cross cross

Licensing Patents

liesence

Licensing patents falls into two categories:“stick” licensing, where patent owners seek compensation for current use of patented inventions, and “carrot” licensing, where patent owners seek licensees willing to develop new products based on their patented inventions.

We engage in carrot licensing.

Most of our licensing projects are in the medical devices and materials science industries. However, we will also consider licensing projects in other industries.

Our licensing projects follow four phases:

  • Preparation: understand the invention, investigate alternatives, and prepare an information memorandum explaining the invention and its advantages over previous solutions.
  • Marketing: contact potential licensees. We approach companies worldwide, both in the licensor’s industry and in other industries.
  • Proof of concept: we assist the patent owner and potential licensee to confirm the value of the invention. This phase may involve the transfer of experimental material or apparatus to a potential licensor for evaluation and joint investigation.
  • Agreement: facilitate negotiations for a license agreement between licensor and licensee.

These are usually long-term projects, taking more than two years.

In general, we work on a success-fee basis. Therefore, we only undertake projects for which the patented invention offers a significant breakthrough, for which we are well-qualified, and for which we believe will be successful.

FAQ

Ans. Each approach has its merits. The best approach will depend on the technical field of the patents, whether there is existing infringement, the number of patents, and the patent owner's wishes. Selling is faster than licensing and has less risk, but licensing can bring more revenues. We will discuss with you the best approach for your portfolio.
Ans. Yes, we often take this approach. We test the market for interest in a purchase or a license of the patents. Based on the interest received, and discussions with the patent owner, we can select licensing or sale as the best strategy. Sometimes, the best strategy is to conclude one or two licenses, then sell the patents.
Ans. There are many different options when licensing patents: exclusive or non-exclusive license; geographical territory; includes sub-license rights; field of use, etc. And there are many different payment options, including a one-off payment (fully paid up license); running royalty (an amount per item or quantity manufactured or sold); annual license fee.
Ans. "Stick" licensing means seeking payment for current or past use of patents from an alleged infringer. Methods include sending a letter, seeking a meeting, or bringing a lawsuit or administrative procedure against the alleged infringer. Although these methods are of varying levels of aggression, all imply an adversarial relationship with the alleged infringer.
Ans. "Carrot" licensing means convincing an entity to pay a fee for future use of patents. It entails persuading the other party to practice your patented inventions in their products and to pay you, the patent owner, a corresponding license fee. It entails forming a win-win relationship: the licensee wins by having a new product to sell; the licensor wins by receiving a license fee.