Authors: Richard Stim
ISBN-13: 9781413313253, ISBN-10: 1413313256
Format: Other Format
Publisher: NOLO
Date Published: December 2010
Edition: Revised
Richard Stim specializes in small business, copyright, patents, and trademark issues at Nolo. He practices law in San Francisco and has represented photographers, software developers, crafts people, publishers, musicians, and toy designers. He is the author of many books, including Whoops I'm in Business, Music Law, and Profit From Your Idea. Stim also produces audiobooks, and performs and records with two bands, MX-80 and angel corpus christi.
Book Synopsis
It's no secret that inventors need to protect their secrets. If you present an invention to a prospective buyer or licensee, it can be stolen. The best way to protect yourself is with a nondisclosure agreement.
But it's not enough to hand a company a one-size-fits-all nondisclosure agreement and expect a signature. The company may request modifications to the inventor's agreement, supply its own agreement or actually require an inventor to give up claims of confidentiality.
This plain-English book helps inventors create, modify and understand nondisclosure agreements. In addition to providing sample agreements.
Disclosing your invention requires a balancing act: Presenting the best aspects of your invention while protecting the confidential aspects of your work. With this book an inventor can effectively maintain the necessary balance and minimize the risks of disclosure.
Book News
With an array of forms on disk, in combination with the insights of intellectual property attorney Stim, inventors can hold onto the titles and profits of their inventions rather than sell out to companies.
Table of Contents
Your Legal Companion 1
Gearing Up to License Your Invention 5
Licenses 7
Assignments 11
The Licensing Process 12
Avoiding Conflicts Among Multiple Agreements 14
Challenges to Your Ownership 20
Transferring Ownership of Your Invention to Your Business 23
Disclosing Information About Your Invention 34
Keeping Your Records 35
No False Hopes! Reviewing Your Invention's Commercial Potential 36
Intellectual Property Protection 43
General Rules for Legal Protection of Inventions 45
Utility Patents 47
Trade Secrets 56
Trademarks 61
Design Patents 63
Copyright Law 64
Sorting Out Nonfunctional Features: Design Patents, Product Configurations, and Copyright 65
Ownership Issues for Inventor Employees 69
What Type of Intellectual Property Is Involved? 70
Employer/Employee: Patent and Trade Secret Ownership 71
Inventions Covered by Copyright 76
Special Employment Situations 78
Working Out Ownership Issues With Your Employer 81
Invention Financing and Joint Ownership 85
How Much Money Do You Need to License Your Idea? 87
Sources of Funding 89
Joint Ownership 97
How Payments, Loans, or Investments Can Create Joint Ownership 99
The Joint Ownership Agreement 102
Licensing Agents and Representatives 109
Agents 110
Completing the Agent Agreement 113
Attorneys as Agents 120
Invention Marketing Scams 121
Soliciting Potential Licenses 127
Before You Begin Your Search 129
How to Find Potential Licensees 130
How to Overcome a Licensee's Bias Against Submissions 134
What's the Best Way to Solicit a Potential Licensee? 136
Product Presentations 140
Should You Solicit Foreign Licensees? 142
Protecting Confidential Information 149
Confidential Information and Nondisclosure Agreements 151
Proceeding Without an Agreement 161
Waiver Agreements 163
When You Have Sufficient Bargaining Power 164
Disclosing to Employees and Contractors 166
Disclosing to an Attorney 166
The Key Elements of Your Agreement 169
From Handshake to License 170
Identifying the Parties 171
Describing Your Invention and the Licensed Products 172
Specifying Which Rights Are Granted 177
Defining the Territory 183
Setting the Length (Term) of the Agreement 185
Money: It Matters 195
Some Basic Royalty Definitions 197
Ways to Get Paid 200
The Mysteries of Net Sales and Deductions 204
How Much Do You Get? 206
Royalty Provisions 210
Negotiating Your Agreement 219
What, Me Negotiate? 220
Documenting the Important Contract Elements 222
Letter of Intent 225
Option Agreements 229
What If the Licensee Wants to Proceed Without a Written License Agreement? 236
Sample Agreement 237
License Agreement 239
Optional License Agreement Provisions 274
Modifying the Sample Agreement for Your Needs 279
Warranties, Indemnification, and Proprietary Rights Provisions 283
Promises, Promises ... Warranties, Representations, and Covenants 284
Indemnity: The "Hold Harmless" Provision 287
Licensee Warranties and Indemnity 293
Proprietary Rights 295
Commercialization and Exploitation 299
Samples and Quality Control 299
Insurance 300
Termination and Posttermination 303
Termination and Posttermination 304
Termination Based Upon a Fixed Term 305
Termination at Will 306
Termination Based on Contract Problems 306
Termination and Bankruptcy 308
Posttermination: What Happens Afterwards? 309
Survival of the Fittest 311
Boilerplate and Standard Provisions 313
Paying the Lawyer's Bills 315
Dispute Resolution 317
Governing Law 319
Jurisdiction 320
Waiver 321
Severability 322
Entire Understanding 322
Attachments and Exhibits 323
Notices 323
No Joint Venture 324
Assignments 324
Force Majeure 326
Headings 326
Establishing Escrow Accounts 327
Service Provisions 333
Service Provisions Versus Separate Service Agreements 334
Training the Licensee's Personnel 336
Installation of Equipment 337
Technical Support for the Licensee or for End Users 338
Improving, Modifying, and Delivering the Invention 339
Handling the Licensee's Agreement 347
Dealing With Suggested Changes 348
Evaluating an Agreement Presented to You 350
Evaluating the Provisions and Suggesting Changes 351
After You Sign the Agreement 363
Create Your Contract Calendar 365
Dealing With Royalty Statements 367
Resolving Licensing Disputes 370
Avoiding Patent Misuse and Illegal Agreements 372
The Taxman Cometh 375
Quality Control 377
Help Beyond This Book 379
Licensing and Intellectual Property Resources 380
Working With an Attorney 385
How to Use the CD-ROM 391
Installing the Form Files Onto Your Computer 392
Using the Word Processing Files to Create Documents 393
Listening to the Audio Files 395
Listening to Audio Files You've Installed on Your Computer 395
List of Forms Included on the CD-ROM 396
Index 397
Subjects