Licensing Agreement Checklist

Licensing Agreement Checklist

Licensing a new invention is a detailed undertaking. There are experts who specialize in the actual negotiations on behalf of the inventor. Usually these experts will negotiate for either a flat fee or a percentage of the royalties the inventor will make. These experts are well worth their fee if you choose to hire one.

On the other hand, some inventors choose to negotiate on their own behalf. We do not recommend this approach, however, if you really do want to negotiate your own licensing agreement we have developed a checklist for you to follow.

This list is not comprehensive, but is intended only as an indicative checklist for those intending to license their inventions. In practice, you should check each invention on a case-by-case basis and take account of the prevailing circumstances when drawing up the agreement.

• Introduce the Parties and your basic Objectives
• Specifications
• Object of licensing agreement
  • Type of license seeking (exclusive or non-exclusive)
• Industrial property rights pertaining to the object of the agreement
• Scope of license
  • authorized exploitation methods
  • geographical scope
  • any restricted application areas
  • authorized period
• Changes, further development and improvements to the licensed technology
• Obtaining and maintaining industrial property rights
• License payments
  • one-off payment
  • initial payment
  • royalty
  • minimum annual royalty
• Bookkeeping obligation, inspection rights and reporting
• Obligation to exploit
• Authorization to sub-license
• Technical assistance and training
• Confidentiality
• Compensation for damage
• Limitations of liability
• Enforcement of industrial property rights
• Action against infringements of industrial property rights
• Invalidation of industrial property rights
• Official approvals and permits
• Manufacture of competing products
• Rights of notice and cancellation
• Implications of ending of contract
• Period of validity
• Transfer of contract
• Force majeure
• Invalidation of contract in part
• Notifications
• Applicable law
• Resolution of disputes

Keep in mind that there are additional factors that may contribute to your specific invention. Therefore, if you have negotiated on your own behalf, it is highly recommended that you at least show the licensing agreement to an attorney familiar with the licensing process. This will at least provide you some protection and possibly catch something in the agreement that you are/were not aware or familiar with.

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Top Nine Tips For Inventors

Coming up with a brilliant idea is by far the easiest part of the invention process. Developing that brainwave and turning it into a successful, moneymaking product can prove to be a minefield. We offer advice on how to avoid the pitfalls that often beset first-time inventors...

One of the most important things to do before spending time and money is to absolutely avoid the invention scam companies. They will try to lure you in to their web and they will provide you absolutely nothing in return. The second thing to do is to do an evaluation of your invention idea.

Once you have completed an evaluation you will immediately know if you have something to move on with or not. If the evaluation is overwhelmingly negative, STOP RIGHT THERE and abandon the project and move on to something else. If the evaluation is positive, then check that the idea is new, that it is technically practical, and that there is a potential market for the idea.

Our service provides a very cost-effective way of finding out whether these things are true for your idea or business.

Nine Important Things to Do!

1. Keep it to yourself - One of the most tempting things to do if you’ve just come up with an ingenious new invention is to tell your friends without even a whiff of a confidentiality agreement. Not only does this make your idea liable to be stolen, you will also not be able to patent it, as it will be considered to have entered the public domain. Our website contains a typical Confidentiality Agreement that you can adapt.

2. Do Your Research - So many people come to us with an invention without having dared to find out if it’s been done before - sometimes we type a ‘new’ idea into Google and it’s the first result. Spend a little time having a look yourself. By finding out what the competition is you are in a much better position to improve your idea and sell it successfully.

3. Beware of Invention Companies - It may also be tempting to take your idea to one of the big companies - for example, take your improved lawn-mowing device to one of the large garden machinery brands - but many of them won’t sign a confidentiality agreement. Without this you are in danger of losing the rights to your idea.

4. Don’t fear lawyers - All patent attorneys will offer a free half-hour confidential consultation in which they will quickly offer invaluable advice about your invention and the patent implications.

5. Make sure it can be built - If a picture is worth a thousand words, then a prototype is worth a million. It makes it a lot easier for people to work out what your invention is if they can see and touch it. But don’t spend money on making a prototype until you are really sure that you can protect the idea and that there is a market for it! Even if it doesn't work in its original form, you may be able to improve it or seek alternative technologies that could make it work

6. Don’t waste your money - We know of people who have spent hundreds of thousands of dollars on patents, lawyers and manufacturing, without ever checking whether it was a new idea or whether anybody would actually want to buy the thing. Just because your family and friends say they would use your invention doesn’t necessarily mean that anybody else will. Always do your market research on strangers to see if it would sell.
In addition, don’t hire a bogus invention company. All they want to do is take your money and tell you what you want to hear. They are sales companies that hire commissioned sales people. For more information on this subject, request a copy of our eBook from our home page.

7. Patent, patent, patent - In the US, the first to invent gets the right to that invention. Apply for the Provisional Patent Application as your first step in the patent process. In other countries it’s the first to patent. Your Provisional Patent Application will help you if you decide to patent outside the U.S.

