sell

How to Sell Your Patent

cash right cash talks are you looking to

sell your patent you want to hear about

how you can make money with patents hey

everyone I'm JD Hooven ER USPTO patent

attorney CEO and Managing Partner here

at bold patents law firm today I'll be

talking about selling your patent and

getting you everything you need to know

about moving it forward

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today I'll be sharing with you five

steps about how to make money with your

patented product the first step of the

process is identification of the parties

now when you're looking to sit out at

the table and negotiate a patent sale or

patent license you have to know who

you're dealing with if you're an

individual inventor and you're sitting

across the table from another individual

that's looking to acquire the rights

it's very straightforward but things get

complicated quickly if they're a company

and if that company has many moving

parts you're going to want to know who

will have rights to make use sell or

import your invention and how much of

its can be licensed or sold and now it's

time to consider what the party's

intentions are the party a which is the

one giving up their patent rights and

party be the one receiving them in the

contract you've got to lay it out

clearly what the goals are and what the

what is being conveyed right this is a

transaction the party giving up their

patent write needs to say exactly what

is being granted in a patent you've got

the ability to grant the ability to make

it to use it to sell it in to import it

okay and depending on how many countries

we're talking about this is a lot of

different rights and so clarifying who's

giving up what and who's receiving it is

also in part of this the major part of

the patent sale after the parties and

tensions are clear and we already know

who the parties are now has talked about

the actual rights themselves what is it

that you own in the contract you're not

going to want to specify the whole list

of claims that are listed in the bottom

of a patent in the top of the contract

what you want to do is instead is say

look at Exhibit A or C Exhibit A in the

exhibit down at the bottom of the

contract will identify the patent number

the patent applications that may be

pending and the whole portfolio that's

being conveyed from there each party

will want to inspect each of those

identified to make sure that those are

indeed the patents publication numbers

serial numbers and dates that are

associated with the conveyance

the actual rights aren't gonna be listed

in the contract at all you want to make

sure that you look at each of those

exhibit references at the USPTO gov to

make sure those claim scopes of

independent and dependent rights are as

you've specified and negotiated for the

next step before you move on to the

purchase statement which of course is

probably what you're all hoping to hear

about is the money part of the contract

you've got to talk about the prior or

existing licenses these are conveyances

right transactions at the party a who's

giving up rights may already may still

be under the obligations for right if

you're one trying to license your right

to party be its party bees job to make

sure that you are getting that they're

receiving the full amount of that right

if you have actually licensed your

invention out to a to someone else in

the past or you're under an obligation

to assign your patent to another company

that needs to be cleared up right up

front if the party bee is gonna be a non

exclusive licensee that needs to be

cleared up upfront as well in the

contract that means that they're not

going to be the only one that gets to

make use or sell the invention they're

gonna have competitors built-in now

whether those competitors are actually

only to market or not is irrelevant it's

that they could enter the streaming

market against them in competition and

in that scenario just painted for you

it's gonna likely decrease the value and

help them party be the one receiving it

negotiate down the royalty or the lump

sum payment all right so now it's time

to talk about price right this is the

part the contract that everyone probably

Scrolls down tunes okay how much and

you're right

this is key this is probably the most

important part of the negotiation

process what's at play here is the money

in terms of lump sum what's received

upfront and what's potentially received

over time or including contingency

payments contingency payments are when

you see receive money via royalty if and

when a product is sold these are terms

that get negotiated

patents can be sold out right for a lump

sum payment tour there's no license at

all it's being sold or the purchase

price can be one that's paid for over a

several quarters or years or contingent

upon certain activity up to an including

sale something else to include here in

purchase price is to make sure it's not

just about the revenue you've got to get

more specific are we talking about gross

revenue or net revenue that's a big

difference

it's easy to calculate gross revenue so

that's how most deals are done if we're

doing net you've got to really get into

the business and see what expenses are

at play to calculate this properly last

but not least once you've negotiated the

purchase price and all the other terms

of the agreement now it's time to record

it with the US Patent Office recording

an assignment or license is important it

helps to publish the information so that

any other competitor or folks that may

need to look at this later in a

litigation will have the record

preserved it's also useful for making

sure that deals get done and it's a

clear a clear transparent transaction

towards there's no no third party that's

going to be left out of the loop this is

something that both parties agree to and

it's not going to be a private

transaction it's for all their customers

and all the folks that may need to see

this after the fact look it up online in

the public USPTO database all right

we've had fun we talked about how to do

a patent sale transaction and what

you've got to think about in order to

make that happen we talked about how

each party has their own intentions and

how they need to be articulated right up

front in the contract how it's no joke

that you've got to make sure you do your

diligence to make sure the patents that

you're buying are indeed contain the

claims that you hope they do then make

sure you've done the diligence as well

to put down in writing the price point

okay is this going to be a royal tea

payment lump sum payment or a

contingency based on some other activity

or performance later on and make sure

before you close up that agreement

before you both part ways that you've

record the document with the USPTO so

that's clear and transparent for all

third parties later now you know how to

make and

a transaction right this is the the

finish line you've done all the hard

work of researching applying for getting

your patent granted and now you've made

some money with it congratulations

thanks for watching I'm JD Hooven or

managing partner and CEO here at bold

patents law firm have a great day

everybody go big go bold

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