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