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Patents are used to protect new inventions, products and processes e.g. working mechanisms, materials, manufacturing process, etc.
To be patentable an invention must be new, have an inventive step, have industrial application and not be excluded or exempt from patent protection for any reason. The rights granted are a monopoly on the invention and allow the owner to take legal action to prevent copying, using, making, importing or selling without permission.
We can help you to identify and protect your new inventions, advise on making a patent application (by recommending a suitable Patent Agent) and, once the application has been filed and/or granted, we can help you exploit and protect your invention by drafting all the necessary legal contracts and agreements, some examples of which are: licenses, manufacturing agreements, assignments (sales contracts), research and development agreements.
Confidentiality agreement / Non-disclosure Agreement (NDA):
One of the requirements for patentability is novelty: the invention must be new. That means keeping your invention secret until the patent application has been filed. However, sometimes funding needs to be sought or the invention manufactured and trialled or joint collaborators may be needed for research and development (R&D) or specialist experience, etc., in these situations confidentiality agreements (also known as non-disclosure agreements or NDAs) are a necessity. Without one, the invention or inventive concept could be stolen, or disclosed, or used, at the expense of your business.
Confidentiality agreements (or non-disclosure agreements, or NDAs) are contracts relating to mutual or one-way disclosure of information between two or more parties, which usually outlines how such information can be used or stored, and if and when such information may be disclosed to third parties.
Advantages for discloser:
- Low cost protection of your sensitive and confidential information, including know-how and other intellectual property rights
- Keeps secret potentially patentable inventions
- Can prevent competitors from financially gaining from your business, at the expense of your business
- Creates right to sue for compensation and for an injunction to prevent further breaches, if it become necessary
Advantages for receiver:
- Provides means to receive information to understand and assess a target business and/or product
- Can assist you to make an informed decision as to the disclosers proposals
Many inventors do not have the means or inclination to exploit their own inventions. However, they still wish to gain some benefit (often financial) from owning a patent. Licenses are one of the methods used to exploit patents with the inventor retaining the ownership of the patent.
The license sets out the terms by which another entity can use the patent. The owner of the patent may wish to license to just one party or many parties. A license to just one party is worth considerably more than one of many. A license can also grant rights in selected territories, providing the patent is registered in those territories.
Advantages for licensor:
- Can restrict the use of the patent
- Retains the ownership of the patent
- Can restrict the sub-licensing and assignment of the patent license
- Retains the right to take action for infringement
- Creates income from license fees
Advantages for licensee:
- Extent of use is ascertainable
- Access to new innovation
Assignments are an alternative way of dealing with a patent if the owner does not have the means or inclination to exploit the patent itself. As the ownership of the patent is being transferred the value should be considered carefully. Effectively the patent is being sold and the inventor will have no further rights in it, except to be named as the inventor.
The disadvantage of assignments is that the value of a patent is hard to ascertain before the patent has been exploited.
The inventor may wish to factor into the assignment, royalty payments for the life of the patent in addition to the sale price. The benefit to the purchaser is that it will own the patent and will have control of it, subject to any terms of the assignment.
Ailsa is an experienced solicitor specialising in Commercial and Intellectual Property law.
To contact Ailsa you can call her direcly or call our new enquiries number 0330 058 4011 ext. 2724
Consultant Solicitor Commercial and
Intellectual Property specialist