Posts in Licensing

Shooting Ourselves in the Foot

Contrary to the tone of the Jobs Council report, U.S. academic technology commercialization made possible by Bayh-Dole is a world- wide recognized success. The law allowed universities and small companies to own and manage inventions arising from federally supported R&D. It decentralized technology management from Washington, allowing a market driven system to flourish. It did not create any new bureaucracy to select winners and losers. And it works in the hard, cold light of day.

Patent Illustrations and Invention Drawings, What do you Need?

Over the years I have worked with many inventors as they seek to move forward with their inventions. As a patent attorney it is no great surprise that the overwhelming number of individuals I have worked with are interested in filing a patent application and ultimately obtaining a patent. Filing a patent application necessitates have drawings to include in the application, but patent drawings are not the only type of “drawings” that an inventor should be considering. Patent illustrations are wonderful for a patent application, but they don’t always do the invention justice if you are trying to capture the attention of a prospective licensee, or if you are trying to convince a buyer to place orders or sell the invention in their store.

Beat the Odds: How to Get Your Invention Licensed

Many inventors believe the way to get a company interested in their inventions is to write a letter – and then hope they receive an invitation to begin negotiations. This seldom happens. If you want to get your invention licensed and receive royalty payments, you have to deliver more than a “me too” product.

A Limited Run: Testing the Market Without Going Broke

Licensing your invention is a lot easier if you can show that it’s selling. That means you have to produce a small quantity of your product. Nice idea – until you learn that a plastic injection mold costs $25,000. Now what? Fortunately, there are options. You just have to know where to look.

Drafting a Licensing Agreement, A Patentee Perspective

You might want to consider some type of up front guaranteed payment to ensure that you get at least something. This may seem overly pessimistic, but it is the job of any attorney negotiating or drafting a license to assume that things will go wrong. The agreement can never contemplate everything, but with respect to payment you need protection. What if the licensee is paying you a defined percentage of sales but then decides to offer your product for free, or as an add-on to a sale, as is common in direct TV marketing? If your product is used as a “come on” and given away for free even 100% of $0 is still $0. That is why some type of minimum payment can be quite beneficial.

Present Assignment of Future Invention Rights: Some Heretical Thoughts on the Stanford Case*

One of the critical issues in the Stanford case that is glossed over (or at least not addressed directly) by the Supreme Court majority (as well as others in the patent “blogosphere”) is what happens when you have a present assignment (or at least a contractual obligation to assign) of invention rights that don’t exist at the time of the assignment (aka “future invention rights”). Should (as the Federal Circuit held) Roche (or more appropriately its predecessor, Cetus) by using the language “I will assign and do hereby assign” (aka the “Cetus Assignment Clause”) trump what may have been an earlier obligation by a Stanford University researcher (Mark Holodniy) to assign invention rights to Stanford University (aka the “Stanford University Assignment Obligation”)? I would argue, as did Justice Sotomayor’s concurring opinion and Justice Breyer’s dissenting opinion (joined by Justice Ginsburg) that a “yes” answer to that question defies logic, reason, and prior case precedent (other than the Federal Circuit’s 1991 case of FilmTec Corp. v. Allied Signal, Inc. whose logic, reasoning, and adherence to prior case precedent was challenged by both Justice Sotomayor’s concurring opinion, as well as Justice Breyer’s dissenting opinion).

One Simple Idea: Turn Your Dreams into a Licensing Goldmine

But don’t quit your day job as you pursue a career in inventing! When I saw that in Key’s book (it appears early on) I knew the book was a winner. I can’t think of any better advice to provide, and it came with the familiar stories to make the lesson real. In our conversation Key said: “Like anything else you need to test the waters. You never want to put yourself in a situation where you are desperate. Inventing is something you can do while you are working.” So for goodness sake, have enough success under your belt that you have turned inventing into complete replacement income before ever making the decision to quit your day job.

Inventors: To License or To Manufacture – That is the Question

It doesn’t roll off the tongue quite like the famous Shakespearean line — “to be or not to be: that is the question” — the opening line of Hamlet’s soliloquy in Act 3, Scene 1, but the question that some inventors will ask themselves is whether they should seek out licensing opportunities or follow the path of manufacturing and selling.  Truthfully, many inventors probably don’t ask this question and instead jump past this fundamental question and straight for the licensing revenue, but is that the best thing in the long run?  Licensing takes a lot of work out of the monetization equation and minimizes risk, but foregoing manufacturing and pursuing licensing can significantly cut down on profit realized by the owner of the invention rights.

AUTM Survey: University Licensing Strong Despite Economy

During fiscal year 2009, 596 new companies were formed as a result of university research, which is one more than the 595 formed in 2008 and 41 more than the 555 formed in 2007. The increase, while modest, does come despite a downturn in the U.S. and global economy, proving that even during a down economy good technology and innovation can and does create jobs. The AUTM survey also shows that invention disclosures continue to rise, patent applications are up, and during fiscal year 2009 there was a surprisingly high increase in foreign filings over fiscal year 2008.

Supreme Court Case Could Deprive Inventors & Businesses Ability to Commercialize Inventions

The Supreme Court agreed to hear the appeal of Stanford University v. Roche Molecular Systems, Inc.; faculty and student inventors, the public, and American industry have an enormous stake in the Court’s decision. The appeal pits university patent administrators against university inventors. If the administrators win, university inventors will have no invention rights—not in the work they do at the university, and not in the work they do in the community. This is a crucial juncture for every researcher who has ever or might someday work in federally funded research. Likewise, it presents a tipping point for innovative industry and anyone with a vested interest in American research.

Statement of Senator Birch Bayh on the 30th Anniversary of the Bayh-Dole Act

Bayh-Dole was created because of a glaring problem– billions of hard earned tax dollars invested annually in government R&D were being squandered by ineffective government patent policies. If this research cannot be taken out of the labs and turned into products, the public is being short changed. Even so, it was a long, tough road to travel, and we only succeeded by the smallest of margins. Turning around long standing government policies, no matter how ineffective, is never easy.

Licensing Executives Society Announces 2010 Deals of Distinction™ Awards

In May 2009, Genzyme Corporation acquired the worldwide rights to a potential breakthrough treatment for Multiple Sclerosis (MS) along with three marketed oncology products from Bayer Healthcare Pharmaceuticals. In February, the University of Pennsylvania (Penn) and AstraZeneca forged a new collaborative research agreement, featuring a significant licensing component, that makes use of their respective talents and resources to generate new Alzheimer’s Disease (AD) drug candidates for the clinical development pipeline.