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Transitioning from patenting your invention to licensing, Here’s a concise guide from our legal team: ### 1. **Secure Your Patent**    - **File Your Application**: Submit your patent application to the appropriate patent office (e.g., USPTO).    - **Provisional Application**: Consider a provisional patent application for "patent pending" status.    - **Non-Provisional Application**: File a complete application for formal examination.    - **Patent Issuance**: Obtain your granted patent for legal protection. ### 2. **Identify Licensees**: Find companies or individuals who could benefit from your patented technology.    - **Business Plan**: Outline your licensing strategy, including potential revenue streams. ### 3. **Create a Licensing Package**    - **Patent Documentation**: Include all relevant patent information.    - **Technical Information**: Provide detailed technical data and benefits.    - **Marketing Materials**: Develop professional materials to present to potential licensees. ### 4. **Draft a Licensing Agreement**    - **Terms and Conditions**: Define the scope of use, duration, and exclusivity.    - **Royalty Structure**: Establish a royalty system (percentage of sales, fixed fees).    - **Payment Terms**: Specify how and when royalties will be paid.    - **Performance Obligations**: Include any requirements for the licensee.    - **Termination Clauses**: Outline conditions for terminating the agreement. ### 5. **Negotiate with Potential Licensees**    - **Initial Contact**: Reach out with your licensing package.    - **Presentations**: Discuss your invention and agreement terms.    - **Negotiation**: Be flexible to reach a mutually beneficial deal. ### 6. **Finalize the Agreement**    - **Legal Review**: Have a legal professional review the agreement.    - **Sign the Agreement**: Finalize and sign the licensing contract. ### 7. **Manage the Licensing Relationship**    - **Monitor Compliance**: Ensure the licensee adheres to the agreement.    - **Collect Royalties**: Ensure timely royalty payments.    - **Support**: Provide necessary support to the licensee. ### 8. **Protect Your IP**    - **Enforcement**: Vigilantly protect against infringements.    - **Continuous Monitoring**: Ensure proper use of your intellectual property. ### 9. **Evaluate and Adjust**    - **Assess Performance**: Regularly review the agreement’s success.    - **Adjust Terms**: Be open to renegotiating if needed. ### Additional Tips: - **Confidentiality Agreements**: Use NDAs when discussing your invention with potential licensees. - **Multiple Licensees**: Consider non-exclusive or market-specific licensing. - **Consult Experts**: Work with professionals to navigate licensing complexities. By following these steps, you can effectively move from patenting to licensing, maximizing your intellectual property’s commercial potential while ensuring its protection. 

Which paralegal specialty is best for you? Patent or Trademark? The table below scores various aspects of the job compared with an average legal administrative job. These are our subjective estimates arrived at through many years of experience. Job market It's a growing field, with careers in this industry expected to increase 10% by 2029, compared to just 4% growth in most other careers. Prerequisites Most IP paralegal employers ask for a bachelor's degree and some experience in the field or a related field, such as administrative support. Specialty professional training (such as IPLEGALED certificate courses) is highly valued by employers. Pay According to the employment site "Indeed" the average US paralegal salary is $58,921 but the average Intellectual Property (patent & trademark) paralegal salary is $103,601. According to “Glassdoor” patent & trademark paralegals earn nearly 60% more than other paralegals on average ($102K vs. $64k). Colleagues & Work Environment Due to the cooperative, non-confrontational nature of the work, and the general lack of urgent or unexpected deadlines, both IP attorneys and paralegals usually have well-adjusted and friendly personalities! In General Most positions are in law firms, but many are also in corporate IP offices and government departments, and you will support one or more patent or trademark attorneys. The work requires a lot of document-handling, filing, docketing and deadlines, and you will be corresponding daily with the United States Patent & Trademark Office (USPTO), so it requires excellent attention-to-detail and time-management. As an experienced IP paralegal you will be given a great deal of responsibility and autonomy. This may require you to occasionally work beyond normal hours, and it will be your responsibility to make sure that things are done right. The attorney will depend on you and trust you to take the job as seriously as they do. Overall it is an excellent field, filled with nice people, with great prospects for the future! Remember that IPLEGALED is always here to help - so whether you are a current student or just thinking about becoming one, please contact us anytime at www.iplegaled.com #Paralegal #PatentParalegal #TrademarkParalegal #CareerPath

