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By J.D. Houvener
Patent Attorney and Founder

Hi everyone I’m JD Houvener your host to the bold Today Show where you the inventor and entrepreneur business owner gets your daily dose of inspiration make the world a better place I’m glad you’re here we’re in part 4 of our five-part series about patent licensing law and we’re diving deep into licensing contracts and helping you think about that end goal as a business owner as a technologist looking to move your innovation into the marketplace it’s a big idea a big goal to keep in mind and even though you don’t potentially plan to actually take your product all the way to market having a business plan is important as we talked about yesterday even doing simple things like identifying who you might like to license your product to how you might get to that conversation that’s a business plan put that into writing get something in action you can put behind to put a timeframe together because if you don’t hold yourself to it and are accountable time will go by and time is everything when it comes to patent rights as you know for utility applications you only allow 20 years from the date of filing as exclusive owner for design patents it’s down to 15 years so certainly time is of the essence and all that time is possibly time you could actually be getting paid of royalty for so make sure to move it quickly put a plan in place and work with your patent attorney to get that license agreement set up all right today we’re talking about patent royalties and and it’s interesting to think about in terms of the contract but how the contract law sometimes can override the terms of the patent and as a very fascinating case that talks about how in general it’s impermissible for a contract to seek royalty for a patent that is already expired it kind of makes sense right a patenting that gets expired it goes past that 20-year timeline and no longer is enforceable courts have for a long long time said look the underlying royalty contract is no longer valid if if underlying IP rights have been expired so even if the term of the License Agreement goes and extends beyond this the licensee cannot expect to get royalties after that a patent has expired that’s the case called Brouillette versus dies company so take a look at that case you can look it up on google read all about the opinion there it does soon make logical sense no this can cause some tricky situations right we’ve mentioned before there’s alternative methods to getting paid if you were not for example getting monthly or quarterly cash installments for your license product but instead if you had still stock that hadn’t yet been converted and now your patents expired well you still may have the option right to purchase those stock after your patent expires so the rules get a little bit more gray in this area in terms of when you can potentially cash in that stock how long it’ll hold that option these are these are types of considerations that can actually be contracted in the first version of the contract way back when you first formed a license agreement so having the ability to before thinking forward thinking rather about how the how it’s going to play out right what the conditions are gonna be way after you start thinking about making the initial royalty – when you actually even receive the last royalty payment having these things in mind is essential and that’s what you want to have a partner as a patent attorney working with you as you format licensing contract so if you have any questions about receiving royalty payments the exciting prospect of get your invention in the hands of a worthy seller or manufacturer that’s already been doing supplying in this industry for a long time give us a call or set up a 30-minute consultation you can book that consult yourself by visiting bold patents dot-com there we can do a much more detailed discussion about your specific scenario in confidence and make sure we get you the answers that you need I’m your host JD Houvener owner of the bold today show it’s been my pleasure talking to you have a great day and go big go bold [Music] Oh

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