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Licensing assignment deal
by makeworldbetter » Wed Jun 27, 2012 4:26 pm
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makeworldbetter - Black Belt
- Posts: 1496
- Joined: Mon Jun 25, 2007 9:15 am
- Location: Silicon Valley
It's long time since I was here. Maybe some of you still remember me. I have been working s/w job all the time; yet I have not given up the invention habit I have along the way.
I have been working on this LED module for quite some time now. Filed patent application, pay to make prototype...
Now the prototype is working exceptionally well, lower the temperature of LEDs quite a lot. Now the president of this company who made my prototype came in and ask me to assign this patent right to them, with a deal of course.
On one hand, I think my invention really has its value; on the other hand, this company has connection, already have couple dozen customers using their products to make LED lamps. So if I work with them, it will really help to bring this invention to another level, and quick.
He orally asked me to assign patent right to them and we share royalty 50/50. Should I do it? Or what's a fair way?
I know most of you would keep secret about their invention, but I am ok since my application is already published by USPTO. Here is some stuff to show what it is.
http://www.facebook.com/groups/240333586084192/
I have been working on this LED module for quite some time now. Filed patent application, pay to make prototype...
Now the prototype is working exceptionally well, lower the temperature of LEDs quite a lot. Now the president of this company who made my prototype came in and ask me to assign this patent right to them, with a deal of course.
On one hand, I think my invention really has its value; on the other hand, this company has connection, already have couple dozen customers using their products to make LED lamps. So if I work with them, it will really help to bring this invention to another level, and quick.
He orally asked me to assign patent right to them and we share royalty 50/50. Should I do it? Or what's a fair way?
I know most of you would keep secret about their invention, but I am ok since my application is already published by USPTO. Here is some stuff to show what it is.
http://www.facebook.com/groups/240333586084192/
Re: Licensing assignment deal
by makeworldbetter » Thu Jun 28, 2012 11:58 am
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makeworldbetter - Black Belt
- Posts: 1496
- Joined: Mon Jun 25, 2007 9:15 am
- Location: Silicon Valley
My lawyer advice to avoid patent assignment. Go with exclusive licensing agreement.
Agree on the sub-license 50/50 spilt for the first 100,000 royalty revenue on each account, then step down their share as revenue grows.
I think it make sense as promoter spend effort to get into each account; but patent is designed to reward inventor at end.
Agree on the sub-license 50/50 spilt for the first 100,000 royalty revenue on each account, then step down their share as revenue grows.
I think it make sense as promoter spend effort to get into each account; but patent is designed to reward inventor at end.
Re: Licensing assignment deal
by ATtheLake » Tue Jul 03, 2012 10:06 pm
- ATtheLake
- Yellow Belt
- Posts: 98
- Joined: Wed Sep 29, 2010 6:45 pm
- Location: Northern Indiana
Iam glad you shared your experience.. with real details about lawyer advice.
Good for you I hope I helps bring in some money!
I remember some of your posts from doing searches; this forum has really not been active for some time it seems...
Good for you I hope I helps bring in some money!
I remember some of your posts from doing searches; this forum has really not been active for some time it seems...
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