Sample Patent Licensing Agreement

June 12th, 2014

Patent Licensing Agreement

Patent licenses can seem confusing or scary. Therefore, one helpful way of clearing up the confusion is to dive right in and examine what a real, actual patent license looks like and consists of. In this article, we’ll look at the most vital elements of a patent license and explain what each section means in plain, non-legalese English.

 

A Sample Patent Licensing Agreement in Plain English

Here is the URL to the full text of the patent license we are referencing: http://contracts.onecle.com/occulogix/brunner.lic.2004.10.25.shtml.

 THIS AGREEMENT (the “Agreement”) is made by and between OccuLogix, Inc.

(formerly Vascular Sciences Corporation), a Delaware Corporation (the

“Licensee”), and Prof. Dr. Richard Brunner (“Brunner”) living in Germany and

listed as inventor along with Prof. Dr. Helmut Borberg (“Borberg”) in US patentapplication 09/000,917, which is the parent application of US letters patent 6,245,038 issued June 12, 2001 (the “Patent”).

 

This is what every patent license starts out with: a clear identification of the people who are making this agreement and who will be bound by what it says. This paragraph names OccuLogix as the “licensee” (the person or entity the patent is being licensed to) and Prof. Dr. Richard Brunner, who is normally called the “licensor.” The licensor is the person or entity who holds the patent and choosing to license it to the licensee. This opening paragraph is the bedrock of any patent license, and vagueness here will only spell problems for later, “high-stakes” clauses like royalty requirements or performance obligations.

1.   Patent Rights. Shall mean any and all of Brunner's rights, title, 
ownership and interests in and to US letters patent 6,245,038 and any and all
inventions, modifications, continuations-in-part, extensions, divisions,
improvements, etc. made by Brunner or his agents, in any and all areas that
relate directly to the Patent, regardless of whether such inventions or
improvements are patentable or may become patented; all inventions,
modifications, continuations-in-part, extensions, divisions, improvements,
etc. shall automatically be incorporated herein without the payment of any
additional fees, royalties or any other compensation or considerations of
any kind.


A vital aspect of patent licenses (and all legal documents) is defining what you mean when you say things like “patent rights.” For this reason, terms that are likely to be used over and over throughout the license are defined early on. In this case, the license defines “patent rights” to basically mean all the rights granted by law to patent holders. It goes on to specifically define the patent in question as patent 6,245,038 and anything created as a result of it. By spelling all of this out up front, in crystal-clear detail, the term “patent rights” will be interpreted without confusion if the agreement ever needs to be enforced.

 

2.   License Grant. Brunner confirms that he has exclusively licensed, 
and does hereby continue to exclusively license, in accordance with the terms set
forth below, unto Licensee, Brunner's entire undivided right, title,
ownership and interest in and to the Patent and the Patent Rights,
throughout the Territory, to be held and enjoyed by Licensee the same as it
would have been held and enjoyed by Brunner if this Patent License and
Royalty Agreement had not been made and entered into. The exclusive license
granted herein also includes an exclusive right for the Licensee to grant
expressly or implicitly, directly or through its subsidiaries or
affiliates, sublicenses to the Patent and the Patent Rights without the
requirement to pay any additional royalty fee or sublicense fee to Brunner,
to end users of the patented method including medical practitioners and
medical clinics.

This clause specifies that the licensee will be receiving a complete, unclouded interest in the patent and the ability to do with it what he sees fit, within the conditions of this license agreement. It means that unless something has been explicitly forbidden of him, he is free to capitalize on the patent in a manner of his own choosing without seeking permission from the owner/licensor of the patent – in this case, Professor Brunner. This prevents Brunner from trying to drag the licensee into court after the fact demanding additional royalties or sublicense fees that are not provided for in the license.

 

5.   Advance Royalty Payments. Licensee agrees to pay Brunner Fifty Thousand
     Dollars ($50,000 USD) annually as an advance and credited against any                
     and  all Royalty Payments paid in accordance with this Agreement. 
Such Advance Royalty Payments shall be non-refundable and be paid to Brunner 
and in equal payments of Twelve Thousand Five-hundred Dollars ($12,500 USD), 
made quarterly, on or before the expiration of Forty-five (45) days after the
reporting close of each prior calendar quarter.

 

This clause begins to define the royalty payments that will change hands – from the OccuLogix to Professor Brunner – as a result of this agreement. Note the unmistakable specificity of the clause. It specifies how much is to be paid ($50,000), in what increments it is to be paid (equal payments of $12,500), and when it will be paid (45 days after the close of each prior calendar quarter.) This is exactly what you want to shoot for in your patent license, as it eliminates any confusion or dispute about the size and frequency of royalty payments.


7.   Sublicense Fee. In instances where Brunner has consented to a 
sublicense t0 the Patent and the Patent Rights from Licensee to a third 
party who is not an end user of the patented method, Licensee agrees to 
pay to Brunner a sublicense fee constituting a non-refundable cash payment 
equal to Twelve-and-a-Half Percent (12,5% in USD) of any: 
     (i)   Upfront cash payment made to Licensee in consideration of the
           sublicense;
 
     (ii)  Sublicense fees received by Licensee in consideration of the
           sublicense;
 
     (iii) Premium over the fair market value of equity investments in
                  Licensee in consideration of the sublicense; and
 
     (iv)  Non-cash consideration received by Licensee from a sublicense in
           consideration of the sublicense, such consideration to include,
           without limitation, equity in other companies and the value of any
           license granted to Licensee.
 

