Patent Licensing

Patent licensing is considered one of the most viable means of commercializing it. In short, a patent holder seeking to license his patent will not exploit it himself. That is, he will not try to create, market, and sell anything based on the patent. Instead, he will market the patent itself to those who do wish to take those steps. Any variation of this is known as “licensing a patent.” However, it is best to know some facts about licensing patents before one rushes to do so, or assumes that licensing is a “set it and forget it” means of cashing in on their intellectual property.

What is Patent Licensing?

Legally speaking, you have licensed your patent when you (the licensor) grant exploitation rights over your patent to a licensee (the person you are licensing it to.) “Exploitation rights” simply means the right to create, market, and/or sell something based on what that patent protects. A license of this nature is also a legal contract, and that contract is what will spell out in concrete terms precisely which exploitation rights are being granted. These include any performance obligations the licensor might demand of the licensee. This means that if any performance obligations are included in the contract (ie, “You must produce X number of sales by the year X.”), and they are not met, this could lead to the patent licensing being terminated in its entirety.


In this context, a license is also revocable – ie, cancellable – if certain terms and conditions are not met. This is a common characteristic of legal contracts in general, with special ramifications for patent licenses. The only way to grant someone irrevocable exploitation rights, it should be added, is to assign them the patent. Assignments, however, are permanent. They entail the sale or outright transfer of the patent by the assignor to the assignee. An in-depth exploration of patent assignments is beyond the scope of this article, but just know that they are an option if irrevocable exploitation rights are something you seek.)

Patent Licensing: How to Capitalize

Now that you know what patent licensing is and what it involves, we can move on to a discussion of how to capitalize on them financially. The primary means of doing this is to seek royalties from the licensee in exchange for using your patent. Royalties, typically, are paid over the life of the patent. The amount and frequency with which royalties are paid from licensee to licensor must also be spelled out in the license agreement. In this way, the licensor is protected. If the licensee fails to pay the royalties that were agreed to, the licensor can revoke the patent license and retain sole exploitation rights over it.

Patent Licensing Structures

Here is an example of how this might work in practice. Let us say you licensed your patent to someone in exchange for royalties amounting to 20% of all sales resulting from your patent on a yearly basis. If your licensee creates something from the patent that results in a profit of $100,000, you would be entitled, by the terms of your license agreement, to $20,000 of that profit. If the licensee failed to disburse those funds to you, he/she would be in violation of the agreement and you could then proceed to revoke the license.

(Again, the danger with using patent assignments over patent licenses is that failure to pay royalties will not revoke the rights you have already assigned. You will be free to litigate for the lost royalties, but this is often an expensive and lengthy process. With a patent license, the matter is more or less open and shut. Failure to pay royalties means revocation of the license.)

Now, some more elaboration on performance options is in order as well. Performance options are a form of protection for the licensor. They are a way to ensure that the licensee does not “sit on” the patent, ie, do nothing with it and thereby starve the licensor of the ability to capitalize on it elsewhere. There are two basic types of performance options that can be written into a patent license agreement.

Patent Licensing Performance Options

The first kind is pre-market entry milestones. In short, these are obligations that the licensee is expected to achieve or meet. They could include things like bringing the invention under a trial or validation process, creating a working prototype, satisfying pertinent regulations, progressing through any clinical trials that exist, and so forth. These performance obligations ensure that things move along at a steady pace without any income-killing lag in activity. It prevents the licensee from become inactive as a rights holder.

The second kind of performance obligations are post-market entry sales targets. These take effect once the invention is out of the development stage and available for sale on the market. Very simply, such obligations include sales targets, profit margins, or any other measurable goal tied to the performance of the idea in the free marketplace. These obligations give the licensee concrete goals that he must attain and give the licensor a bare minimum of royalties that he can expect to reap.

Other Recommended Patent Licensing Articles:

• Patent Licensing Negotiations
• Do It Yourself Patent Licensing
• License an Invention to a Retailer
• 10 Tips for Patent Licensing
• License Your Idea to a Manufacturer

In closing, licensing a patent is one of the most reliable ways to capitalize off of one’s intellectual property. By working with a patent lawyer to draft a rock-solid license agreement and choosing your licensee(s) carefully, you will greatly increase your chances of success.