🎢 Being a patent admin / paralegal / formalities officer is fun! 🎢 👵🏻And the more experienced you are, the better it gets. 🤔But have you noticed that the more experienced you get, the more decisions you make? And that can mean taking a new decision every 5-10 minutes, and sometimes about really important stuff! 👶🏼Some of the BASICS: 🍀When and how to reach a client; 🍀When and how to docket or dedocket an action; 🍀how to organize daily work; 🍀 but also, organize work for the coming weeks/months; 🍀When to escalate something, or when help is needed; 🍀have room for urgent matters, last minute filings; 🍀decide what is important and what not, and prioritize; 🍀reply to all this tiny little questions that Foreign Associates make for a case you think it was clear! 👩💻Some of the ADVANCED: 🍀keep up with law updates and implement in daily work; 🍀Organize team work according to capacity; 🍀liaise with fellow patent attorneys to discuss best practices related clients and FAs; 🍀liaise with other departments that work together with the Patent Team, such as finance (and foster a good relationship); 🍀ongoing creation of processes, and improvement of existing processes; 🍀follow last IP market trends; 🍀keep up with ongoing education. 🍀🍀🍀 and much much more! 🤪 The level and number of decision making that we paralegals do everyday is outstanding!! 🤩So keep up the good work. 🫵🏻 What else can you think of? #patents #patentadministrator #epo #intellectualproperty #patentprosecution

I am pleased to announce that I am chairing a new committee for the Corporate Legal Operations Consortium (AKA "CLOC") to help establish a set of key performance indicators ("KPIs") that companies may use to help optimize the management of their patent assets. The committee is targeting producing a preliminary draft document by the end of 2024. Use of and/or compliance to the KPIs is voluntary. Our initial charter will lay out the major focus areas; however, preliminary discussions have focused on: 1) Optimize patenting candidate selection 2) Optimize geographic patenting selection 3) Optimize fee/patent quality balance 4) Optimize prosecuting agent selection 5) Optimize patent harvesting opportunities 6) Optimize ongoing patent maintenance decisions 7) Identify portfolio risk vectors 8) Identify acquisition opportunities 9) Reduce administrative errors that impact asset enforceability The following companies are founding members of this initiative: - Kroll - Techtronic Industries - Crowe - SABIC - USPTO - Verily - EY I believe that adoption of our KPIs has the greatest potential if we draw views from a wide group of participants. Patents exist and are essential in many areas of the economy; thus, I am hopeful that we will have representation from some of the larger patent owners in communications, organic and inorganic chemistry (i.e., pharma and semiconductors), consumer electronics, networking, medical devices, universities, law firms, and others. With this post, I am soliciting for other members in the patent community from my network that have an interest in this topic to join me in this project. This is a volunteer, non-partisan effort. The committee expects professionalism at all times and no astroturfing to sabotage the effort. There will be a reasonable amount of work on this effort, with two-hour calls the first Wednesday of every month plus subcommittee work. Please be prepared to dedicate at least 40 hours per calendar year to the effort. For background, you will need to be a member of CLOC to participate. That cost is reasonable. Please message me if you have interest in participating. Depending on the response, the founding members may have to limit the number of participants to maintain quorum for calls, so please respond only if you can honor the commitment. I look forward to your helping us in this important journey to advance the patent profession.

Outsourcing patent services to NOMOSOTS provides a comprehensive array of advantages that can significantly benefit inventors, businesses, and law firms alike. Patents are instrumental in safeguarding intellectual property and innovations, yet the multifaceted and demanding nature of the patent process often calls for professional support. Below, we delve into the key advantages of entrusting your patent-related tasks to NOMOSOTS:   **1. Expertise and Specialization:** NOMOSOTS boasts a team of seasoned patent professionals who specialize in various facets of patent services. These experts possess an in-depth understanding of patent research, drafting, prosecution, and maintenance. By outsourcing your patent needs to NOMOSOTS, you gain access to their specialized knowledge and experience, ensuring that your patents are in the hands of professionals well-versed in patent law and procedures.   **2. Cost Savings:** Operating an in-house patent department can entail substantial costs, including expenses related to staff hiring and training, acquisition of software and tools, and ongoing operational expenditures. By outsourcing your patent services to NOMOSOTS, you can significantly reduce these overhead expenses. With this model, you pay only for the specific services you require, making it an economically efficient solution for your patent-related tasks.   **3. Focus on Core Competencies:** Delegating patent services to NOMOSOTS allows your organization to concentrate on its core competencies and primary business objectives. Instead of diverting valuable resources and attention to patent-related responsibilities, you can entrust these tasks to NOMOSOTS, liberating your team to focus on innovation, product development, and overall business growth.   **4. Enhanced Efficiency:** NOMOSOTS is equipped with cutting-edge tools and technologies for patent research, drafting, and prosecution. This technological advantage translates into heightened efficiency and faster turnaround times. When you outsource your patent applications to NOMOSOTS, you can anticipate swifter preparation and processing, reducing the time it takes for your innovations to reach the market. You are required to fill a form there on the website.Www.nomosots.in   #PersonalInjury #Injury #MedicalMalpractie #MassTort #Medical #Nofault #nofaultautomobileaccident #Accident #Accidentlawyer #revenuegeneration #growthstrategy #costsavings #innovationstrategy #costcutting #legalinnovation #legalservices #LPO #LegalOutsourcingServices #EmpoweringAttorneys #empoweringwomen #legaltechnology #legaltech20 #lawfirms #legalassistant #paralegals #documentreview #documentmanagement #outsourcingservices #documentmanagementsystem #nomosots https://lnkd.in/dr9sAkEH | https://lnkd.in/dEByq56N    

