Tuesday, December 17, 2013
Can I Get Licensee to Pay Patent Fees?
That Said Dept. What you're seeking -- to have the licensee pay the patent fees -- is not unusual. In some exclusive licensing arrangements, the licensee pays for the patent application processing and fees. These expenses, including attorney fees, are then usually deducted from the inventor's future royalties (although that's a subject of negotiation -- the parties may split the cost, or the licensee may pay it all). Why would the licensee pay the patent costs? Because it's usually in an exclusive licensee's best interest to have patent rights. On the other hand, you want these costs to be reasonable (good luck with soaring patent attorney fees) and sometimes these patent fee provisions include a cap on your total patent expenses.
Confidentiality. It's in your best interest as an inventor to have disclosures about your invention made under the terms of a confidentiality arrangement. Back in the old days (prior to March 16, 2013), you had a year of sales or public disclosures, before you had to file a patent. That one-year window is now closed with one exception for inventor-made disclosures.