Eric Corl is the founder of IdeaBuyer.com, The Online Marketplace for Intellectual Property. You can email him directly at EricCorl@IdeaBuyer.com

Need Assistance? Call 1-832-683-1527 | Idea Buyer LLC - Ohio Limited Liability Company

One of the most important tasks you will carry out as a patent holder is assigning a monetary value for it. This could become necessary for any number of reasons, such as:

• Selling the patent
• Licensing the patent
• Deciding how much equity to give to business partners investing or working with the patent

None of these decisions can be wisely made without first knowing, at least roughly, what your patent is worth. It is not always an easy task, as patent valuation is a somewhat inexact science. However, whether you have a provisional patent, a design patent, a utility patent, or a plant patent, some key principles should be observed.

You should value your patent with an eye toward the size of the market it could serve. If you own the patent to a new kind of baseball bat, you would want to determine the size of the baseball gear market. Consider this the starting point, for without knowing how much money is spent on similar existing products, you have no valid basis for assigning a worth to your own. After all, wouldn’t you agree that whether your market sees $1 million or $50 million in yearly sales, there would be an impact on how much your patent is worth?

Valuing a Patent: What have comparable patents been valued at or sold for?

One of the benefits of working with a patent attorney is that he or she will have access to comparable patents, or how much similar patents have been valued at or sold for. It could be that a new baseball bat was patented 10 years ago and valued at $500,000. Now, this does not necessarily mean that your patent is worth exactly that. Market forces change all the time, and the further back that similar patent was valued, the less it should influence that value you assign to yours. (Conversely, the more recently a similar patent was valued, the more that valuation should be heeded.)

Nevertheless, it pays to get a read on how similar patents are being valued rather than arbitrarily plucking an attractive number out of the air and assigning that as your patent’s value.

Valuing a Patent: Determine the patent’s validity

One major factor that needs to be considered when valuing anything is risk. In this context, a major risk is that someone who buys or licenses your patent will find that it does not hold up in court – that is, that the courts might decide the patent is invalid. How could this happen, you might ask? The website JournalOfAccountancy.com offers 2 possible scenarios:

“If it is discovered after a patent has been issued that the inventors didn’t meet the statutory requirements for obtaining it–for example, if they weren’t the inventors (35 USC section 102(f)), or had published information about the invention or offered it for sale more than one year before the date of application (35 USC section 102(b))–the patent is invalid and substantially worthless.”

Obviously, this is not desirable and any perceived risk of it happening will reduce what someone is willing to pay for your patent. The solution? Consult your patent attorney on ways to investigate the validity of your patent and convey this to prospective buyers. The more you can eliminate the perception of risk, the higher a value you can assign to your patent.

Valuing a Patent: Does Your Patent Overlap?

Part 3 of our “Patent Facts and Fiction” series says that a patent does not give you exclusive rights to make your invention, only to prevent others from doing so. But what if making your invention would infringe on someone else’s patent? This type of patent overlap is quite common and could lead to your patent being invalidated by the courts. Work with your patent attorney to investigate if any overlap exists and communicate to prospective buyers or licensees that this will not be an issue. Eliminating this risk will allow you to value your patent higher than if it was left unaddressed.

Valuing a Patent: What are the current substitutes?

No matter what you value your patent at, anyone thinking of buying or licensing it will investigate their alternatives. They will look for the “next best thing” and try to figure out if that would be cheaper than your patent. Since they are going to do this anyway, you had might as well figure out in advance and incorporate it into your valuation. Doing so offers you a strategic advantage – namely that if the next best thing is expensive (or there is no next best thing) you can use this as justification for charging more. Of course, if the next best thing is inexpensive or close to what you are asking, this could suggest a need to lower your valuation.

Valuing a Patent: Why are you selling/licensing?

