PATENT TRANSACTIONS AND LICENSING

What Is Patent Licensing? 

Patent licensing is the process whereby one grants exclusive or non-exclusive rights over a patent to a licensee. Such grants of rights are usually compensated for by royalties paid to the patent owner. A license constitutes a legal contract and governs the terms and conditions for granting and exercising the rights to a patent. Often a patent license agreement gives someone else the right to use or develop your invention commercially. A patent licensor is the owner of the invention, and the licensee is the person receiving the patent license. Regardless of how you decide to best employ and profit from your new invention, in most instances, licensing the patent will be an important part of the process.

What Is The Difference Between An Exclusive & Non-Exclusive Patent Licensing Agreement? 

An exclusive patent license transfers the right to practice the patent to the exclusion of all others fully; however, the patent owner retains title to the patent with the right of reversion.  A non-exclusive patent license transfers less than the right to practice the patent fully, and a patent owner retains the right to grant additional patent licenses. For instance, in a non-exclusive patent license, the patent owner could give specific rights to more than one person or company in different industries or different geographic locations. 

What Is A Patent Assignment? 

An assignment is when a patent owner permanently transfers or sells all ownership rights in and to the patent.  A patent assignor is the present owner of the invention, and the assignee is the person receiving ownership of the invention. You may find a patent assignment preferable to a patent license if you do not have the financial  or other ability to bring an invention to market.

While patent licenses often pay a patent owner royalties, patent assignments generally pay the patent owner a lump sum.  As an inventor, you should consider all financial aspects of a patent license or a patent assignment, including the benefits and risks of manufacturing and marketing yourself.  Our experienced patent attorneys can draft and negotiate complex licenses, assignments, and other IP transactions, including the following:

• Exclusive & non-exclusive patent licenses; 

• Purchase Agreements;

• Royalty Agreements;

• Assignment Agreements; and

• Sub-licenses.

Patent owners must decide how they will allow others to make, use, sell, offer for sale, or import their invention (Ownership Rights).  These Ownership Rights are what must be protected and/or licensed in any patent agreement. If you have a patent that you are interested in licensing or assigning, you must have knowledgeable attorneys to assist you and advise you on how best to protect your rights. 

Enforcing Your Patent License and Patent Assignment Agreements

Our Dallas patent lawyers represent clients in patent prosecuting  and patent infringement throughout the United States, including the U.S. District Courts for the Eastern District of Texas, the Northern District of Texas, and the Western District of Texas. Our patent attorneys have extensive patent agreement drafting experience and can help you avoid the detrimental effects of a poorly drafted license or assignment agreement. Let our attorneys put their legal talent and patent expertise to work for you, protecting your rights and unlocking the value of your inventions.