Selling your Invention

 

Jane Lambert

The European IP Helpdesk has recently published a fact sheet on intellectual property assignments entitled Commercialising Intellectual Property: Assignment Agreements which can be downloaded from the EU Publication Office.  I mention it because the European Patent Office's Inventors' Handbook suggests an outright sale of a patent, patent application or other intellectual property right as a possible way in which an inventor can exploit his or her invention.

In my experience, it is rare for inventors who are not employed by companies in research and development or universities in academic research to assign their inventions to a business that is established in the industry for which the invention was created.  As I explained in How to Make Money from your Invention: Licensing on 15 Sept 2017, it is hard enough to find a business that is prepared to take a licence.  Most are even more reluctant to carry out due diligence and pay a lump sum to an inventor from outside their industry.

It is much more likely that a business that has developed an article that does not fit in its product range or a process that it is unlikely to use may offer its invention to others.  In the United States, there are established online and physical marketplaces for the sale of intellectual rights.  That is not yet the case here though there are businesses like Inngot Limited which will prepare an intellectual asset for sale.

Both potential purchasers and vendors should take legal and tax advice before embarking on negotiations,  The vendor should satisfy itself that it will never need to use the invention or the work leading up to its creation again.  If that is not the case it will need to negotiate licences.  The purchaser should satisfy itself that the vendor is entitled to sell the invention, that its use will not infringe other parties' patents or other intellectual property rights and that the patent, patent application or other legal protection is sufficient,   A mechanism for valuing the intellectual asset will have to be agreed.   In the UK and most other countries, the assignment must be in writing and signed by all parties.  The assignment should also be recorded at the intellectual property office of every relevant country.

Anyone wishing to discuss this article may call me on 020 7404 5252 during office hours or send me a message through my contact page, 

I have invented something - What happens next?

By William Heath Robinson - From the Book: William Heath Robinson Inventions,
Public Domain, https://commons.wikimedia.org/w/index.php?curid=39256622

 

Jane Lambert

If you work for a company, university or some other employer in a capacity in which an invention might reasonably be expected from the performance of your duties or you had a special obligation to further your employer's business, any invention you may create in the course of your duties may be claimed by your employer pursuant to s.39 of the Patents Act 1977.  Your reward will be your salary and any perks or  benefits that go with your appointment unless your invention is of outstanding benefit to your employer in which case you may be entitled to an extra reward under s.40,

The position will be different if you are a student and you invent something in the course of your research or studies.   Your university may be entitled to the invention pursuant to a clause in your contract for the right to research or study at your university but you will normally qualify for a share of any royalties or other payments that your university receives from the commercialization of your invention.   

If you made your invention in any other capacity it would be up to you to exploit it.  You can attempt to market it yourself or you can try to license it to a third party.  Neither is easy.  If you choose to make it yourself you have to acquire expertise and resources that inventors are no more likely to possess than anyone else.   If you try to license it you have to persuade a third party that your invention can earn or save that person's business money.   To get you started, here are two articles:

• How to make Money from your Invention - Starting your own Business 15 May 2019 NIPC Invention; and
• How to make Money from your Invention: Licensing 15  Sept 2017 NIPC Invention

You should try to learn from the experience of others.   A good place to find such experience is an inventors' club.  I was saddened to learn recently that one of the clubs that I founded nearly 20 years ago and chaired for many years suspended its meetings during the pandemic and has never revived them.  I consulted the "Inventor's Club" page of the Wessex Region of Technologists and Inventors (formerly the "Wessex Round Table of Inventors" or "WRTI") to see whether the same had happened to other clubs. There were some broken links but I found up-to-date websites for many of those clubs after consulting Google. I also wrote about the Bristol Innovation Group in Bristol Innovation Group: Street2Boardroom on 27 Aug 2020 in NIPC Severn and gave a webinar to Ffiws on 15 April 2020,  I have therefore been able to find inventors clubs in Anglesey with locations in Gwynedd, Birmingham, Bristol. Cambridge, Dudley, East London, Kent, Malvern, Oxford and Southampton,

If there isn't an inventor's club nearby or if the meetings of your local club do not live up to your expectations or needs I should be glad to help you set up a club.  I could draw up a simple constitution and suggest a few guest speakers free of charge.  Over the years I have met a lot of patent and trade mark attorneys, angel and private equity investors, specialist accountants, insurance brokers, product development consultants in all parts of the country.   I should even be happy to address any group you may set up or run a pro bono IP clinic myself.

Finally, two cardinal bits of advice.   The first is to ignore the small ads and spam emails from invention promoters offering to promote your invention for an eye-watering sum. Few have any connections with industry and most offer services that are already offered by your local Business or IP Centre or local enterprise partnership for free.   The second is to keep your invention under wraps until you have obtained optimum legal protection by applying for a patent or otherwise.

Anyone wishing to discuss this article can call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact form.