This clause specifies what happens if OccuLogix sublicenses the patent to someone who is not a customer or end user of the patented technology. By clarifying this up-front, the likelihood of any future dispute or litigation arising from sublicensing the patent is dramatically lowered. It is always better to provide for what happens in these scenarios, in writing, instead of waiting to duke it out in court after the fact.



9.   Failure to Pay by Licensee. Should Licensee fail to make any payments as
     required herein, and should the Licensee fail to cure the breach created
     thereby, any and all rights, title and ownership to the License provided 
to the Licensee under this Agreement shall be forfeited and any and all such 
rights, title and ownership to the License shall, upon notice of the
failure to cure the breach, immediately revert to Brunner, and all monies paid 
by Licensee until such date shall be retained by him without forfeiture.

 

To be sure, this patent licensee specified exactly what will occur in the event that a payment is missed or not made. This is also highly advisable for anyone writing their own agreement (which we don’t recommend). Working with a patent attorney with experience in patent licensing can help you protect the downside risks for both parties. This sample patent licensing agreement overview is not legal advice.

10 Greatest Medical Inventions

June 7th, 2014

This infographic takes a look at the 10 Greatest Medical Inventions of the last 50 years. The infographic, created by HealthExecNews.com, does a good job outlining the impact each of these inventions has had on society since being invented. It should serve as a great reminder that our patent infrastructure is in place to help protect and therefore help protect the rewards of great inventions like this. We’ll be taking a deeper look into inventors who have changed the world with their inventions, ranging from everyday consumer products to high tech gadgets that change the way we live.

Greatest-Medical-Inventions

Top Inventions of 2013

January 30th, 2014

Throughout 2013, a multitude of indispensable inventions have been released to alleviate the stresses of any element of our day to day lives. Here is a look at the top inventions of 2103:

1-Automatic

Automatic is a device which you can attach to a car’s onboard computer which displays data about your engine and driving habits to your phone. It uses GPS to map out each trip your have made, remembers where you have parked your vehicle, records gas usage and mileage and presents you with a driving score. If the check engine light appears on your vehicle, Automatic will decipher the code and diagnose exactly what the problem is. Automatic is invaluable if you have a car accident because if your smart phone is on and has a GPS signal, it will automatically notify local authorities and your family members. Automatic is incredibly useful at informing you of the environmental impact of your driving and providing you with precise details of your vehicle, enabling you to drive efficiently and without any worries should any problems occur.

2-Bounce Imaging Explorer

Bounce Imaging Explorer may be the size of a baseball, but it contains six cameras as well as a microphone to transmit audio, a Wi-Fi transmitter and sensors to detect temperature and air quality. The can be thrown into an area which for safety reasons may be deemed inhabitable. The Explorer will then proceed to transmit data about the area via smart phone or tablet. The Explorer was created by Francisco Aquilar who was inspired after the Haiti earthquake in 2010. Whilst the Explorer is still a prototype, its concept could prove pivotal in future years for emergency services and the military.

bounce invention

 

3-Google Glass

This wearable computer may well be the next stage of the smart phone. It offers a video camera, an Internet browser, real-time GPS all in the form of a pair of glasses. Google Glass responds instantly to voice recognition or hand gestures, displaying results in front of your right eye. A mass produced version is predicted to appear on the market in 2014 and only time will tell the extent to which this invention will revolutionise modern society.

4-Proximity Monitoring Systems

Kensington Proximo is an app-enabled system which lets you know where your IPhone and other valuables are at all times. You can even install within your vehicle and it locates the exact parking spot in which you left your car. Proximo ensures you know where your vehicle and other valuables are, granting you complete security over your most prized possessions.

5-CarMD 

It is now possible to purchase a self-diagnosing device for your vehicle to regularly and efficiently check the condition of your vehicle. CarMD notifies you immediately and in precise detail by scanning your vehicle’s microprocessors. It notifies the driver immediately when a problem occurs and proceeds to instruct the driver on possible solutions.

Top Inventions of 2013

6-Hop suitcase

The Hop suitcase is a new design which will follow you around the airport without you having to even touch it. The suitcase uses your smart phone to calculate where you are in relation to the suitcase and follows you accordingly. The days of dragging around heavy suitcases are now a distant memory!

Hop Suitcase that follows you

7-Luci

Luci by Mpowerd is a compact, collapsible solar powered light which you can keep in your car for emergencies, or take with you on outdoor activities as a handy flashlight. It can illuminate up to 15 square feet and a seven hour charge in direct sunlight can generate six to twelve hours of light. Luci was originally designed to aid the developing world, and the company currently operates a Buy-One-Give-One policy where a Luci is donated to a developing community whenever you buy one.

8-Legal Aid App

The Apple Store now offers a variety of apps offering information on where to find legal aid in your area. The National Legal Aid News app provides you with updates about legal aid and related programs across the nation. It offers information state by state, with additional information concerning legal aid for low-income users, for the legal services corporation and will even provide the fifty most recent news stories for any state or category.
 

9-TrakDot Luggage

The perfect solution to lost luggage worries! Simply place TrakDot into your luggage and it will regularly notify you of your luggage’s location via email, text or app. Additionally, you can program TrakDot to notify you when your luggage has arrived at your destination, it can even notify you the moment your luggage is paced on the baggage carousel!

TRAKDOT

10-Keyless Ignition

Keyless ignition allows you to unlock and start your car while your keys are still in your pocket or purse. Each key fob is encoded with a unique sensor, which the vehicle senses in order to unlock and power up the engine. The only thing you have to do is press the power button by the steering wheel! Moreover, all of the key fobs contain personalized and encrypted codes to deter thieves, thus providing both convenience and security.

Author

This article was written by Bradley Taylor, a freelance writer from Derby, England. You can connect with Bradley on Google+ and follow him on Twitter.

