and it would be advantageous to try and work out such a deal.

8. Use performance obligations & milestones

One of the biggest fears you may have as a patent holder is “What do I do if the licensee fails to capitalize on the patent?” Not every licensing deal works out as hoped, and this is a reality you must in some way face. Therefore, you may want to write certain requirements into the contract so that you can revoke the license if this happens. These are called performance obligations, or milestones. Simply put, you can write sales targets, profit margin expectations, or just about anything else that both parties agree on into the contract. If the other party does not meet these obligations, you can revoke the patent.

9. Use royalty requirements

Another way to ensure that your financial needs are met is to simply use royalty requirements. Under this approach, you do not require them to capitalize on the patent in any specific way. Your only concern (and the only thing written into the contract) is that by X date, you want to start receiving Y dollars in royalties on a monthly, annual, or semi-annual basis. This might be worth looking into if you want to get paid, but don’t want to be hassled with figuring out what reasonable sales or profit targets are.

10. Approach buyers as a Product Developer

It seems like a silly semantic difference, but calling yourself a Product Developer as opposed to an inventor reassures people. It makes companies and individuals think that you are savvy, that you are in the business of creating and selling patents as a career and you know what you are doing. Filling this role will assist you whether your goal is to sell or license your patent.

No matter what your strengths are as a person or what your patent covers, some assortment of these 10 strategies will help you accomplish your goals!

Also, for more information on how to sell your patent, view our powerpoint tips below.

Selling Your Patent Power Point Presentation

 

Sell A Patent

Monday, October 13th, 2008

sell a patentSell a Patent

I’ll just sell the patent!” Ever find yourself saying this as a kind of all-purpose declaration of how all your hard work will eventually pay off? The truth is that while selling a patent can be very lucrative, certain steps need to be followed. In this article, we will offer 10 tips to make your patent selling efforts more effective.

Sell a Patent Tip #1: Identify Targeted Buyers
Spend time researching companies that are relevant to your innovation. These should be companies that are currently in your industry and in the specific line of business of your product offering. Identifying specific companies to target will save you a host of time and effort while you are working to sell a patent.

Sell a Patent Tip #2: Do not be greedy
Remember the old saying: pigs get fat, but hogs get slaughtered. The idea is to not be too greedy in setting or insisting upon a price for your patent. This sounds easy to say in theory, but difficult to do in practice. The key, however, is to remember an all-important truth about patents. Many of them produce no income for their owners. In fact, some patents even expire while the owner fails to capitalize upon them! This does not mean you should be desperate to sell, but it does mean that you should not be turning away reasonable offers. Do not try to squeeze every last drop out of the buyer.

Sell a Patent Tip #3: Make your patent look appealing

Why should someone want to buy your patent? You had better ask yourself this question, because anyone thinking about buying it is going to be wondering the same thing. Is there a large market waiting to be capitalized on? Does your patent position the owner to jump in before competition gets fierce? Is your asking price paltry compared to the expected profits? These are the types of things you will want to emphasize in your selling efforts. Focus on benefits to the buyer. See step 6 for more on this crucial point.

Sell a Patent Tip #4: Get legal advice before the sale

Selling a patent is not like holding a garage sale. There are complex laws governing how and under what terms a patent may be sold. Therefore, you should not attempt to sell yours without getting competent legal advice. A patent attorney, while expensive, can ensure that your sale takes place in compliance with the law, and in such a way where the other party cannot use “weasel clauses” to back out later on. Consider this a must in your patent selling efforts.

Sell a Patent Tip #5: Create a powerful presentation

The ins and outs of a powerful patent presentation are beyond the scope of this article, but suffice it to say that you should have one. Fortunately, IdeaBuyer has a comprehensive how-to article on this very subject! See our article “10 Tips for Creating a Powerful Presentation” for practical guidance and key considerations to keep in mind.

Sell a Patent Tip #6: Decide whether selling is truly what you want to do
Some patent holders are unaware that they have other options besides selling. The other main option is to license your patent, or grant someone rights to it without actually turning over the patent itself. The advantage of this approach is that you can capitalize on the patent in the form of royalties while still owning it, and being able to revoke it if certain conditions are not met. Of course, selling may still be the best option, but you should make sure this is the case before you sell.

Sell a Patent Tip #7: Run the numbers before setting an asking price
While you don’t want to be greedy (as per tip number 2), you also want to make sure the price you get is worth your while. This becomes important if you are already capitalizing on your patent in some way, such as by selling a product. You want to make sure you make enough from selling your patent to replace that income and then some. Otherwise, why not just keep the patent for yourself? Tally up the profits you’ve been making and try to get a price at least 10x the yearly amount that you make. This is the standard calculation in corporate acquisitions and a good starting point for patents you are already making money from.