You cannot value your patent in a vacuum, looking for the one, true, “right” value. Rather, you should assign a value by keeping your unique needs in mind. Why are you selling the patent? If you are just looking to cash out fast without a lot of meetings, delays, and deliberations, it might make sense to use a lower valuation. Money today is worth more than money tomorrow, and holding out for a trivially or even substantially higher price may not actually be worth it. Or, maybe it is – the point is that you need to make this decision consciously and not out of egotism or greed.

Valuing a Patent: Proceed with Caution

Keeping these 6 tips in mind will not instantly generate the “right” patent value for you, but it will ensure that whatever value you decide upon is far more realistic and valid than it would have otherwise been.

Need Assistance? Call 1-832-683-1527 | Idea Buyer LLC - Ohio Limited Liability Company

Steve Wozniak: How I Invented the Personal Computer

By Eric Corl, Idea Buyer LLC

The way most people (and infomercials) portray inventing, it seems like building something is the endgame. Create the widget, the logic goes, and your job is done. All that remains now is sitting back and waiting for fame, fortune and orders to pour in. This extends at least as far back as Henry David Thoreau, who famously declared “build a better mousetrap and the world will beat a path to your door.” Indeed, what could be more appealing from an inventor’s point of view? Unfortunately, this is not the way it usually works in practice. As marketing guru Perry Marshall countered, “Henry David Thoreau never built any mousetraps, and the world never beat a path to his door.” Marshall’s point - and our point today - is that inventing is a business. Like any other business, money is not made merely by developing a product. To truly cash in, you will need to create demand for what you invented and monetize that demand in a life-sustaining way. Several ways of doing this are discussed below.
Above, we said that turning your invention into a business starts with creating demand for the invention. But demand from who? There are actually a few routes you can take in generating demand for the invention. Perhaps the most obvious and intuitive is creating demand among customers. If your invention is a consumer product that could be sold on a store shelf, this is certainly something to consider. However, if you are going after the consumer market, their desires must be taken into account during the inventing process. Rather than merely inventing what you want, you must design, prototype, and develop what the buying public will pay for. It is possible that the latter might be something slightly or entirely different than what you imagined at the outset. Don’t let this stop you. Remember, your goal here is turning your invention into a business. Business is about finding needs and filling them.

That means it is far wiser to gauge demand for your invention at the beginning (by conducting market research or surveys) than to invent whatever you want and try to force it down people’s throats later. Many unhappy inventors have taken this path, only to find that their dreams of market success were doomed from the start. The phrase “an ounce of prevention is worth a pound of cure” comes to mind. Even if you are certain your invention has demand in general (for example, a new kind of bike tire), you can boost your odds of market success even higher by figuring out what current versions are lacking. What are some common complaints about alternatives to your invention that are already out there? Such questions will help you create something that people are already eager to buy without a whole lot of selling and hype. In fact, that is the central lesson of this entire article. The surest way to turn an invention into a business is to invent something for which there is much known, obvious, ready-made demand. If you have to convince people that they “should” want your invention, you’re looking at an uphill climb from day one.

Of course, inventors can create demand for their inventions from people other than consumers. Maybe your personal strengths and weaknesses are ill-suited to marketing your invention personally. It is not for everyone. An alternative strategy is to create demand among manufacturers, who would buy or license your invention and bring it to market themselves. Several advantages stem from this strategy. For one, you have the luxury of focusing on decision makers at a small handful of companies, rather than trying to juggle the logistics of selling in stores around the country. Conceivably, you could spend a few weeks creating a presentation, booking appointments and conducting product demos and close a deal rather quickly. The terms of the deal are completely negotiable by you and the manufacturer. For instance, the two of you could enter into a licensing agreement, whereby you get $50,000 immediately and 2% of gross product sales for 20 years. Or, you could agree to sell the invention outright for a larger up-front sum.