Is the Accelerated Patent Process Right for You?

January 1st, 2014

accelerated-patent-processFor those innovators who might not be able to hold out for a two year patent process, the government offers an accelerated patent process.  As of August 2006 the United States Patent and Trademark Office (USPTO) has offered potential patent holders an accelerated examination program that could cut wait times by up to 75 percent.  While this program provides a faster patent, the application process requires the applicant to be more specific and accurate about their invention.

The first patent granted under this new government program was to Brother International, Ltd. for a printer ink gauge.  The application was submitted September 29, 2006 and the patent issued only six months later on March 13, 2007.  This was a quarter of the time usually required to receive a patent.

Accelerated Patent Process Benefits

Jon Dudas, Undersecretary of Commerce for Intellectual Property, said that accelerated examination allows innovators in any technology a patent review and decision within 12 months.  In return for a faster patent decision, the agency expects the applicant to provide a better application and process, Dudas said.

This should be no problem for those with truly innovative ideas and a drive to get results relatively quickly.

According to a press release from the USPTO, “Any invention that is new, useful, non-obvious, and which is accompanied by a written description disclosing how to make and use it can be patented.”  This is no new news to inventors.  Where the requirements differ slightly is that those seeking patents must prove that their idea is new and non-obvious (known as “prior art”) in the accelerated examination application, the press release said.

In the standard patent process, inventors are only required to provide prior art related to their idea of which they are aware.  The USPTO would then do their own search and identify any prior art that would make the invention not patentable.  In the accelerated patent process program, inventors are required to search and provide reference to all prior art with their application.  They also must explain what the prior art taught them and why their invention is different.  This significantly speeds up the patent issuing process for the USPTO.

Are the Benefits Worth It?

Ultimately, the choice one makes about whether or not to use the accelerated patent process depends on the amount of time and work the inventor is willing to put in to applying.  An extremely thorough application is required, as is a better description of the invention and prior, related inventions.  While the process might seem lengthy and overwhelming for some, others might consider it a great opportunity to get a quality patent in less time.

Those considering the accelerated examination program to pursue their patent should definitely research the procedure to ensure that it is right for them.  The USPTO web site has official guidelines and applications available to those interested.

Standard Licensing Agreement Terms

December 25th, 2013

Standard Patent Licensing Terms

Do you feel like you are throwing darts trying to come up with reasonable terms and performance obligations for your patent license agreement? If so, there is no need to panic. Patent licensing is an established field with standardized terms and considerations that you can use as benchmarks. In this article, we will walk you through some of the standard licensing agreement terms and offer tips on applying them to your own unique situation.

The first thing you need to decide is whether your patent license will be an exclusive or non-exclusive license. An excellent article called “Patent Licensing” explains the difference between each type: and which one your licensee is probably going to want:

“A patent license is a waiver by the licensor of the right to exclude the licensee from practicing under the patent rights. Licensees would prefer to obtain an exclusive license if possible. In addition to the commercial disadvantages of a non-exclusive license, a non-exclusive licensee acquires no affirmative rights with respect to the enforcement of the licensed patents. Unless the non-exclusive license specifically provides some protections, the licensor has no duty to protect the non-exclusive licensee’s interests in the event of patent infringement, abandonment of the patent, or other licensee’s with better terms.”

SRC: http://www.zeromillion.com/entrepreneurship/patent-licensing.html

Standard Licensing Agreement Terms to Avoid

Once you have settled the matter of exclusive vs. non-exclusive, you will move on to what performance obligations and requirements get written into the license. There is one clause, however, that you should avoid: the generic “best efforts” clause. The article continues:

“Both parties should avoid this clause in favor of more objective standards. The courts may interpret such a clause to require the dedication of all of the licensee’s resources towards exploitation of the licensed patents, when realistically most licensees will have a number of other significant business endeavors to support.”

Fortunately, there is a better way to ensure that your licensee performs on a high level: specific, numeric performance obligations. The idea is that you want each party’s responsibilities to be crystal clear, unmistakable, so that they can be enforced. For instance:

For example, the licensee may be required to obtain an approved New Drug Application with the Food and Drug Administration by a certain date. Licensees should be aware that there is an implied obligation to exploit the licensed patent on the part of an exclusive licensee.

An obligation like this is very specific. If it is not met, you as the licensor will have the right to revoke the patent if you feel that is warranted. Of course, you will need to tailor the performance obligations in your contract to your own needs and desires. You may decide to give your licensee more relaxed terms, say, if you are close friends or longtime business partners. The choice is really between you and your licensee.

But how should you set those obligations? This is where many patent holders stumble and feel that they are shooting in the dark. Fortunately, it does not have to be this way. There are 2 main benchmarks that you can use in setting performance obligations and royalty requirements.

1)      Your costs up until this point

Whatever you have paid to patent your idea, document it, advertise it, and bring it to life should be factored into what you expect out of your licensing agreement. After all, you want to recoup those costs, and profit some, besides. That’s the whole point of licensing the patent in the first place.

2)      How much you are making from the patent

If you are already capitalizing on the patent, you should aim to replace and exceed that income with your license agreement. For example, let’s say you created a product based on your patent and are earning X dollars a month from it. If you want to grant someone an exclusive license to take the reins and capitalize on your patent, you should be getting X + something from the agreement. Otherwise, why not just keep exploiting your own patent yourself? If you are going to introduce a middleman (the licensee), it had better be worth your while.