🔍 Exploring #DoublePatenting: Understanding its Implications in Patent Law 🔍 💡 Advantages of Double Patenting: Increased Protection: Double patenting allows inventors to secure broader protection for their inventions by obtaining multiple patents covering different aspects or applications of the same invention. Commercialization Opportunities: Having multiple patents can enhance the commercial value of an invention, making it more attractive to potential investors, licensees, and partners. 🔄 Disadvantages of Double Patenting: Potential for Abuse: Granting multiple patents for the same invention could lead to monopolistic practices, stifling competition and innovation in the market. Administrative Burden: Double patenting increases the workload for patent offices and may result in longer processing times and higher costs for both applicants and the patent system as a whole. 🌐 Global Perspectives: It's important to note that approaches to double patenting may vary across jurisdictions. What constitutes double patenting in one country might not necessarily be viewed the same way elsewhere. Thus, patent applicants and practitioners need to stay informed about the legal landscape in different regions. 🚀 Implications for Innovation: While the aim of patent law is to incentivize innovation, double patenting poses challenges in striking the right balance between rewarding inventors and fostering competition. Finding the right solutions to address double patenting is crucial for maintaining a robust and equitable patent system that promotes innovation. 🔍 Limitations of Double Patenting: Legal Complexity: Determining whether an invention warrants multiple patents can be legally complex and may require careful analysis of patent claims, prior art, and regulatory requirements. Risk of Invalidity: Double patenting may increase the risk of patent invalidation if the patents are challenged in court, particularly if they are found to cover the same inventive concept or lack novelty and non-obviousness. 🔍 Conclusion: Understanding double patenting is essential for patent applicants, practitioners, and policymakers alike. By navigating this complex aspect of patent law effectively, we can uphold the integrity of the patent system while encouraging continued innovation for the betterment of society. Let's continue the conversation! What are your thoughts on double patenting, and how do you think it impacts innovation and patent law? #Patents #Innovation #IntellectualProperty #PatentLaw #Double Patenting #LegalInsights #TechLaw #Patents #IntellectualProperty #IPRights #PatentLaw #PatentProtection #Innovation #LegalTech #TechLaw #IPStrategy #PatentLitigation #PatentOffice #IPEnforcement #IPManagement #InnovationManagement #LegalNews #IPConsulting #IPProfessionals #BusinessStrategy #StartupLaw #Entrepreneurship