The main difference between creating demand among consumers vs. manufacturers is in how you promote the invention. Selling an invention in stores, again, demands publicizing the benefits of the invention to the consumer. Keeping our bike tire example, you would likely want to advertise how durable the tire is, how it is more puncture-resistant than the leading brand, and how it offers better traction over rocks, branches and mud. This is the information pertinent to a consumer’s decision making process. Manufacturers, of course, have their own decision making process. Rather than product benefits, the manufacturer is concerned with profit margin, production costs, short and long-term demand and the likelihood of the product triggering lawsuits, among other things. Pitching to manufacturers, therefore, requires having pleasing answers to these questions.

Again, the overall idea is that turning an invention into a business centers around demand. Without demand from others, money never changes hands. We cannot stress enough, therefore, that you are not inventing simply what you want. While this is a great starting point, what you personally want to invent must always take a backseat to what consumers or manufacturers will pay for. Luckily, there is often room for both to co-exist. If you have spent your life working with a product category, chances are you are one of its consumers who knows what you and others will pay for. Keeping these principles in mind will go a long way towards turning your invention into a feasible business.

Eric Corl is the founder of Idea Buyer LLC, an Ohio Limited Liability Company. Idea Buyer LLC runs and manages IdeaBuyer.com and is a leader in new product development and commercialization practices. You can email him at EricCorl@IdeaBuyer.com. If you have a product that you would like our feedback on, email info@IdeaBuyer.com

Have a great idea and don’t know what to do next? Call us at 832-683-1527.
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One of the most common obstacles facing the new inventor is running a patent search. There are many reasons why an inventor would want to do this. The most obvious reason is to justify spending a great deal of time and money on an invention by determining that no one else has patented it. You may even have a specific patent number that you want to investigate further for any similarities to your project. Whatever the reason may be, the ins and outs of conducting a patent search are not always obvious. In this guide, we will explain how to do so in easy to follow steps.

How to Conduct a Patent Search Video

How to Conduct a Patent Search Step One:

Narrow your search to a 5-15 very specific names.
This is a crucial yet oft-overlooked step in the patent search process. Before running any type of search, anywhere, you need to narrow your search to a handful of very specific names. This is because the United States Patent and Trademark Office (PTO) demands specificity. The vaguer a patent is the more control the holder can exercise over the market. Therefore, there is an immense burden on patent applicants to be as narrow and specific about the nature of their patent as possible. You need to heed this fact when running a patent search. For example, if the patent you are looking for pertains to an online shopping database that ties a user’s shopping preferences to his shopping history, running a search for “online shopping database” is almost pointless in this context. It will return more results than you could possibly screen, and few if any will be relevant to what you are looking for.

Instead, a much better search would be something like “online shopping history based matching metrics.” The closer you can get to describing what the patent truly protects, the more helpful your search results will be. Simply think long and hard about what you are looking for and come up with 5-15 very specific potential names for it. These are the names you will use to conduct your search.

How to Conduct a Patent Search Step Two:

Run the search via the USPTO’s official website.
It used to be that the only way to run a patent search was hiring a patent attorney. Prior to the advent of the Internet, these attorneys had a near exclusive monopoly on running searches and doing all manner of patent-related work. Fortunately, this is no longer the case. Anyone who wants to run a patent search can visit the USPTO website and do so in a simple, self-service fashion.
http://www.uspto.gov/patft/index.html
There are a couple of options at this page that you can use depending on your exact needs. If you just want to run a cursory search for the patent you have in mind, the Quick Search will work wonders. From here, you can type in two descriptive terms and specify the years between which you would like to search: either 1976 to the present or 1790 to the present. Now, common sense will go a long way towards making your life easier in this regard. If the patent you are searching for is in any way high-tech, you can filter out a lot of irrelevant results by choosing the “1976 to the present” option. However, if your invention is timeless or mechanical in nature, the full “1790 to the present” option is probably best.

You can also drill down into the patent database for the exact type of information you want. Clicking the “All Fields” drop-down menu turns up a cavalcade of search options. You can search for the abstract, the issue date, patent number, assignee name and city, and about a dozen other options.

SRC: http://patft.uspto.gov/netahtml/PTO/search-bool.html

However, what if you already have a patent number and just want to see information about what it pertains to? This link takes you straight to a patent number search. Just key in the number and click “Search” to find the full text of the patent in question.

