Why License a Pending Patent Application?

The time period from filing a patent application to receiving a patent can last many years.  In technologies such as software, biotechnology and communications, USPTO backlog often results in a three year (or longer) delay for an application is even reviewed.  However, inventors often find — or would like to find — others who are interested in licensing a technology before the patent issues.

Are there opportunities for licensing revenue for a pending patent application?  Sure, if the circumstances are right.  University technology transfer offices license pending patent applications all the time, and they even require the licensee to pay for future patent prosecution costs.  The key is to convince a licensee that it has something to gain by paying a royalty before the patent issues.  Some situations in which a royalty may be easier to get include:

  • where the patent application has not yet published, and the licensee is also paying a royalty for the ability to obtain confidential information;
  • where the patent applicant has useful know-how that is not included in the patent application, the licensee may also pay a royalty to gain access to that know-how; and

  • where the applicant is willing to offer the licensee a reduced long-term royalty, some level of exclusivity, or another benefit in exchange for royalties while the application is still pending.

For example, if a licensee also desires to be trained in a process that is related to patent-pending technology, the applicant could train the licensee in the method, bind the trainee to a confidentiality obligation for trade secret aspects of the method, and establish that the trainee must pay a royalty any time that the trainee uses the technology for commercial gain.

9 responses to “Why License a Pending Patent Application?

  1. I have a Patent Pending invention already manufactured, recognized and is selling on a small but consistent level. I would like to license this invention that has all evidence of having merit.
    I find it extremely difficult to be able to proceed past a certain stage without the expertise or funds to delegate what it takes to stay in the position to offer the requirements investors need.
    I have extensive research, including a 200 pg Assessment researched by a 3rd party Company, sales and respected support validations. After putting $250,000.00 of my own investment into this business, I am primed for a selling, IPO, licensing, or possibly a CEO to step in and take over what they are qualified to do.
    Any suggestions for obtaining serious access to these sources, not more Invention Companies that I’ve been through and am past that stage???

  2. I have a patent pending on a potty training product very simple it is being infringed upon and sells are outragous if someone would be able to help me than please contact me mhicks05@nc.rr.com

    • If your application has not yet issued,you do not have a patent that is being infringed. You don’t have any rights until the patent issues really.

    • yes i understand that there are know patent infringment issues until my patent issues and they would have to inicrouch in our art group but i think like they say build a better mouse trap and you will iliminate the competition so we are lokking for someone willing to license for a percentage look at our first office action and help prousucute r&d and take this prouduct to the market ours is avance tech ptent pend

  3. I have a pending patent in europe. if i would like to license the pending patent within europe whether i have to make a communication with EPO

    regards
    thomas

  4. Yes! i have a provisional patent that i would like to license out to the right company. Could you offer information on websites to advertise on? Thanks

  5. Hi my name is Melissa I have a “Patent Pending” on Talking and Texting while Driving I have a company New Product Consulting helping me market it. We are looking for any body that would be interested in Licencing this ideal to contact us.
    Brian Hardison
    Managing Partner
    New Product Consulting
    main ph: 888-680-4869
    cell ph: 480-322-4766
    fax num: 888-680-4869
    For more information on New Product Consulting please visit us at http://newproductconsulting.me

  6. Hi I have sent in for a patent pending application for my idea and they have cashed my check three weeks ago and I’ve called them and they say I’m being processed I’m tired of waiting and I’m wondering if there’s anything u can do because I wanna submit my idea to a company but can’t without a patent number . I don’t no how long it will take but I don’t wanna wait years for number

  7. Hi Zachary. If you are working with a patent attorney, they can provide them with information and timing. On the other hand, if you filed your application yourself, it’s important to know that a patent application does not automatically yield a patent. The USPTO will review the application and only issue a patent if it determines that the invention is patent-eligible, new and non-obvious. The process often does take several years. For an overview of the process, see: https://ipspotlight.com/2011/03/29/an-overview-of-the-patent-application-process-in-the-united-states/

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