Discuss Your Royalty Requirements

The same goes for royalty requirements. This is when you specify “This agreement must provide me with X dollars monthly, annually, or semi-annually, regardless of where it comes from.” Here, too, you want the amount to compensate you for what you have already spent or what you are already earning. The way to avoid the “throwing darts” feeling is to run the numbers and set your royalty requirements based on those.

As you can see, the key to a license agreement based on numbers instead of guesswork is to assess your own unique situation. While the basic framework of patent licenses is standardized (exclusivity, performance obligations, term lengths, etc.), the exact manifestations are up to you and your licensee to hammer out amongst yourselves. Have questions? Contact us.

 

Patent Statistics

December 2nd, 2013

Patent StatisticsIn this article, we share helpful patent statistics from The US Patent Office. The US Patent Office was officially established in 1790, by Article One: Section Eight of the US Constitution. The Establishment of the USPTO was to “promote the progress of science and useful arts, by securing limited times to authors and inventors, the exclusive rights to their respective writings and discoveries.”

On April 10th, 1790, George Washington signed the first Patent Act of The United States into law. The first patent was issued to Samuel Hopkins on July 31st, 1790, for a process of making “potash” which is an ingredient used in fertilizer. Patents of the time were signed off by both the President and the Secretary of State. Soon that proved impractical and the job was assigned to the clerks in the US Department of State. Dr. William Thornton was assigned the job of first clerk of the Department of State in 1802 and given sole responsibility over patent applications on June 1st of 1802, which in effect opened the first US Patent Office. Trademark registration was added to the functions of the USPO in 1881. Now the USPTO has a campus comprised of five main buildings.

Since that time, over 6.3 million patents have been issued and the patent office receives more than 326k patent applications per year. There are over 300 Intellectual Property and patent offices worldwide which WIPO is attempting to organize. Statistics show that over 2 million patent applications were filed worldwide in 2011; that was the largest increase in patent history, showing a 7.8% increase over 2010.

Of the 503,582 patent filings in the US in 2011, roughly 50% were granted. The USPTO has been working with a backlog which holds up the patent process resulting in nearly three years of wait time between filing and the end of pending status. In 2012, the USPTO reduced their backlog from 750K in 2009 to just over 603K which means the office has increased efficiency since the Leahy-Smith America Invents Act (AIA) was signed into law. The AIA represents the most significant change to patent law since 1836, according to David J. Kappos, the Director of the USPTO. The AIA switches the US patent system from “first to invent” to “first inventor to file”, eliminates interference proceedings and develops post grant opposition. AIA was signed into law on September 16, 2011 by President Barack Obama; its central provisions will go into effect on March 16th, 2013.

Whenever an application fails the USPTO it is generally because those filing the application failed to meet one or more of the three main criteria; the most often being whether the invention is obvious. In other words, inventions must be novel or unique from any other, so a can opener is a can opener, unless it is an electric one, or it fits in a pocket, or folds in half. The second criterion is if the invention is obvious based on whatever is already in use. For instance, a motorized bike has already been invented and patented, but if a new design makes it more efficient then the new design may be patented, so long as it is not the obvious result of technology that already exists. Finally, the invention must be useful.

The USPTO has grown from one clerk to over 11,000 employees in 2012. To put that into perspective, we have an elected congress of 435 State Representatives and 100 Senators; the PTO has over 14 times as many employees working as patent examiners. Patent examiners are generally recruited from universities around the country, while trademark examiners must be licensed attorneys. The USPTO is a forerunner of telework with over 7300 employees working from home at least one day per week in the 2012 fiscal year.

Intellectual Ventures holds the most US patents. Intellectual Ventures, a private company with a focus of developing a large patent portfolio, and the licensing those patents to other companies. Their estimated patent portfolio was 15k-20k in 2011, and has been growing with patent deals made this year.

IBM has the distinction of being the corporation awarded the most patents since 1997. The last statistics available from the USPTO showed that IBM still held the number one position in 2010, but that office no longer issues a top ten list.

Of all available data, Kia Silverbrook has received the most patents from the USPTO for utility patents (new inventions) every year since 2007. Kia Silverbrook is from Australia, and considers himself a “serial entrepreneur” having founded companies and developed products in a wide range of areas. Kia Silverbrook is also the most prolific inventor of all time, with a total of 4508 granted US patents as of October 2012. He has 9740 patents or patent applications registered nationally.

According to a report from the USPTO, 97.1% of patents are now filed electronically; up from 71.7% in 2008. The USPTO goal of clearing the oldest patent applications first (COPA) achieved a 99% success rate, with only 32,365 of the original “Tail” or backlogged cases remaining to be worked. The new First Action Interview Pilot Program allows participants to conduct an interview with the examiner as soon as the prior art search has been conducted. This program has resulted in greater efficiency by increasing the ability to prosecute an application; enhancing interaction between the applicant and the examiner, and the resolution of patentability issues through a one-on-one with the examiner.

Top 10 Venture Capital Investments of 2012

May 16th, 2013

The following data is based on reports from Pricewaterhouse Coopers, the National Venture Capital Association, and the Angel Investor & Venture Capital Network, Startups.co. The top 10 venture capital investments of 2012 incorporated data from the first three quarters. Fourth quarter data will be published in 2013.

The Top Ten begins with a tie for the tenth spot:

#10 Bloom Energy

Bloom Energy Inc. of Sunnyvale CA is an Industrial/Energy company that develops solid oxide fuel technology. They tied for third largest venture capital investment in the second quarter of 2012 with $100 Million USD. The investment was requested for Later Stage Development and provided by Apex Venture Partners and an Undisclosed Firm.

Total Venture Capital Investment: $100,000,000.