SRC: http://patft.uspto.gov/netahtml/PTO/srchnum.htm

Now, you may notice in using these pages that the USPTO’s website is not the most user-friendly resource out there. Luckily, there is an easier way: Google Patent Search. The reason we covered the USPTO’s site first (or at all) rather than Google is because this is the official first source of all patent-related data. While Google is by all counts reliable, you should use the USPTO’s site if there are any worries about gaps in the patent records you are seeking.

How to Conduct a Patent Search Step 3:

Use Google Patent Search
Google Patent Search is a beta service that combines the easy searching of Google with the patent data from the USPTO. That is the true beauty of using Google instead of the USPTO: your search results and patent profiles are significantly cleaner, more readable and easier on the eyes.

SRC: http://www.google.com/patents

As a demonstration, we will run a search for the patent on the electrophotographic copier, or “copy machine.”

http://www.google.com/patents?id=Pp48AAAAEBAJ

As you can see, the page is very helpfully divided up into distinct sections, making it easy for you to find the information you are interested it. You can choose to download the whole patent, view it as an Adobe PDF document, or even click a direct link to the USPTO’s record. On this same page, you can also view the patent’s list of citations, the claims it makes, and the drawings the patent holder accompanied with his patent application. Again, while these things can be found at the USPTO site, those unfamiliar with patent records will waste hours looking for what Google organizes so readily.

There you have it: three simple steps to conducting a patent search. Above all, remember that the more specific your searches are, the more likely you are to find the patent you want – or – the more justification you will have to conclude that no one has your patent, if the search comes up empty. Good luck!

Eric Corl is the Founder and CEO of IdeaBuyer.com, a marketplace for new technology and products that gives inventors the opportunity to showcase their intellectual property to consumer product companies, entrepreneurs, retailers, and manufacturers. You can email him at EricCorl@IdeaBuyer.com. You can visit the site by clicking here > Patents for Sale.

Need Assistance? Call us at 832-683-1527

It is not until a man gives up that he is a failure. Failure is simply an event. Failure can serve us greatly if we utilize its lessons and continue moving forward. For those of you that have allowed the past 11 months since the New Year beat you down and withdraw your enthusiasm for your goals, pay attention.

No one is born a great inventor. Great inventors become so through years of hard work, dedication, and sharpening of their saw.
Successful inventors study the markets they invent for, build contacts, and partner with individuals who can help them take their product to the next step. They utilize their capital wisely, investing in materials and services that are value based and help them build their networks.
One thing they do not do is give up. This isn’t to say you should never let a product go. What it means is that you should never stop inventing, educating, and taking massive action.
This past week I had the opportunity to speak to a very intelligent and motivated inventor named Lisa. Her last invention flopped after she spent a large chunk of her money on patent services before she had a chance to really get started.
While most people, rejected, would feel defeated and give up. Many would think, “maybe this just isn’t for me. Maybe I am not cut out for this”.

Not Lisa. Lisa learned from her mistakes, built up her coffers, kept her journal, educated herself further, and is currently in talks to license her patent pending product. We also had the opportunity last week to get two new products into retail locations where they will begin selling. Collectively, the inventors have been working on their inventions for over 5 years and their persistence is paying off.
The will of the human mind is the greatest gift a person is given.
The human mind is what can help people get through atrocious events like the Holocaust.
Your mind, like a tree, can only grow stronger when it is challenged by the weather of life.
If a tree is insulated against nature, its trunk stays week. It does not grow stronger. Eventually, if it is planted alone, it often snaps during turbulent times and dies.
Let the storms and weather you face serve you in your inventing career.
Think about how you can take control back and fire up that engine inside of you. That engine that says;
“I do not fear failure. I only fear the “slowing up” of the engine inside of me which is pounding, saying, “Keep going, someone must be on top, why not you?””
- George Patton

Best,
Eric Corl

Eric Corl is a serial entrepreneur and the founder of Idea Buyer LLC, a new product development company which operates IdeaBuyer.com. You can email him at EricCorl@IdeaBuyer.com.

