Profit From Your Idea How to Make Smart Licensing Deals 10th Edition by Richard Stim ISBN 9781413327922 1413327915

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ISBN 10: 1413327915
ISBN 13: 9781413327922
Author: Richard Stim

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, it explains:

• the laws concerning trade secrets and their limitations
• the risks of proceeding without a nondisclosure agreement
• the dangers posed by waiver agreements
• what to do if a company won’t sign an agreement
• which modifications help the inventor and which modifications can hurt
• the perils of disclosing to employees, contractors and attorneys
• the meaning of each of the legalese “boilerplate” provisions in nondisclosure 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.

Profit From Your Idea How to Make Smart Licensing Deals 10th Edition Table of contents:

Chapter 1 – Gearing Up to License Your Invention

Licenses

Assignments

The Licensing Process

Avoiding Conflicts Among Multiple Agreements

Challenges to Your Ownership

Transferring Ownership of Your Invention to Your Business

Disclosing Information About Your Invention

Keeping Your Records

No False Hopes! Reviewing Your Invention’s Commercial Potential

Chapter 2 – Intellectual Property Protection

General Rules for Legal Protection of Inventions

Utility Patents

Trade Secrets

Trademarks

Design Patents

Copyright Law

Sorting Out Nonfunctional Features: Design Patents, Product Configurations, and Copyright

Chapter 3 – Ownership Issues for Inventor Employees

What Type of Intellectual Property Is Involved?

Employer/Employee: Patent and Trade Secret Ownership

Inventions Covered by Copyright

Special Employment Situations

Working Out Ownership Issues With Your Employer

Chapter 4 – Invention Financing and Joint Ownership

How Much Money Do You Need to License Your Idea?

Sources of Funding

Joint Ownership

How Payments, Loans, or Investments Can Create Joint Ownership

The Joint Ownership Agreement

Chapter 5 – Licensing Agents and Representatives

Agents

Completing the Agent Agreement

Attorneys as Agents

Invention Marketing Scams

Chapter 6 – Soliciting Potential Licensees

Before You Begin Your Search

How to Find Potential Licensees

How to Overcome a Licensee’s Bias Against Submissions

What’s the Best Way to Solicit a Potential Licensee?

Product Presentations

Should You Solicit Foreign Licensees?

Chapter 7 – Protecting Confidential Information

Confidential information and Nondisclosure Agreements

Proceeding Without an Agreement

Waiver Agreements

When You Have Sufficient Bargaining Power

Disclosing to Employees and Contractors

Chapter 8 – The Key Elements of Your Agreement

From Handshake to License

Identifying the Parties

Describing Your Invention and the Licensed Products

Specifying Which Rights Are Granted

Defining the Territory

Setting the Length (Term) of the Agreement

Chapter 9 – Money: It Matters

Some Basic Royalty Definitions

Ways to Get Paid

The Mysteries of Net Sales and Deductions

How Much Do You Get?

Royalty Provisions

Chapter 10 – Negotiating Your Agreement

What, Me Negotiate?

Documenting the Important Contract Elements

Letter of Intent

Option Agreements

What If the Licensee Wants to Proceed Without a Written License Agreement?

Chapter 11 – Sample Agreement

License Agreement

Optional License Agreement Provisions

Modifying the Sample Agreement for Your Needs

Chapter 12 – Warranties, Indemnification, and Proprietary Rights Provisions

Promises, Promises … Warranties, Representations, and Covenants

Indemnity: The “Hold Harmless” Provision

Licensee Warranties and Indemnity

Proprietary Rights

Commercialization and Exploitation

Samples and Quality Control

Insurance

Chapter 13 – Termination and Posttermination

Termination and Posttermination

Termination Based Upon a Fixed Term

Termination at Will

Termination Based on Contract Problems

Termination and Bankruptcy

Posttermination: What Happens Afterwards?

Survival of the Fittest

Chapter 14 – Boilerplate and Standard Provisions

Paying the Lawyer’s Bills

Dispute Resolution

Governing Law

Jurisdiction

Waiver

Severability

Entire Understanding

Attachments and Exhibits

Notices

No Joint Venture

Assignments

Force Majeure

Headings

Establishing Escrow Accounts

Chapter 15 – Service Provisions

Service Provisions Versus Separate Service Agreements

Training the Licensee’s Personnel

Installation of Equipment

Technical Support for the Licensee or for End Users

Improving, Modifying, and Delivering the Invention

Chapter 16 – Handling the Licensee’s Agreement

Dealing With Suggested Changes

Evaluating an Agreement Presented to You

Evaluating the Provisions and Suggesting Changes

Chapter 17 – After You Sign the Agreement

Create Your Contract Calendar

Dealing With Royalty Statements

Resolving Licensing Disputes

Avoiding Patent Misuse and Illegal Agreements

The Taxman Cometh

Quality Control

Chapter 18 – Help Beyond This Book

Licensing and Intellectual Property Resources

Working With an Attorney

A: Appendix: How to Use the CD-ROM

Installing the Files Onto Your Computer

Using the Word Processing Files to Create Documents

Listening to the Audio Files

Files on the CD-ROM

I: Index

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Tags: Richard Stim, Profit, Idea, Smart Licensing Deals