Having a patented technology is a significant intangible asset that can have a lot of potential value. Realizing that value in the form of actual revenue is a different story. Strategic thinking that leads to an overall plan for managing intellectual property is essential. And part of that plan needs to be a determination of what to do with any given patent.
Many might agree that It could be argued that with any given innovation there are three possible next steps: hold the patent without doing anything; sell and assign the patent to some other party; or license the rights in some way. Each has pros and cons. To be confident you make the right decision, it’s wisest to consult first with an intellectual property attorney.
Know the options
Holding onto the patent and doing nothing with it does provide the possibility of preventing anyone else from benefiting from your idea. However, many would note there’s little benefit to you. You will have to keep watch for possible infringers and hold them accountable. The key method for doing that might be limited to getting them to cease and desist using your patent.
If that doesn’t work, you might be able to sue the alleged infringer. But then you have to prove your claim, and as many experts will accede, there’s a chance the application that you think is using your patented technology is based on a similar idea that is slightly different and under separate patent.
A holder of a patent can sell or license the patent to another party. One advantage of this option is that it delivers a clear financial return. However, the assignment of rights is absolute and permanent. That is not always an ideal outcome.
Licensing offers greater flexibility in that you retain control of the patent. Through contract negotiations you can specify how the invention can be used, or whether it can be copied and sold. The terms might also include that the licensee fulfill certain obligations, such as getting the product to market in a certain timeframe. If terms are violated, the license can be revoked under a breach of contract claim.
Ultimately, determining the right route requires a detailed plan that stems from knowledge about the science behind the IP asset, financing possibilities and the law.
