Monday, April 9
Left out in the cold.....
Just to be clear – from a business perspective it is NEVER a good idea to assign a patent to a company in the course of a licensing deal. There is simply no need. The license contract itself serves as a pseudo assignment in the terms it grants the company for use of the intellectual property. Most importantly it does it in a way that is 100% reversible if the time comes that you and the company part ways.
As we were talking I started to think about how sites like Quirky (who have never been very interested in telling inventors about the damage to Patent rights using their site causes) handle patents on products they chose to commercialize.
I found the answer in their terms and conditions statement…..and I guess it tells the story.
“In connection with any Accepted Product Idea, to the extent that you submit User Content in connection with that Accepted Product Idea and your User Content is incorporated or made part of any commercialized version of that Product Idea, you hereby assign to Company, and agree to deliver such additional assignments or other instruments of transfer or Intellectual Property Rights perfection as may be reasonably requested by the Company, all of your right, title and interest in such User Content, including without limitation all Intellectual Property Rights. You further agree that you will not make any claims against the Company or any third party who is assigned or licensed rights in such User Content by the Company, based on any allegations that any activities by the Company or such third party infringe your (or anyone else's) Intellectual Property Rights in such User Content. You further acknowledge and agree that in connection with any such assignment you reserve no rights whatsoever and the Company shall have the right to enforce all Intellectual Property Rights in such User Content against you and any subsequent use by you of such User Content.”
Like I said, it’s never a good idea to assign your patent to anyone in a licensing deal. It is an irreversible action that gives 100% rights to the company and leaves you.... out in the cold.