#10 Pinterest

Pinterest Inc. is a Media and Entertainment Company from Palo Alto, CA. Pinterest operates a vision board-styled social photo sharing site. Pinterest Inc. tied for third in the second quarter of 2012 with $100 Million from Andreessen Horowitz, Bessemer Venture Partners, FirstMark Capital, LLC, and an Undisclosed Firm. The money was slated for Early Stage Development.

Total Venture Capital Investment: $100,000,000.

#9 Fab.com

Fab.com, Inc. is a New York, NY Retailing/Distribution Company, and operates as a marketplace for discovering everyday design. The venture capital investment of $100,800,300 came from a variety of sources; Andreessen Horowitz, Atomico Ventures, Baroda Ventures LLC, DoCoMo Capital, First Round Capital, Mayfield Fund, Menlo Ventures, Pinnacle Ventures, ru-Net Ventures, and an Undisclosed Firm.  The venture capital was slated for Expansion.

Total Venture Capital Investment: $100,800,300.

#8 Elevance Renewable Sciences

Elevance Renewable Sciences, Inc. is a Biotechnology Company in Woodridge, IL focused on producing renewable specialty chemicals. Elevance Renewable Sciences received the third largest venture capital investment in the third quarter of 2012. The company garnered $104,360,000 USD for Later Stage Development from Total Energy Ventures International SAS, and an Undisclosed Firm.

Total Venture Capital Investment: $104,360,000.

#7 Harvest Power

Harvest Power Inc. is an Industrial/Energy company in Waltham, MA, providing organic waste management services. Harvest Power took the second largest venture capital investment in the second quarter of 2012 with $112,000,200 from a number of investors: Duff Ackerman & Goodrich LLC, Generation Investment Management LLP, Kleiner Perkins Caufield &Byers, True North Venture Partners, L.P., and two Undisclosed Firms. The venture capital investment was raised for Expansion.

Total Venture Capital Investment: $112,000,200.

#6 Drilling Info, Inc.

Drilling Info, Inc. is a software company based in Austin, TX; they provide online data and tools for the oil and gas industry. Drilling Info, Inc. ranked fourth in the first quarter with $116 Million from Battery Ventures, L.P., Eastern Advisers Private Fund, L.P., and Insight Venture Partners. The venture capital was requested for Later Stage Development.

Total Venture Capital Investment: $116,832,000.

#5 Box, Inc.

Box Inc. is a Software company based in Los Altos, CA. Box Inc. provides a secure content sharing platform. The company took the #2 spot in the third quarter  with over $125 Million from Bessemer Venture Partners, Draper Fisher Jurvetson, General Atlantic LLC, New Enterprise Associates Inc., SAP Ventures, Scale Venture Partners, The Social + Capital Partnership and an Undisclosed Firm.  The venture capital was acquired for Expansion.

Total Venture Capital Investment: $125,000,200.

#4 Sapphire Energy

Sapphire Energy, Inc. is an Industrial/Energy company based in San Diego, CA. The company develops algae-based green crude oil. Sapphire Energy Inc. took the #2 spot in the first quarter with $200 million from ARCH Venture Partners, Monsanto Corporation, an Undisclosed Firm and Venrock Associates. The venture capital was slated for Early Stage Development.

Total Venture Capital Investment: $139,000,000.

#3 Square, Inc.

Square Inc. is an IT Services company based in San Francisco, CA, providing mobile payment services. Square Inc. took the #1 spot in the third quarter for $200 Million from Citi Ventures, Rizvi Traverse Management LLC, and an Undisclosed Firm. The venture capital was slated to fund expansion.

Total Venture Capital Investment: $200,000,000.

#2Square Trades

Square Trades Inc. a Consumer Products and Services company, providing extended warranty services for electronics. The company is based in San Francisco, CA and held the #1 spot for $238 Million from Bain Capital, Bain Capital Investments in the first quarter of 2012 for Later Stage Development.

Total Venture Capital Investment: $238,000,000.

#1 Fisker Automotive

Fisker Automotive, Inc. is an Industrial/ Energy company, designing and manufacturing electric vehicles. The company is based in Anaheim, CA. and was #1 on the quarter two report with $147,599,000and #3 in the first quarter with $129,790,000 from Kleiner Perkins Caufield &Byers, New Enterprise, Inc. Fisker Automotive, Inc. also took the #4 spot in the third quarter with $103,667,200 from Advanced Equities Inc., KPC&B, New Enterprise Inc., as well as an Undisclosed Firm.  The venture capital was slated for Later Stage Development.

Total Venture Capital Investment $381,056,200.

Companies receiving first time venture capital declined 8% in dollars this year, but the number of deals increased by 1%. First-time financings accounted for 16% of all dollars and 33% of all deals in the third quarter showing a 1% increase on both fronts over quarter 2. This is good news; the first quarter reports had declared an unusual drop in venture capital investments. The average first time deal in the third quarter of 2012 was 3.4 million, down slightly from quarter two averages. Seed and early stage companies received the bulk of first-time investments, an impressive 82% of the deals.

The Top 10 Inventions of 2012

May 15th, 2013

There are simply so many great inventions out there that choosing only ten is a difficult task. In order to choose, we based our analysis on “how many people could be affected by this invention. For example, while “The Curiosity Rover” made Time’s Techland list, it does not directly affect the earthbound user; nor does NASA’s Z-1 space suit. For our top ten inventions of 2012, the gadgets must have the ability to help people, the environment, or change lives. The invention must also be accessible to those who need it.

For the Top 10 Inventions of 2012, the choices come from Time’s Best Inventions of the Year and POPSCI’s 6th Annual Invention Awards.

