09 March 2023

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

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