How do I write a Licensing Agreement for my patented product to a large company?

Question

I have a Utility patent &TM product that I am licensing to an established company in the industry that this product is designed for. I would like to minimize attorney's fees by preparing most of it myself, and then have an attorney peruse it, ready to go, asap. I would LOVE to have access to a template of one I could use as a foundation for my needs. Thank you.

Answer 1

While having an attorney draft the agreement from start to finish would be good, doing much of the work yourself and having an attorney review it is also acceptable. There are a lot of attorneys that work with independent inventors and understand the need to keep costs down by offering review services rather than drafting services.

What you need to do is stop thinking in terms of a template for a license and start thinking in terms of clauses for a license. Attorneys cringe when they hear someone ask for a contract or license template. The reason for this is every situation is different. Certainly there are standard clauses that need to be there, but a license is just an agreement so it needs to memorialize what you and the other party have or will agree to moving forward. Having said that, when an attorney drafts a license most will start with clauses from other agreements and modify them to fit the situation. So what you want to do is how an attorney would begin the work, at least in the first instance. After standard clauses are picked then the modification begins to fit the situation.

The best place to start is at a law library. You might be surprised to learn that law libraries are all over the place. Many court houses have at least a modest library, and all law schools have extensive libraries. For what you need even a modestly stocked library might be sufficient, but I would call ahead to see if they have what you need. Law schools will definitely have what you need, but again, call ahead. Some law schools do not let members of the general public use the library.

What you are looking for is an encyclopedia of forms. West has an encyclopedia set called West's Legal Forms. In the Second Edition Volume 25 is the one that relates to patents. There are a number of sample licenses there. Years ago Lexis also had a form encyclopedia. If you find a library that has a good IP section there will be several smaller encyclopedias dedicated to patent licensing, such as Milgram on Licensing.

There are some decent books you can get from your local book store, but these books will not have the amount of information and samples that a form encyclopedia would have. Remember, you don't want to copy any single form, but rather go through the examples you can collect and pick clauses (or paragraphs) that seem to fit your needs.

Good luck!

Answer 2

Sounds like you are being "penny wise and pound foolish." If the Utility is going to pay money to you, you can afford an attorney.

I doubt that any attorney would put his name on something he did not do himself. Besides writing up the agreement, the Attorney will have to do some research, to make sure all relevant laws are adhered to.

If you have an attorney draw up the agreement, and if something goes wrong, you may have a malpractice claim against your own attorney.

You can be sure that the Utility company will use their own attorneys to approve/reject any agreement you come up with.