#1: Your patent licensee makes an improvement to your invention. Who own the improvement?
That iAt its simplest, a non disclosure agreement (often abbreviated to an NDA) is
a contract in which the parties agree to keep shared information private.
patent application fails. Your licensees are already selling your invention. Now
bla bla bla bla bla bla bla bla bla bla bla
#3: A potential licensee expresses interest
in your invention, but won't sign an NDA. What should you do?
A non disclosure agreement allows inventors to talk about their invention to selected
parties (such as investors, prototype makers, invention marketing consultant advisors
and potential licensees) while addressing these two issues:
#4: You're in the UK. Your licensee is Canadian. How can you guard against royalty
currency fluctuations? I always advise my clients to negotiate royalties in their
native currency. The exception to this would be if they strongly feel it is likely
to rise considerably over the period of the license deal relative to the licensee’s
If you are in the UK, negotiate your royalties in British Pounds; if you
are in the USA, negotiate royalties in US Dollars - regardless of where your licensee
Although the exchange rate “over the time of your license” will change, either for
or against you - having a set royalty in your native currency will eliminate one
of the inevitable uncertainties re. future royalty projections.
You may also want to consider opening a bank account in the denomination of the licensee’s
currency. In this case, make sure that your royalty agreement specifies that you
can choose which bank account your royalty should be transferred into when your royalties
are due (usually every 3 months). #5: You are in the USA. A patent for your invention
already exists for Israel? Is it game over?
While a published patent (with rare exceptions) prevents anyone else taking out tnhe
samea patent no matter sonce a patent is published, as long as it is granted Although
there are a few exceptions to this rule [notably the US and Canada permit a 12 month
“patent grace period”
#6: You are in the USA. A patent for your invention already
exists for the USA? Is it game over?
And using a nondisclosure agreement is often the best way forward here. Because
information shared within the confines of an NDA is considered “private disclosure”
(rather than public disclosure), your potential future patent rights are left intact.
#7: Someone is infringing your patent. What’s the best way to proceed?
are in the USA. A patent for your invention already exists for the USA? Is it game
#8: You just can’t make contact with your target invention customer or licensee.
What can you do?
#9: You have a great invention idea. Estimate of prototyping + patent is $50K. You
have $5K. What now?
#10 Your free patent search finds a patent that probably covers
your invention idea. What can you do?
The other concern inventors may have re. talking about their invention before having
the protection of patent application filing dates - is the risk of the other party
“stealing” the invention idea.