License negotiation

Patent Ownership

A patent is a creature of statute. Without the patent statute an inventor owns only his invention and only so long as it is a secret. The patent gives the owner the right to exclude others from making, selling, using, offering for sale, or importing the claimed invention. Therefore, if the inventor does not want to make and sell the invention himself he may allow others to do so, without infringing his patent, through a license.

License Definition

A license, with respect to patent law, is a right to do a thing which the licensor would otherwise have a right to prevent. A patent license is a waiver by the patent owner of his right to exclude the licensee from making, using, selling, offering for sale, or importing the claimed invention.
The words "the claimed invention" are very important when it comes to licensing and the scope of the claims must be carefully considered when drafting a licensing agreement. It is also important to note that patents have geographic and temporal limitations. Patents are granted under the laws of individual countries, and the effect of each patent is limited to the country that granted the patent. A license under a US patent is not a suitable basis for restricting the licensee's activities outside the United States; similarly a license under a Japanese patent is not a suitable basis for restriciting the licensee's activities outside of Japan.

Lifetime

Patents have a limited life, generally twenty years from the date the application was filed. A license cannot impose restrictions on or extract revenue from a licensee for activities after expiration. However, unpatented technology that is protected (by trade secret, know-how or manufacturing information for example) has no specific geographic or temporal limitation, and when licensed together with patents it may form the basis for restrictions and revenue after the licensed patents expire.

Your Licensing Needs

The above information is just a brief introduction to licensing and it should be noted that licensing can be quite complicated, especially when you are dealing with more than one country. We have global licensing and negotiating experience and are available for all of your licensing needs.