#10 HeatSeeker

The HeatSeeker is a powerful and affordable mister for overheated firefighters. When Hurricane Sandy was busily knocking homes off of their foundations in the north east, fires started springing up from open gas lines and burned hundreds of homes. Firefighters fought those flames through the night, and through the storm. Even though many homes were lost, many more were saved because of those volunteers. The HeatSeeker fog can cool the surrounding area by 30 degrees and uses just 2 gallons of water per hour.
According to POPSCI, Michael Robinson invented HeatSeeker and built the prototype after he saw a fellow firefighter struggling to get up off the ground. They were fighting a house fire and the man was wearing 70 pounds of gear. Robinson moved the man to a safe distance from the flames and cooled him down with wet towels; luckily the man recovered. On average, 300 people die from heat exhaustion each year. Many are construction workers, athletes and firefighters. 71% of firefighters are volunteers. Most of the people who die from heat exhaustion, heat stress, heat stroke and related illnesses don’t recognize the symptoms in themselves, even though they would in others.
Robinson created the mister in a friend’s fabrication shop. He installed it on one of the fire trucks, and his captain asked him to build and install 15 more. He has since outfitted fifty fire trucks with the device and added a cap for fire hydrants to cool children in the summer, and one for garden hoses to cool people at outdoor venues.

#9 Body Armor for Women

This comes in at just $555 and is from Time’s Best of 2012. Since women and men are built differently, it makes sense that there are gaps in the body armor if it is not sized properly. The usual answer was to give women body armor that was a men’s small. Those are too big for 85% of our troops. While the added protection is only that this provides a better fit; our troops must be able to move in their body armor for their ground maneuvers to be effective.

#8 Bounce Imaging

This is truly a bargain at $500; Bounce imaging is the size of a baseball with 6 cameras. It was created by an MIT student and Army Ranger. First responders, whether they are Navy Seals, Fire Fighters, or responding to hostage situations, can benefit from this technology and save lives. The baseball sized orb can be tossed or rolled into an area and the cameras send data to mobile devices.

#7 Over7

The Over7 is a higher efficiency, lower emission engine system. So many vehicles are going electric, hybrid or alternative fuel; the Over7 improves on engines that are already in use.
Frank Will has spent his life obsessed with engine performance. He started out racing motorcycles in the 70s and eventually became an automotive engineer for Ford in Australia. He left that job in 2008 and began applying his passion to his new project, the Over7. The system works by redirecting the engine’s oil and then heating it. The Over7 reduces gas consumption by 7% and emissions by 30%. Will is now working with Ford, testing and perfecting the technology. He is also working on a conversion kit for existing vehicles which will sell for $200-$400. PROSCI reports that “Putting the Over7 in every passenger vehicle in the US would reduce carbon dioxide emissions by 64 million tons a year and save drivers seven billion gallons of gasoline.

#6 PuzzleCast

A group of students designed the PuzzleCast during a bio-medical-engineering course. The challenge was to design something that was important to all of them, and this particular team had been injured or witnessed the injuries of others. After spending two months in a cast, the patient then undergoes months of painful physical therapy to regain muscle and loosen up stiff joints. The PuzzleCast is a modular design that allows sections to be removed when they are no longer needed, without resetting the limb. In testing, the modular cast cut physical therapy time in half.
In 2011 the students received a $10,000 grant from the National Collegiate Inventors and Innovators Alliance to test the effects on people who wore the cast, PROSCI reports, and the next step is to license the design to a manufacturer.

#5 Enable Talk Gloves

While Enable Talk gloves are at the outset a device for the hearing and speech impaired, it actually benefits all of us. Four Ukrainian students designed the $75 gloves that allow the impaired to communicate with people who do not understand sign language. A signal is sent from the gloves to the user’s smart phone as text, and an app converts the text to spoken words. This is truly fantastic.

#4 Self-Inflating Tires

Self Inflating Tires run about $200 each, which is pricey, but as soon as the pressure gets low in these Goodyear tires, they know it. These tires are equipped with a sensor that judges the pressure; and a regulator opens to allow air to flow though a pumping tube. Once the optimal pressure is reached, the regulator closes. No more flat tires. The driver won’t even know anything was wrong.

#3 Eliodomestico Solar Water Distiller

Gabriele Diamanti designed this solar powered distiller to use in areas deprived of fresh water. It is half the price and 67% more efficient than other models on the market. People living in coastal areas in third world countries are often deprived of the fresh water that could save their villages. At $50 this item is a must have and Diamante hopes that local manufacturers will adopt his design and go into mass-production for local populations.

#2 The Civilization Starter Kit

Marcin Jakubowski built a tractor in six days Time tells us, and then told the world how to do it. He created designs, a budget and an instructional video on line. Jakubowski isolated the 50 most important machines that are required for our lives, including an oven. He is working to make a low cost version prototype of every one of those 50 items so that anyone can do it. He says that if we can lower the barriers to farming and manufacturing, then more people will do it. According to Jakubowski, “we can unleash massive amounts of human potential.”

#1 Google Glass/iOptic

Yes, it is a tie for first because they are similar, but different. Both promise to bring an augmented reality to our lives. They’re tech right out of a spy movie.
Google Glass is a pair of glasses with a small screen that is activated when the wearer looks up and to the right. There is a computer built right into the glasses and the half inch display allows users to take and share photos, chat, check appointments and access the Web. Google has already given out the prototype during testing. Google Glass has upped their release date to 2013, after complaints from consumers who say they can’t wait two years. Google Glass has an estimated price tag of $1500.
IOptic does that with contact lenses. The user will still wear eyeglasses, which hold two small projectors and cast an image onto the inside surface of the lenses. Randy Sprague spent twenty years as an electrical engineer before quitting in 2008 to start a solar power company. One morning he had an entirely different idea, contact lenses that would act as a wearable display. The iOptic utilizes two sets of nanofilters embedded in each lens that permit different light sources into the eye. IOptic has a target release date of 2014 but no estimate on the price.