8. Registered designs & trade marks: could be better- If a patent is not appropriate, a registered design or trade mark can be a much less expensive way to protect the appearance of your idea or your business or product name, slogan or logo. Registering your company name is not the same as registering a Trade Mark. A web site name (URL) has no legal standing in protecting a name or brand either. The value of many large organizations is in the goodwill in their brand names, not just the technology in their business. This is especially true of service and software businesses.

9. Stay positive! - While all these legal complications can seem overwhelming, inventing is a wonderful thing, and the perfect way to escape the drudgery of a 9-to-5 job. A healthy dose of enthusiasm and genuine belief in your idea (as well as a touch of arrogance) can do wonders for you, and for your invention.

visit www.inventoreducation.com for more information

What Are The Future Inventions In Our Future?

What Are The Future Inventions In Our Future?

Think back, what gizmos and gadgets in our current lives were not around perhaps 25 to 50 years ago? What was the status of home computers and cell phones – 25 years ago? How about the GPS we use in our cars or the iPod?

Think back 100 years ago, in 1903, the Wright Brothers achieved their monumental goal of flight at Kitty Hawk, North Carolina. Most people don't know that there were quite a few other people trying to build an airplane at the same time. One was Alexander Graham Bell; another was the President of the Smithsonian InstitutiAll of these men were much better funded than a certain little-known pair of bicycle shop mechanics from Ohio with a wind tunnel in their garage. But there's a key difference that led to the Wright Brothers' success. The other guys focused on making a more powerful engine. Orville and Wilbur Wright focused on the plane.
Specifically, the Wright Brothers built their airplane as a glider without an engine - then mounted the engine later, almost as an afterthought. They flew it in the breeze first, then, added power later. That was the key to their success. They discovered that when you're building an airplane, the wings are more important than the engine.

Do you remember the days when computers in a company took up the space of some 400 square feet just to house the computer systems? Today, high end laptops have the same capacity as those clunkers and they are getting better everyday.

That is what innovation was in the past and that is what innovation will continue to be in the future.

Well, what might we expect to see over the next 20 to 50 years from now?

The future of invention will be no different than the past. People will come up with ideas that will help to overcome a problem or a need. The only difference will be that the technology to do that is far more advanced than that of the most recent past. One of the future inventions, we see every once in a while has been improved upon from Japan - robots. These robots in the future will be able to clean our homes, perhaps even drive our cars. The Japanese inventors anticipate that these robots will eventually be able to do the everyday chores that we as humans dislike doing.

Medical innovation has come on strong recently with the development of artificial organs. People in need of a new kidney or even a heart will not have to wait on a donor list. These artificial organs are closer than you might think. The development of artificial arms and legs has already been improved upon over the past 3 years.

Another interesting new product will be in the development of food caplets. These caplets will enable a person to eat a full meal in a matter of seconds. Pharmaceutical companies are working on the development of caplets which will contain the exact number of calories and nutrients that will make our lives fully functional. When you consider the shortage of food around the world, these caplets could make a real difference.

Solar power has been around for about 10 years, but costs for production of solar panels and the maintenance of the solar panels are not yet economical for the production of electricity. This will change, and scientists do expect a breakthrough in our lifetimes. Such a development would be a major breakthrough in our dependence on foreign oil.

Forward thinkers are even discussing new developments for the cell phone, one of the largest growth industries in the technical world. Some of the additions include building in a carbon monoxide detector. Another feature which we could see over the next few years would be health diagnosis – a sensor could measure blood pressure and your pulse level. And there is an exploration of putting a laser pointer into your phones. Even with all of these new ideas, it is expected that the cell phone will become smaller and lighter!

For the blind, a new cane is being developed. Instead of tapping ahead to find an object, there is an ultrasonic detector built into the cane to provide a warning about an obstruction in the path.

What about ‘Forward Thinkers’ in the past? There was an interesting story that's most often told that in 1899 the head of the U.S. Patent Office sent his resignation to President McKinley urging the closing of the office because "everything that could be invented has been invented." It's been told and retold so often that even President Reagan used it in a speech.

The "quote" is often attributed to Charles H. Duell, who was Commissioner of Patents in 1899. However, according to The Great Idea Finder, Duell was far from pessimistic about the future of new inventions and patents. He even encouraged Congress to improve the patent system.

Today the patent office is actually over burdened with new patent applications. So many in fact, the patent office is running behind on issuing new patents. In fiscal year 2007 over 184,000 patents were issued compared to 50,000 in 1980 and 100,000 in 1995.

The list of future innovations is endless and the continued growth of innovation combined with patent applications is expected to exceed 200,000 in the very near future.

That being said, it is now up to you, ‘Future Thinkers’ to continue the innovation process and come up with new ideas that will help us overcome a problem or fulfill a need. Your creativity will help catapult mankind into the future and there is no limit to what can be accomplished.

To Your Success

Vic

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