Can I License a Pending Patent Application?

Can I License a Pending Patent Application?

Inventors often inquire whether it is possible to license a pending patent application.  Some ask whether they should even file for a patent before licensing their inventions.  Not only is it possible to license a pending patent application, but it is actually a preferred way of obtaining value from you invention before the patent application issues, if it issues at all.  Depending on the status of your patent application with the USPTO, you may be able to avoid having to pay some or all of the potential costs associated with prosecuting the patent application. 

Prior to filing for a patent or initiating any licensing discussions, it is critical to determine whether your invention has any commercial value.  If it looks like there is a market for your invention, then it is worth considering whether or not your invention has patent potential.  Without at least filing a provisional patent application, you have very little protection around your invention and have very little to license, besides an idea.  Even though non-disclosure agreements provide some protection for your invention, this protection is limited to the party that signed the agreement with you.

As a starting point, provisional patent applications allow you to relatively quickly achieve “patent pending” status for your invention without having to pay the higher cost typically involved with utility patent applications.  In addition, filing provisional patent applications provide you with the ability to prevent yourself from doing something that may stop you from getting a patent in the future.  Under the current first to file laws, it will be very difficult to obtain a patent in the U.S. if you publicly disclose disclose/use your invention prior to filing a patent application.  As a result, having a priority date through a U.S. patent filing allows you to talk more openly about your invention to potential investors and licensees, to use it publicly, and even sell it.   

Feel free to contact a Traverse Legal patent attorney to discuss the details of your invention and business goals in order to develop patent strategy recommendations regarding the same.

 

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