“If you want a recipe for a startup that’s going to die, here it is: a couple of founders who have some great idea they know everyone is going to love, and that’s what they’re going to build, no matter what.”
- Paul Graham

As an inventor, it is all too tempting to fall into the “trap of the idea.” What we mean by this is that inventors and businessmen alike often end up with a kind of tunnel vision, such that they ruthlessly pursue their exact idea regardless of what their market has to say about it. The passion most inventors have about their project is so strong that their invention soon becomes an extension of themselves, and criticism of the project is often taken personally. The old “If you build it, they will come” attitude soon pervades the mindset of inventors, until they truly believe that if they could just get the project perfectly right, down to every minute detail and exact feature, the market would finally be held in awe of what they have created, and everyone and their mother would be calling in orders.

Sometimes this is the case, but it is a lot less common than you might imagine. The Segway Scooter, invented by Dean Kamen, is an example of this phenomenon. Discovering a breakthrough technology that allows gyroscopes to monitor the rider’s center of gravity about 100 times a second, Kamen decided he would use it to build a revolutionary transportation device, and that’s exactly what he did. Thanks to an absolute ton of media hype and mystery surrounding the project, and also thanks to the futuristic look and feel of the device during a time (2001) when the world was hungry for such space-age devices, the project was a moderate success. An inspiring story to be sure, but not a scenario every inventor should hang their hat on. What is most important to remember is that a business lives, thrives and dies by one thing and one thing only: Demand. With orders in hand, you’re sure to stand, when orders slow to a crawl, you’re sure to fall. With that in mind, let’s examine a few of the errors that can cause orders to slow to a crawl, and how to avoid them.

Neglecting to identify your target market is a common mistake among new inventors. We see very unique and creative ideas from very smart people all the time and one of the biggest predictors in early success is whether or not they know whom they will be selling to. When asked, “What specific group of people will use this, and why,” we are often met with a blank stare quickly followed by a rehash of how awesome and revolutionary the product is. If you cannot identify the exact kind of person who will pay money for what you are creating, do yourself a favor and dedicate some time to figuring it out.

Perhaps the most valuable lesson an enterprising inventor can learn is to be flexible and open minded about your invention. You might have a very helpful invention on paper that will make it easier for business executives to keep track of sales, but if you show it to several executives and they all recommend similar changes to your original design, chances are you should consider them. Since you will be selling to these people, their suggestions reflect what your market is looking for. Failure to adapt to these suggestions and indignantly building exactly what you think is best is little more than exercise in narcissism that is sure to cost you valuable sales. If you are truly committed to meeting the demands of your market, you might consider developing a kind of feedback loop with your customers such that they can make new suggestions to you. These suggestions will inevitably help you to identify how you can rake in more orders and expand your business to new heights, rather than hit a glass ceiling due to neglecting the requests of your customers.

Another common reason why sales do not pour in is a failure to secure widespread reach. “Reach” is your ability to spread the word about your invention and to ensure that your message reaches your target market. Many new companies fail to give this problem proper consideration, and go full speed ahead into production without any idea how they will generate publicity once they have products to sell. Many inventors brush this concern off as a secondary issue, assuming that reach will work itself out naturally once they have their amazing invention created. This is a mistake, as reach is actually of prime importance to any new inventor, and routes to exposure should be carefully thought out and planned before you get too far into production. If there isn’t a clear way for potential customers to discover your product, they have no chance to place their order.

The biggest take away from all of this is that demand for your product is the only factor that will keep you afloat in the long run. It is therefore your noblest duty as an inventor and owner (or soon to be owner) of a nascent company, to make sure that those orders pour in. By identifying your market, adapting to your customers demands, and through ensuring that new customers can learn about your product, you will be establishing your company on a solid, stable foundation with a much greater potential to succeed.

Eric Corl is the founder of Idea Buyer LLC, a new product development company which operates IdeaBuyer.com. You can email him at EricCorl@IdeaBuyer.com.