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  Profit From Your Idea: How To Make Smart Licesning Deals Profit From Your Idea
How To Make Smart Licesning Deals
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by Richard Stim
New 5th Edition
Former title: License Your Invention

All Forms On CDQuality Paperback with CD (Windows/Mac)
448 pages, 7 x 9 inches

Publisher: Nolo; ISBN: 1413304508; Pub date: March 2006, ©2006-1998
Catalog# 4508-2
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Description below is from previous edition. Updated description here soon.
Avoid licensing rip-offs and create a bulletproof contract!

Like most inventors, you probably dream of striking it rich: finding a reputable company, hashing out a fair licensing deal, watching your idea hit the marketplace and then raking in the profits. The question is... how do you find the right company and draft a tight legal agreement that will protect you from being ripped off?

License Your Invention provides both the practical marketing advice and the legal licensing language you need to turn your invention into a moneymaker. Step by step it explains the key elements in a licensing agreement, from advances and royalties to the territory and length of an agreement. It also explains complex concepts such as warranties, indemnity and reservation of rights in plain English, not murky legalese.

License Your Invention will help you...

  Understand the licensing process
  Determine your ownership rights
  Know what agents offer and how to work with them effectively
  Find potential licensors
  Show your invention to others without getting ripped off
  Understand and negotiate fair terms for your licensing deal (including royalties, rights granted, and length of agreement)
  Draft your own comprehensive licensing agreement
  Understand, review and negotiate changes to a licensor's proposed agreement


Introduction (from the book)...

A. What Is a License?

A license is an agreement that allows someone else to use or sell your invention for a limited period of time. In return you receive a one-time payment or continuing payments called royalties.

One of several illustrations in Licensing Your InventionB. Who This Book Is For

This book is for inventors who want to license their inventions ("licensors"). Our primary goals in writing this book are to protect your invention, reduce your risks and save you money. By streamlining the licensing process and offering a layperson's guide to licensing deals, we hope you will be able to make a smooth transition from inventor to licensor.

C. Who This Book Is Not For

This book is not for people who wish to manufacture and market their inventions themselves (sometimes known as venturers). For example, if you invented a new mousetrap and created a company to make and sell your product, then this would not be the proper book for you.

D. How This Book Is Organized

This book is designed to guide you through the licensing process. There are basically four parts:

Ownership Rights.

Chapters 1 through 4 are geared at sorting out your ownership rights. You will learn how to determine your legal rights and how to protect your rights under patent, trade secret or copyright laws.

Soliciting Licensees.

Chapters 5 through 7 explain how to deal with licensing agents, how to find and solicit prospective licensees (those who wish to license your invention from you) and how to protect your trade secrets during this process.

The License Agreement.

Chapters 8 through 15 provide information about every aspect of the license agreement, from the key elements (including royalties, geographic boundaries and length) to the boilerplate (or more secondary terms). These chapters further discuss how to keep information confidential, the negotiating process and drafting the licensing agreement yourself.

Dealing With Licensees.

Chapter 16 shows you how to deal with licensee changes to your agreement (or how to deal with the licensee's proposed agreement). Chapter 17 discusses issues that may arise after you sign the license agreement.

This icon appears through out this book: ! - Warning IconThis cautions you to slow down and consider potential problems.

E. Readers With a Specific Question

It's possible that you chose this book because you have a specific question. For example, you're unsure whether you or your employer has the right to license your invention. If you have a specific question, look for a chapter title that is relevant to your question and review the section headings in that chapter or use the index in the back of the book for words or terms that are related to your question.

F. Sample Agreements and the Disk

You will find sample agreements with detailed explanations throughout this book. Selected full-length agreements are located in the Appendix in the back of the book and on the attached CD disk. Instructions on how to use the disk are also located in the Appendix and in a read me file on the disk.


"I found License Your Invention to be thorough, accurate and well presented ... This book is a tremendous asset for an inventor with the desire and inclination to 'do it yourself.' As an intellectual property attorney specializing in licensing transactions, I have enjoyed paging through this book and brushing up on a variety of issues, and yes, even learning a thing or two!"

-- Greg S. Weber, Esq. Creative Media Law Group


About The Author...

Richard Stim is a graduate of the University of San Francisco School of Law where he studied intellectual property law under J. Thomas McCarthy. He practices law in San Francisco, specializing in intellectual property and licensing and is an adjunct professor at San Francisco State University. He is also the author of Music Law: How to Run Your Band's Business (Nolo Press) and Intellectual Property: Patents, Trademarks & Copyrights (West).