Sell a Patent Tip #8: Bring the underlying idea to market first
Most patent holders want to sell precisely to avoid this task, but think about it from another angle. If you are a potential buyer, which are you more likely to buy: a totally unproven patent that just sounds nice, or a patent which has already been capitalized on, and demonstrated its success? If you are at all entrepreneurial, and you feel you are up to the task, you should definitely consider bringing the patent to market. This will make the task of selling it far easier, and allow you to claim the residual income that result after some initial hard work.

Sell a Patent Tip #9: List your patent on a patent listing website
Thanks to the Internet, patent holders have a whole new medium for selling their intellectual property. One of the best ways is to use listing websites that bring buyers and sellers together and help them complete sales in a safe, legal way. IdeaBuyer.com, for example, allows patent holders to list their patent and help ensure that relevant potential buyers will see it. They will also receive assistance in negotiating with buyers and closing the sale in the proper way.

Sell a Patent Tip #10: Attend trade shows
One great place to find patent buyers is at trade shows. If you have a technology or software patent, for instance, it may be worth your while to set up a booth at a tech expo where relevant professionals and corporations can see what your patent is all about. It is a more proactive approach than placing ads and can sometimes be highly effective to sell a patent.

Chances are, some of these tips will fit your style, strengths, and weaknesses more than others. Just pick the ones that suit you best and you should be well on your way to sell a patent.

Read more about selling a patent

Selling a Patent

Tuesday, October 7th, 2008

Selling a Patent

Selling a Patent

Selling a Patent

So, you have ensured that your intellectual property is securely yours by getting a patent- NOW WHAT?

Often inventors patent their intellectual property and then are stuck on how to go about selling or licensing it. Is this you? Good news, I have some ways to help get you out of the waiting stage and on to the moving along stage.

Here is a quick lesson in sales, marketing, and advertising important for inventors:

Selling a Patent Lesson One: Appearance

By now you should have not only a patent, but also a working prototype or at least a great drawing. Keep in mind, people interested in buying your patent will not only want to read your full patent (pages and pages of legal jargon and small print), they will want to see it packaged in a manner that makes it worth buying.

What I may consider basic, some people may not be aware of how these things can affect their sale or non-sale of their patent. Appearance is crucial in the business world. People say they don’t judge others based on appearance, but let me be the bearer of bad news: THEY DO! You and your patent material need to be dressed as nicely as the amount of money you want to sell it for. If you are looking to sell the patent for a dollar then feel free to dress it like something off of a dollar menu at your local fast food restaurant.

Of course, I do not recommend this. Simply wear a suit, show up with well written and easily readable material packaged in a visually pleasing way.
Okay, now you and your patent are visually appealing to potential buyers. Where do you find them?

Selling a Patent Lesson Two: Research

It’s called good old fashioned research! A library or internet search engine should suffice.

You need to find the potential users of your patent. Who would want to use it and why? What industries would this fall under? Come up with 10-20 potential users. Then based on industries begin your research for companies that would sell to your potential users (the potential user may be the company itself).

Selling a Patent Lesson Three: Contact

Once you know which companies you will be targeting, start contacting them! Start by sending them a professionally written letter making them aware that you are looking to sell your patent and enclose a clear and concise description of your patent.

If you are having trouble getting into contact with companies through direct mail, try attending a trade show! They are a great way to meet people in your target sales group and also to gauge interest in your product. You may also meet other inventors and gain valuable knowledge of the market you are trying to get into.

Selling a Patent Lesson Four: Advertise

How will people know that your patent is for sale if you don’t make them aware? Advertising that your patent is for sale will only help you.

Let’s say “Joe” is interested in buying your patent. Joe looks on IdeaBuyer.com under patents for sale and does not see your patent listing. How will he buy it? He won’t. Joe will end up coming across hundreds of other great patents for sale and invest his money in them. Do you want Joe’s money or do you want to give it to someone else?

A patent buyer interested in buying your patent can’t buy it if he can’t find it for sale.

Recapping today’s lessons in selling a patent:
1: You and your patent material need to look like they are worth what you are selling them for.

2: You must research! You need to be the one able to answer all of the questions about your product, its markets, industries and potential users.
3: Get the word out! Write a professional letter to potential buyers letting them know your patent is for sale.
4: Advertise. No one will know your patent is for sale unless you tell them.

Now get moving! Read more about Selling a Patent

About the author of this article:

Lindsey Yeauger is the Director of Communications for Idea Buyer LLC, a new product development company that owns and operates IdeaBuyer.com- The Online Marketplace for Intellectual Property. The site gives inventors the opportunity to showcase their intellectual property to consumer product companies, entrepreneurs, retailers, and manufacturers. You can email her at Lindsey@IdeaBuyer.com.