Patent Nerd Alert™: The movement of the U.S. to a compulsory licensing regime in 2006 has helped fuel rhetoric about holdup (i.e., a licensor demands higher-than-market prices for patent licenses) and holdout (i.e., unreasonable licensing delay). Galetovic and Harber put down the unanswered gauntlet in March 2017 regarding proving patent holdup. I am not aware of a single defendant that has ever proven holdup with data. That leaves open the discussion of holdout, which I focus on today.   For background, a mentor of mine told me years ago that the only thing better in sales than a quick “yes” is a quick “no.” The point was to not waste time on dead prospects. The question regarding holdout is the duration. What is a reasonable amount of time that one can host a licensing discussion with an expectation for movement to some reasonable endpoint? Every company may have a different answer.   For me, having spoken with every major patent analytics tool developer in the last few years, it is probably 6-9 months. If one cannot get to some reasonable place of finality within 6-9 months, then I expect that they are just trying pump me for ideas.   So the basic question remains: does patent holdout exists? For me, since I studied it, the answer is yes. Specifically, earlier this year, in my first round of analysis, I read a sampling of more than 750 complaints filed and I built a database. Specifically, I sought evidence of some first communication with a defendant and then the eventual filing of the complaint. Those data points bracketed the discussion durations. I focused on cases where the plaintiff had an actual meeting or sent a letter and I excluded cases asserting patent knowledge based on forward patent cites, constructive notice, etc.   For each case, I logged a variety of data to make auditing the data easy for peer review. I also logged the date the plaintiff filed the complaint and then calculated the number of months difference between the initial formal overture and the filing of the complaint.   It is an interesting exercise, because you can almost feel the raw frustration from some of the plaintiffs building with the defendants as you read the complaints. The attached histogram demonstrates with data what happens when someone approaches certain unnamed companies with a licensing request.   It is clear that one will generally wait an average of about 42 months (i.e., 3.5 years) before getting so pissed off that one files suit. Is that holdout? You be the judge; however, I cannot imagine either the perpetual optimism and/or pained anguish for those that negotiated in good faith for more than 8 years. For comparison, Bill Gate’s $4B nuclear power plant in Wyoming took less time to negotiate.   Some seasoned companies that I work with recognize holdout behavior and act accordingly. For those that have a need to prove holdout behavior with data, especially in FRAND matters or among peers, hit me up.

𝗪𝗵𝘆 𝗱𝗼 𝘆𝗼𝘂 𝗯𝗲𝗻𝗲𝗳𝗶𝘁 𝗳𝗿𝗼𝗺 𝗵𝗶𝗿𝗶𝗻𝗴 𝗮 𝗽𝗮𝘁𝗲𝗻𝘁 𝗹𝗮𝘄𝘆𝗲𝗿 𝘄𝗶𝘁𝗵 𝘀𝗽𝗲𝗰𝗶𝗮𝗹 𝗲𝘅𝗽𝗲𝗿𝘁𝗶𝘀𝗲 𝗶𝗻 𝘀𝗼𝗳𝘁𝘄𝗮𝗿𝗲 𝗽𝗮𝘁𝗲𝗻𝘁𝘀 𝘁𝗼 𝗽𝗿𝗼𝘁𝗲𝗰𝘁 𝘆𝗼𝘂𝗿 𝗶𝗻𝗻𝗼𝘃𝗮𝘁𝗶𝘃𝗲 𝘀𝗼𝗳𝘁𝘄𝗮𝗿𝗲? Although everyone is familiar with the benefits of hiring a specialist in any field, you might think that merely being a patent lawyer is enough of a specialty to be qualified to handle patents for any kind of invention. But patent law is a strange field of law, in which it's critical for the patent lawyer who is handling a patent to understand not only the legal rules, but also the technology of the invention for which patent protection is being sought. Perhaps even more strangely, certain aspects of patent law are applied so differently to different types of technology that 𝗶𝘁'𝘀 𝗮𝗹𝗺𝗼𝘀𝘁 𝗮𝘀 𝗶𝗳 𝘁𝗵𝗲𝗿𝗲 𝘄𝗲𝗿𝗲 𝗱𝗶𝗳𝗳𝗲𝗿𝗲𝗻𝘁 𝗽𝗮𝘁𝗲𝗻𝘁 𝗹𝗮𝘄𝘀 𝗳𝗼𝗿 𝗱𝗶𝗳𝗳𝗲𝗿𝗲𝗻𝘁 𝘁𝗲𝗰𝗵𝗻𝗼𝗹𝗼𝗴𝗶𝗰𝗮𝗹 𝗳𝗶𝗲𝗹𝗱𝘀. For example, the legal standards for enablement and patent eligibility often are interpreted and applied quite differently for pharmaceuticals than for software. Even within the field of software, we're beginning to see that 𝘁𝗵𝗲 𝘄𝗲𝗶𝗿𝗱 𝗽𝗿𝗼𝗽𝗲𝗿𝘁𝗶𝗲𝘀 𝗼𝗳 𝘁𝗼𝗱𝗮𝘆'𝘀 𝗺𝗼𝗱𝗲𝗹-𝗯𝗮𝘀𝗲𝗱 𝗔𝗜 𝘀𝘆𝘀𝘁𝗲𝗺𝘀 -- such as their unpredictability -- are at least raising questions about 𝘄𝗵𝗲𝘁𝗵𝗲𝗿 𝗽𝗮𝘁𝗲𝗻𝘁 𝗹𝗮𝘄 𝘀𝗵𝗼𝘂𝗹𝗱 𝗯𝗲 𝗮𝗽𝗽𝗹𝗶𝗲𝗱 𝗱𝗶𝗳𝗳𝗲𝗿𝗲𝗻𝘁𝗹𝘆 𝘁𝗼 𝗔𝗜 𝗽𝗮𝘁𝗲𝗻𝘁𝘀 𝘁𝗵𝗮𝗻 𝘁𝗼 𝗽𝗮𝘁𝗲𝗻𝘁𝘀 𝗳𝗼𝗿 𝗼𝘁𝗵𝗲𝗿 𝗸𝗶𝗻𝗱𝘀 𝗼𝗳 𝘀𝗼𝗳𝘁𝘄𝗮𝗿𝗲. And the law itself, its interpretation, and its application by patent offices to software-based inventions changes rapidly and frequently, and varies from country to country. Add to that the fact that even within a single country's patent system, the way in which legal standards are applied can vary significantly from patent examiner to patent examiner. This is particularly true for patent eligibility as it is applied to software. As a result, successfully obtaining software patents can require frequently communication with, and close relationships with, individual patent examiners, often over extended periods of time. Although it is possible for a non-software patent specialist to embody all of the knowledge, skills, and qualities I've described above, it's not likely. This is especially true because of the need to stay on top of significant and rapid developments in both the technology and the law. Although the pressure to keep up can be intense, I personally thrive on the challenge, and I'm always grateful to everyone who puts their trust in me to protect their groundbreaking work with patents. #patents #softwarepatents

