One of my clients has developed an innovative recycling machine for a niche. He uses the machine himself as he has a recycling company. However, I advised him to capitalize on the invention by licencing the technology. This is because when talking to him he felt unease with manufacturing; he rather wants to stay with his main business. So, I proposed licencing to other equipment manufacturers. I want to manage this process on behalf of him, but I lack experience in licencing. Should my customer first patent the invention and then simply call manufacturers if there is some interest? What are the milestones and pitfalls in licencing?

So this is a great question and requires a relatively complex answer. And this is NOT legal advice.

The first answer is that No, in most cases do not patent the invention yet. Often a provisional patent will do just fine, much cheaper and faster to market.

Most inventor patents out of the gate are a waste of time/money.

Additionally, one license negotiation piece is that if you have the Prov Patent Application, (PPA) then you can have the licensee pay for the cost of YOUR patent.

I recently interviewed licensing expert Stephen Key, NYT Bestselling author of One Simple Idea about this topic.

You can listen if you'd like for free here:

Hope this is helpful

Answered 7 years ago

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