Assignment patent

Once you've patented an invention, you've got two options if you want to make money off of your invention without producing and marketing the product yourself. First, you could sell your patent – what the . Patent and Trademark Office calls "assignment," because you assign your ownership rights in the patent to someone else. Your other option is to license to others the rights to do certain things, such as distribute or manufacture, your invention. Licensing isn't a full sale, even if the license is exclusive, because you are still the record owner of the patent. [1] [2]

If an assignment-consent provision requires that consent not be unreasonably withheld , then failure to obtain consent to a reasonable assignment would not be a material breach, according to the court in Hess Energy Inc. v. Lightning Oil Co. , No. 01-1582 (4th Cir. Jan. 18, 2002) (reversing summary judgment). In that case, the agreement was a natural-gas supply contract. The customer was acquired by a larger company, after which the larger company took over some of the contract administration responsibilities such as payment of the vendor’s invoices. The vendor, seeking to sell its gas to someone else at a higher price, sent a notice of termination, on grounds that the customer had “assigned” the agreement to its new parent company, in violation of the contract’s assignment-consent provision. The appeals court held that, even if the customer had indeed assigned the contract (a point on which it expressed considerable doubt) without consent, the resulting breach of the agreement was not material, and therefore the vendor did not have the right to terminate the contract. Share this:

  • Twitter
  • LinkedIn
  • Facebook
  • Pocket
  • Email
  • Print

Assignment patent

assignment patent

Media:

assignment patentassignment patentassignment patentassignment patent