Are you aware of the challenges faced by legal and patent counsels as they engage with external vendors for #priorartsearches? Drawing on Dhananjay (DJ) K. Das' experience as an IP consultant, managing over 2000 annual prior art patent search inquiries, he believes that the comprehensive nature of prior art searches is pivotal for thorough exploration of relevant #priorart, especially for litigation needs. In this article, he delves into the best practices that define thorough searches, emphasizing the identification of linchpin elements and metrics beyond routine keyword searching. You can use these standards during evaluating vendors, ordering searches, or quality checks to ensure optimal service. Read more: https://lnkd.in/d-DpdxY5 #patents #patentsearch #priorartsearch #intellectualproperty #outsourcing #SagaciousIP #blog

Ever wondered what it is like to be a Patent and/or Trade Mark Attorney?   I recently sat down with my friend JT for an interview about my life as an IP Professional. Note: These are my views and not those of my firm or any other party 😊 JT: What led you to pursue a career as a patent and trade mark attorney? AL: Being an IP Specialist was not my first career choice. After completing my PhD, I was looking for positions as a graduate engineer.  I was getting interviews, but no job offers. A couple of friends who were in the IP profession suggested I look into becoming a patent attorney. At that time, I had no idea what a patent attorney was or what they did. After some research, I was open to the idea as it was a job where I could use my technical knowledge, and also have a way to channel my inbuilt curiosity and inquisitiveness. JT: Could you describe a typical day in your job? AL: Typical day? 🤣 . I often wish that there was such a thing (in my experience at least). It’s one of the exciting things about being an IP professional, no two days are the same. Come to think about it, I believe that one of the things that makes the profession such a great one to work in is that it meets the 6 Human Needs outlined by Tony Robbins. JT: How has the advancement of technology affected your work as a patent and trade mark attorney? AL: Overall, it has made it a lot easier to communicate with Intellectual Property Offices, Attorneys in other countries, and clients. No longer do you have to wait for the ‘sent’ confirmation from the fax machine with fingers crossed, praying that all the pages of the last-minute filing have been correctly transferred. As you know, we are in the midst of the A.I. revolution. I read someone say that there are currently two types of businesses – those who use A.I., and those who should be using A.I. No doubt that generative A.I. will affect the IP industry through its increased use, and lead to more law changes down the line. At its core, a lot of IP laws were written to cover innovations and creations of the pre-typewriter age. JT: How do you manage client expectations, especially when dealing with complex patent applications or contentious trade mark registrations? AL: By being honest.  It’s understandable for an inventor to strongly believe that what they have invented is the best thing since sliced bread. But the taste is in the pudding, and sometimes an IP Examiner would not see things the same way that the client or you do. You outline the pros and cons, and the chances of success of the application being successful following feedback from the IPO on its merits. JT: What advice would you give to someone interested in becoming a patent or trade mark attorney in the UK? AL: Try and see if you can get some work experience with an IP firm. And do your research. The IP Careers website has some useful information on the profession - https://lnkd.in/epNxXpaN