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Tables of Contents for License Your Invention
Chapter/Section Title
Page #
Page Count
I How to Use This Book
Gearing Up to License Your Invention
Licenses
3
3
Assignments
6
1
The Licensing Process
6
2
Avoiding Conflicts Among Multiple Agreements
8
4
Challenges to Your Ownership
12
1
Disclosing Information About Your Invention
13
1
Keeping Your Records
13
1
No False Hopes! Reviewing Your Invention's Commercial Potential
14
Intellectual Property Protection
General Rules for Legal Protection of Inventions
3
1
Utility Patents
4
7
Trade Secrets
11
4
Trademarks
15
1
Design Patents
16
1
Copyright Law
17
1
Sorting Out Nonfunctional Features: Design Patents, Product Configurations & Copyright
18
Ownership Issues for Inventor Employees
What Type of Intellectual Property Is Involved?
2
1
Employer/Employee: Patent and Trade Secret Ownership
2
4
Inventions Covered by Copyright
6
1
Special Employment Situations
7
2
Working Out Ownership Issues With Your Employer
9
Joint Ownership of Your Invention
Joint Ownership
2
6
How Payments, Loans or Investments Can Create Joint Ownership
8
1
Transferring Ownership of Your Invention to Your Business
9
Licensing Agents and Representatives
Agents
2
2
Completing the Agent Agreement
4
4
Attorneys as Agents
8
2
Invention Marketing Scams
10
Soliciting Potential Licensees
Before You Begin Your Search
3
1
How to Find Potential Licensees
3
3
How to Overcome a Licensee's Bias Against Submissions
6
1
What's the Best Way to Solicit a Potential Licensee?
7
3
Product Presentations
10
Protecting Confidential Information
Confidential Information and Nondisclosure Agreements
2
7
Proceeding Without an Agreement
9
1
Waiver Agreements
10
1
When You Have Sufficient Bargaining Power
11
2
Disclosing to Employees and Contractors
13
1
Disclosing to an Attorney
13
The Key Elements of Your Agreement
From Handshake to License
2
1
Identifying the Parties
3
1
Describing Your Invention and the Licensed Products
4
3
Specifying Which Rights Are Granted
7
3
Defining the Territory
10
2
Setting the Length (Term) of the Agreement
12
Money: It Matters
Some Basic Royalty Definitions
3
1
Ways to Get Paid
4
3
The Mysteries of Net Sales and Deductions
7
2
How Much Do You Get?
9
1
Royalty Provisions
9
Negotiating Your Agreement
What, Me Negotiate?
2
1
Documenting the Important Contract Elements
3
3
Letter of Intent
6
2
Option Agreements
8
5
What If the Licensee Wants to Proceed Without a Written License Agreement?
13
Sample Agreement
License Agreement
3
23
Optional License Agreement Provisions
26
4
Modifying the Sample Agreement for Your Needs
30
Warranties, Indemnification and Proprietary Rights Provisions
Promises, Promises ... Warranties, Representations and Covenants
2
2
Indemnity---The ``Hold Harmless'' Provision
4
5
Licensee Warranties and Indemnity
9
1
Proprietary Rights
10
2
Commercialization and Exploitation
12
1
Samples and Quality Control
12
1
Insurance
13
Termination and Post-Termination
Termination and Post-Termination
2
1
Termination Based Upon a Fixed Term
2
1
Termination at Will
3
1
Termination Based on Contract Problems
3
2
Termination and Bankruptcy
5
1
Post-Termination: What Happens Afterwards?
5
1
Survival of the Fittest
6
Boilerplate and Standard Provisions
Paying the Lawyer's Bills
3
1
Dispute Resolution
4
2
Governing Law
6
1
Jurisdiction
6
1
Waiver
7
1
Invalidity
8
1
Entire Understanding
8
1
Attachments and Exhibits
8
1
Notices
9
1
No Joint Venture
9
1
Assignments
9
1
Force Majeure
10
1
Headings
10
1
Establishing Escrow Accounts
11
Service Provisions
Service Provisions vs. Separate Service Agreements
2
1
Training the Licensee's Personnel
3
1
Installation of Equipment
4
1
Technical Support for the Licensee or for End Users
4
1
Improving, Modifying and Delivering the Invention
5
Handling the Licensee's Agreement
Dealing With Suggested Changes
2
1
Evaluating an Agreement Presented to You
3
1
Evaluating the Provisions and Suggesting Changes
4
After You've Signed the Agreement
Create Your Contract Calendar
2
2
Dealing With Royalty Statements
4
2
Resolving Licensing Disputes
6
1
Avoiding Patent Misuse and Illegal Agreements
7
2
The Taxman Cometh
9
1
Quality Control
10
Help Beyond This Book
Licensing and Intellectual Property Resources
2
6
Working With an Attorney
8
Appendices
A How to Use the CD-ROM
B Forms
Agreement Worksheet
Letter Confirming Employee's Ownership of Copyright
Joint Ownership Agreement
Assignment of Rights: Patent
Assignment of Rights: Patent Application
Assignment of Rights: No Patent Issued or Application Filed
Agent Letter Agreement
One-Way Nondisclosure Agreement
Mutual Nondisclosure Agreement
Contract Worksheet
Option Agreement
License Agreement
Escrow Agreement
Checklist for Reviewing a License Agreement
License Dates Chart
Index