Table Of Contents

Introduction: How to Use This Book

1 Gearing Up to License Your Invention

A. Licenses
B. Assignments
C. The Licensing Process
D. Avoiding Conflicts Among Multiple Agreements
E. Challenges to Your Ownership
F. Disclosing Information About Your Invention
G. Keeping Your Records H. No False Hopes! Reviewing Your Invention's Commercial Potential

2 Intellectual Property Protection

A. General Rules for Legal Protection of Inventions
B. Utility Patents
C. Trade Secrets
D. Trademarks
E. Design Patents
F. Copyright Law
G. Sorting Out Nonfunctional Features: Design Patents, Product Configurations & Copyright

3 Ownership Issues for Inventor Employees

A. What Type of Intellectual Property Is Involved?
B. Employer/Employee: Patent and Trade Secret Ownership
C. Inventions Covered by Copyright
D. Special Employment Situations
E. Working Out Ownership Issues With Your Employer

4 Joint Ownership of Your Invention

A. Joint Ownership
B. How Payments, Loans or Investments Can Create Joint Ownership
C. Transferring Ownership of Your Invention to Your Business

5 Licensing Agents and Representatives

A. Agents.
B. Completing Agent Agreement
C. Attorneys as Agents.
D. Invention Marketing Scams

6 Soliciting Potential Licensees

A. Before You Begin Your Search
B. How to Find Potential Licensees
C. How to Overcome a Licensee's Bias Against Submissions
D. What's the Best Way to Solicit a Potential Licensee?
E. Product Presentations

7 Protecting Confidential Information

A. Confidential Information and Nondisclosure Agreements
B. Proceeding Without an Agreement
C. Waiver Agreements
D. When You Have Sufficient Bargaining Power.
E. Disclosing to Employees and Contractors
F. Disclosing to an Attorney

8 The Key Elements of Your Agreement

A. From Handshake to License
B. Identifying the Parties
C. Describing Your Invention and the Licensed Products
D. Specifying Which Rights Are Granted
E. Defining the Territory
F. Setting the Length (Term) of the Agreement

9 Money: It Matters

A. Some Basic Royalty Definitions
B. Ways to Get Paid
C. The Mysteries of Net Sales and Deductions
E. Royalty Provisions

10 Negotiating Your Agreement

A. What, Me Negotiate?
C. Letter of Intent
D. Option Agreements.
E. What If the Licensee Wants to Proceed Without a Written License Agreement?

11 Sample Agreement

A. License Agreement
B. Optional License Agreement Provisions
C. Modifying the Sample Agreement for Your Needs

12 Warranties, Indemnification and Proprietary Rights Provisions

A. Promises Promises, Warranties, Representations and Covenants
B. Indemnity--The "Hold Harmless" Provision.
C. Licensee Warranties and Indemnity
D. Proprietary Rights
E. Commercialization and Exploitation.
F. Samples and Quality Control
G. Insurance

13 Termination and Post-Termination

A. Termination and Post-Termination
B. Termination Based Upon a Fixed Term.
C. Termination at Will
D. Termination Based on Contract Problems.
E. Termination and Bankruptcy.
F. Post-Termination: What Happens Afterwards?
G. Survival of the Fittest

14 Boilerplate and Standard Provisions

A. Paying the Lawyer's Bills.
B. Dispute Resolution
C. Governing Law
D. Jurisdiction
E. Waiver
F. Invalidity.
G. Entire Understanding
H. Attachments and Exhibits
I. Notices.
J. No Joint Venture K. Assignments. L. Force Majeure M. Headings N. Establishing Escrow Accounts

15 Service Provisions

A. Service Provisions vs. Separate Service Agreements
B. Training the Licensee's Personnel
C. Installation of Equipment
D. Technical Support for the Licensee or for End Users
E. Improving, Modifying and Delivering the Invention

16 Handling the Licensee's Agreement

A. Dealing With Suggested Changes
B. Evaluating an Agreement Presented to You
C. Evaluating the Provisions and Suggesting Changes

17 After You've Signed the Agreement

A. Create Your Contract Calendar
B. Dealing With Royalty Statements
C. Resolving Licensing Disputes
D. Avoiding Patent Misuse and Illegal Agreements
E. The Taxman Cometh
F. Quality Control

18 Help Beyond This Book

A. Licensing and Intellectual Property Resources
B. Working With an Attorney

Appendices:

A. How to Use the Forms Disk

(A CD is included in the back of the book. The forms in the book are also duplicated on the disk in plain text and RTF formats for easy customization with any word processor.)

B. Forms

Agreement Worksheet
Letter Confirming Employee's Ownership of Copyright
Joint Ownership Agreement
Assignment of Rights: Patent
Assignment of Rights: Patent Application
Assignment of Rights: No Patent Issued or Application Filed
Agent Letter Agreement
One-Way Nondisclosure Agreement
Mutual Nondisclosure Agreement
Contract Worksheet
Option Agreement
License Agreement
Escrow Agreement
Checklist for Reviewing a License Agreement
License Dates Chart

Profit From Your Idea: How To Make Smart Licesning Deals
Our price: $29.70

Add To Cart View Cart
Catalog# 4508-2

 

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