Sprague believes his device is useful for everyone from the home gamer, to the military while on a mission. Having access to the web and sharing data is one way to make the world a better and safer place, for all of us. There are others working on similar projects, but the race is on to see who gets there first and which of these products will reign supreme.

Top 10 Patent Sales of 2012

February 20th, 2013

Top 10 Patent Sales of 2012The team at IdeaBuyer.com has compiled the top 10 patent sales of 2012. These sales add up to a grand total of over $20,000,000,000. The patents these technologies protect are often key strategic acquisitions by the purchasers. This year, a number of the top patent sales were liquidations of patent portfolios from defunct or struggling corporations such as Kodak, Nortel, Motorola, and AOL.

#10 Acacia Research Pays $100 Million for Adaptix Patents

January 2012- Adaptix sold 230 patents to Acacia Research; according to reports, the patents cover 4G technology. This deal was Acacia’s first major move to buy patent rights, according to The Wall Street Journal. Acacia has previously partnered with Universities and other organizations to help them enforce patents.  Acacia Research makes most of its money by licensing patents and filing lawsuits, earning them a reputation as a Patent Troll.

Total Sale Price: $100 Million

#9 Fujifilm to Universal Display

July 2012- Fujifilm Corp. sold 1,200 patents to Universal Display Corp covering OLED technology. OLEDs are Organic Light Emitting Diodes and are used to make high contrast low energy screens. The deal reportedly doubled the New Jersey based Universal Display’s portfolio.

Total Sale Price: $105 Million

#8 Real Network Patents Sold to Intel

January 2012- Real Network’s sale of 190 patents to Intel was just the tip of the iceberg. According to Businessinsider.com, the deal also included 170 patents that had been applied for that were awaiting approval. Some video streaming software was also included in the deal, according to The Wall Street Journal.

Total Sale Price: $120 Million

#7 InterDigital Sells 1.700 Patents to Intel

June 2012- Reuter’s reports that InterDigital had agreed to sell 1,700 wireless technology patents to Intel. The sale sent InterDigital stocks soaring by 27%. It was a win/win situation; Intel was interested in expanding its chip business beyond computers while InterDigital was hoping a patent sale would boost stock sales.

Total Sale Price: $375 Million

#6 Microsoft Sells 650 Patents to Facebook

April 2012- Microsoft sold 650 patents to Facebook. Part of the deal included a bunch of patents related to mobile, web and instant messaging technology, according to Nick Wingfield of The NY Times. The deal came less than two weeks after the Microsoft deal with AOL, and looks as though Microsoft was splitting that portfolio with Facebook.

Total Sale Price: $550 Million

#5 Kodak Sells Patent Portfolio to Patent Consortium

December 2012- On December 19th, 2012 arstechnica.com reported that a group of 12 buyers was organized by Intellectual Ventures, to purchase Kodak’s portfolio of 1100 patents. Part of the deal requires that Kodak drop legal proceedings against certain members of the purchasing group. Kodak sued several of the members for patent infringement. According to the LA Times, the bankruptcy filings show that the buyers are: Google, Apple, Facebook, Research in Motion, Amazon, Microsoft, Samsung, Adobe, Huawei Technologies, HTC, Fujifilm and Shutterfly.
While the group has paid for a portion of the portfolio, Intellectual Ventures will retain ownership but cannot sue these already licensed companies.

Total Sale Price: $525 Million

#4 Apple Buys 695 Nortel Patents from Rockstar Consortium

The deal has slipped under the wire and gone on all year. The Rockstar Consortium won the Nortel auction of 6000 patents for $4.5 Billion in July of 2011. By November of 2012, the US Patent and Trademark Office reported that 695 of 1024 patents had already been registered to Apple as part of a deal. Apple has purchased the patents from the Rockstar Consortium which includes Rockstar, Sony, Microsoft, Research in Motion, Ericsson and EMC.

Total Sale Price: $2.5 Billion

#3 AOL Inks $1.05 Billion Deal with Microsoft

April 2012- AOL sold 925 internet technology patents to Microsoft. The New York Times said that the “lofty price reflects the crucial role that the patents are increasingly playing in the business and legal strategies of the world’s ,major technology companies, including Microsoft, Apple Google, Samsung and HTC.

Total Sale Price: $1.05 Billion

#2 Google Sells Off Motorola Home Business to Arris Group

December 2012- As I write this, Google Inc. has announced an agreement to sell its Motorola Home business to Arris Group Inc. Bloomberg Businessweek reports that Google wasn’t interested in the television set-top boxes that were part of the portfolio purchased from Motorola in May of 2012. Google will focus on expansion of the smartphones and assign the television related patents to Arris.

Total Sale Price: $2.35 Billion

#1 Google Pays $12.5 Billion for Motorola Patent Portfolio

May 2012- In a deal that began in August of 2011; Google Inc. acquired a sizeable portfolio of patents owned by Motorola. The process involved final approval in February from the US Dept. of Justice, and the European Union. Then in May the company received the final stamp of approval from the People’s Republic of China. The trading commissions are required to approve deals of such magnitude to prevent monopolies on sensitive technology.

Total Sale Price: $12.5 Billion

IdeaBuyer.com is the world’s largest online marketplace for intellectual property. If you are looking to sell a patent or are interested in patent licensing, please call  us at 832-683-1527 for more information. If you are looking to purchase patents, please email us at Buyer@IdeaBuyer.com.

