Good Housekeeping
Congratulations on your license/sale transaction! All agreements are signed and initial licensing/sale fee has been disbursed. That's all great news, but here are some pointers for both parties after the deal is complete.
- Licensor: Verify the funds to be disbursed from our Escrow Service has reached your bank account. Depending on your bank jurisdiction and the size of the wired fund, wiring process may take more than a few days. Your bank may need additional time to verify the wire transfer completion.
- Both Parties: Although your completed transaction history including all files are neatly stored in Renovatio, please download ALL relevant files from Renovatio for your safe record keeping purposes.
- Licensor: You are responsible for subsequent invoicing to the licensee. Subsequent invoices and collection may involve royalty payments as well as licensing fees for subsequent term.
- Licensor: Ensure that patent renewal/maintenance fees are paid to the corresponding patent offices in time. You do not want to lapse your licensed patents as lapsed patents cannot be revived usually. Some patent offices allow you to make FULL PAYMENTS (for all remaining years), setup a patent office deposit account (so fees are taken out of the account automatically).
- Licensee: Communication with the licensor is very important as you are licensed to use the scope of the patent licensed/authorized by the licensor. If your use (including intended use) is not covered by the agreed license, contact your licensor immediately. Also, follow the agreed upon guidelines for assessing the royalty payments.
- Reassgnment of Patent Ownership: If a licensee agrees to buy out the patent asset from the licensor, the licensee may need to go through what we call Patent Reassignment with the corresponding patent office. Below is an example of this process for the US Patent & Trademark Office, but check with your patent attorney for more specific patent jurisdictions.
The patent reassignment process at the United States Patent and Trademark Office (USPTO) involves the transfer of ownership of a patent or patent application from one entity or individual to another. This transfer can occur due to various reasons such as a sale, assignment, inheritance, merger, or other legal actions. Here's a general overview of the patent reassignment process:
1. Agreement: The process typically starts with an agreement between the current owner (assignor) and the new owner (assignee) specifying the terms of the transfer. This agreement can be in the form of a contract, assignment document, merger agreement, or any other legal instrument that clearly outlines the details of the transfer.
2. Document Preparation: The assignor needs to prepare a document that accurately reflects the transfer of ownership. This document should contain specific details about the patent/application, parties involved, the nature of the transfer, and any financial considerations involved.
3. Recordation with the USPTO: The completed assignment document needs to be recorded with the USPTO to update the ownership records. This is important for maintaining accurate and up-to-date patent ownership information. The assignor or assignee can file the assignment with the USPTO.
4. Required Information: The assignment document must include certain required information, such as the patent/application number, the names and addresses of the parties involved, the effective date of the transfer, and a clear description of what is being transferred (e.g., patent rights, title, interest, etc.).
5. Filing Fees: Filing fees are usually associated with recording the assignment with the USPTO. The fees can vary depending on factors such as the type of patent, the number of patents being transferred, and the entity filing the assignment.
6. Submission Options: Assignment documents can be submitted to the USPTO through various means, including online filing systems, mail, fax, or hand delivery. Online submission is often preferred as it can streamline the process.
7. Review and Approval: The USPTO will review the assignment document for accuracy and completeness. If there are any deficiencies, the USPTO may request additional information or corrections. Once the document is accepted, the ownership records will be updated accordingly.
8. Notification: Once the assignment is recorded and processed, the USPTO will update the patent's official records to reflect the new owner. Both parties involved in the transfer will receive a notification confirming the successful assignment.
SME Connection
Some Licensees may see a referral page called SME Connection after completing the licensing transaction.
SME stands for "subject matter experts", and these individuals are seeking career or project opportunities in their technical subject fields, and their registered subjects (examples: semiconductor, robotics, aerospace engineering) match your licensed or acquired patent field.
We make the referral connections at cost to the SMEs or you (licensee), so you can reach out to them without any obligation should you choose to do so. Some of the SMEs may have their online profiles and resumes so you can review the information via SME Connection.
Note: iXP Connect does not warrant or guarantee the accuracy of SME information other than the initial user registration identify verification process. iXP Connect also does not warrant or guarantee the fit of SME's knowledge and experience level that may be required to perform your particular job position.