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By J.D. Houvener
Patent Attorney and Founder

Hi I’m JD Houvener your host of the ball today’s show for you the inventor entrepreneur business owner get your daily dose of inspiration to make the world a better place alright well part three of our five part series on patent licensing diving deep into this area of law because it’s important about keeping that goal in mind and making sure you understand what the vision is for moving your product into the market so today I want to actually ask you the big question right I need you to make your mind up spend some time today thinking hard about whether you really want to build that business right collect members form a business entity hire employees independent contractors build a supply chain all these things that take an incredible amount of time and resources in building a business or are you going to think about being the technologist and just do innovation and let someone else do all the work of building that business and look to license so there’s really are two separate paths I want you to think really hard about this and if you’ve got any difficulty based on what we’ve talked about please follow up with us at our website bold patents calm or just give us a call at 818-338-6377 because [Music]

so at the time of contracting need to be very clear about what happens under the under the contract if they don’t pay right they don’t perform they don’t pay the royalty especially within the timeframe given what is the remedy for breach so breaching a contract much like any other contract is state-specific and so your licensing attorney is going to want to make sure that they put in specific provisions that will bind the party that is signing the agreement without digging into state contract law too much I want to focus our attention on what to think about in terms of the patent and what that means and as soon as there is a breach in a licensed contract there’s big trouble because now that license or who had the rights to make use and sell your invention no longer does and the parties actually immediately liable for infringement so if they continue selling after the breach they’re literally indirectly infringing and so immediately upon a breach its beholdin or it’s the best interest of the licensee to write a cease and desist letter clarifying the fact that the licensee has rights in that invention and that no longer does the license or have the permission to use that invention or revenue right they have no longer the ability to make use seller import into the jurisdiction without your permission now one way to avoid this is to take a security interest in the in the actual product so if for example they before jumping to this breach right if there was an intermediate step after the licensee it’ll see if a license or stops payment or doesn’t pay on time instead of that first step being breach there could be a security interest given to the licensee this is sort of similar to that upfront payment as instead of having cash you take stock their ownership interest in the company and so what can happen over time if the license or doesn’t pay the royalty is that the the licensee actually begins to own the company or own the entirety of that sales stream so they own the the potential for that down the road and what’s interesting is that this can this can come about at any point in the patent process including in the application phase and of course in the issued phase so for all of you out there that are following along I know I’ve hit on some details here you can license your patent application while it’s still pending all right so don’t miss that it’s pretty exciting right so just having it just filed it hasn’t even been approved yet if there’s enough interest in the market for your product and there’s enough promise that will actually get issued you can market that you can get a royalty payment get real dollars for your invention even before it gets issued pretty exciting stuff so if you have any questions about that of course anything at all about patent law please get ahold of us our number is 884


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About the Author
J.D. Houvener is a Registered USPTO Patent Attorney who has a strong interest in helping entrepreneurs and businesses thrive. J.D. leverages his technical background in engineering and experience in the aerospace industry to provide businesses with a unique perspective on their patent needs. He works with clients who are serious about investing in their intellectual assets and provides counsel on how to capitalize their patents in the market. If you have any questions regarding this article or patents in general, consider contacting J.D. at