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a new invention before previous license expires

Postby onewiki » Mon Dec 29, 2008 7:58 pm

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Suppose that I have a technology that reduces production costs. I sign an exclusive licensing contract with firm A for 10 years. Five years later, I have another invention that can further reduce costs.

Can I license the 2nd invention to firm B or can I produce the thing myself with the new technology before the initial contract with firm A expires? Thanks a lot for your help.

Postby CriterionD » Tue Dec 30, 2008 1:10 pm

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It depends on the terms of your contract with firm A. If the word "exclusive" is inclusive here and means that all of your patent rights were given to firm A over a 10 year period without any conditions specified, then you couldn't produce the thing yourself without setting yourself up to be sued by Firm A for infringement and maybe even breach of contract as well.

Postby Patent_Attorney » Tue Jan 06, 2009 2:31 pm

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The key question is the second patent an improvement of the first patent?

The second question is what are the provisions of the exclusive license. Do you need to practice the first invention to make use of the new invention?

Most licensing deals also include use of improvements discovered during the period of the original exclusive license.

Answer those fact based questions and you have the answer if you can do it or not.

Re: a new invention before previous license expires

Postby onewiki » Mon Dec 13, 2010 10:46 pm

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Thanks! although I did not notice the second reply until almost two years later!

Re: a new invention before previous license expires

Postby Roger Brown » Tue Dec 14, 2010 8:00 am

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You may also want to find out if you come up with an improvement to the first product would that increase sales if you were to incorporate it into product A. You might be able to negoiate a new deal with the company if this new improvement will increase their productivity and sales.
Come visit my sites at http://www.RogerBrown.net
or http://www.looking2license.com
I have gotten 9 products licensed spending less than $100 on each, you can too.

Re: a new invention before previous license expires

Postby Scrupulous » Tue Dec 14, 2010 11:02 am

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onewiki wrote:Thanks! although I did not notice the second reply until almost two years later!


Has it been that long?? ...mmmmman!
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