Top 5 Inventors of All Time

January 4th, 2013

top 5 inventors of all timeThe top 5 inventors of all time is a subjective list because on one hand the top inventors should include Leonardo Da Vinci, whose inventions are still being built and tested today. Unfortunately, Da Vinci never filed for a patent; patents didn’t exist yet and his designs were ideas, many of which were undeveloped. This list is based on the inventors holding the most patent families, and the most US utility patents. A patent family is the result of a single invention that is patented in multiple countries. A utility patent covers an actual invention rather than an idea, design or modification.
Some of these names will be unfamiliar, but when you learn why the inventor made the top five, the reason for their inclusion will be clear. By comparison, the number of inventions in today’s top five outweighs the inventions of the historical figures we’ve come to admire. By the same token, it must be admitted that without their predecessors, these five would not have made the list, because all inventions are a combination of necessity and the foundation on which to build.

#5 Leonard Forbes

Leonard Forbes was born in 1940 and is the owner of 1012 patent families. His primary inventions are concerned with semiconductor memories, thin film processes, CCDs and VLSI. VLSI stands for Very-large-scale Integration and involves combining thousands of transistors into a single chip. The micro-processor in your computer and other electronic devices is an example of a VLSI. A CCD is a charge-coupled device used to move an electrical charge from within the device to a place where the charge can be manipulated. This technology is necessary for digital imaging, among other things.
Leonard Forbes owns 946 US Utility Patents and 2010 worldwide. He is a retired professor from Oregon State University.

#4 Thomas Edison

Thomas Edison was born in 1847 and lived until 1931. Edison is credited with 1084 patent families, and 2332 international patents. He is best known for the light bulb which he did not actually invent, but perfected. Thomas Edison actually invented the first practical electric light bulb; but before that he had to harness electric power in a usable form. He is the father of Direct Current which is used in batteries and generators. In addition to electrical power and lighting, his patent areas include the Phonograph, Cement, Telegraphy, and Mining.
Thomas Edison held 1093 US Utility patents, when he topped Time Magazines list of top five inventors in December of 2000.

#3 Paul Lapstun

Paul Lapstun is an Australian inventor holding over 1240 patent families and 3135 international patents. His areas of expertise include printing, digital paper, internet, electronics CGI and VLSI. Paul Lapstun works with closely with our number 1 inventor of all time.
In May of 2011, Business Insider credited Lapstun with 969 US Utility patents; he filed for 85 additional patents that year.

#2 Shunpei Yamikazi

Shunpei Yamikazi was born in 1942 and is an inventor from Japan. Yamikazi holds 3013 patent families and 12019 international patents. His area of expertise is in thin film transistors, LCDs, solar cells, flash memory and OLED which is an organic light emitting diode. OLEDs are used to create digital displays in devices like television sets and computer monitors. They are also used in portable devices such as mobile phones, PDAs and handheld game consoles.
Shunpei Yamikazi is credited with 2,591 granted U.S. utility patents and 9,700 patents worldwide.

#1 Kia Silverbrook

Kia Silverbrook was born in 1958 and is an inventor from Australia. Silverbrook is the holder of 4544 patent families and 9777 international patents. His areas of expertise include printing, digital paper, internet, electronics, CGI, DNA, LOC, MEMS and VLSI along with chemical and mechanical patents. He also holds patents in LOC which is a laboratory on a chip, integrating multiple lab functions. LOCs are a sub-set of MEMS devices which are referred to as micro-machines in Japan or micro-systems in Europe.
Kia Silverbrook is credited with 4508 granted U.S. utility patents as of October, 2012 and 11,146 patents worldwide.

As stated in the beginning, many of these inventors wouldn’t be anywhere without the following inventions and inventors.

#5 The Camera

Louis-Jacques-Mandé Daguerre is considered the inventor of the first practical process of photography in 1837.

#4 LASERS

LASER is short for Light Amplification by Stimulated Emission of Radiation and is used in everything from home blu-ray players to advanced weaponry. Albert Einstein was the first one to initiate its development in 1917 when he proposed that atoms could be stimulated to emit photons in a single direction. Three decades later, this phenomenon was first observed. And in 1960, Theodore Maiman, a physicist, built the first working laser. (Credit http://www.businessdictionary.com/article/749/the-top-5-inventions-of-all-time/ )

#3 Television

In 1884, Paul Nipkow sent images over wires using a rotating metal disk technology with 18 lines of resolution. Television then evolved along two paths, mechanical based on Nipkow’s rotating disks, and electronic based on the cathode ray tube. American Charles Jenkins and Scotsman John Baird followed the mechanical model while Philo Farnsworth, working independently in San Francisco, and Russian émigré Vladimir Zworkin, working for Westinghouse and later RCA, advanced the electronic model. (Credit http://inventors.about.com/od/famousinventions/tp/topteninvention.htm )

#2 The Internet

The Internet and the World Wide Web are the foundation on top of which the top five inventors of today have built their massive portfolios. The internet was created by the Department of Defense and the World Wide Web by Sir Tim Berners-Lee, an employee of CERN which is the European Organization for Nuclear Research.

#1 The Telegraph

The telegraph is the basis for digital sound and imagery as well as the transfer of data packets over long distances via the internet protocols and the World Wide Web. Without the telegraph as a fore-runner, Alexander Graham Bell would not have invented the practical telephone. Thomas Edison started out his early career as a telegraph operator. He came to use what he learned from life in his later inventions of the phonograph and the motion picture camera.

So it is easy to see that the inventions of the past have heavily influenced the inventors of today and these top five will clearly lay the foundation for the inventions of the future.