Patent Licensing on a new Product

[Monkeyron]

What is the name of your state (only U.S. law)? CA & NV

I have Stock in a Company that owns a Patented Process. As an Investor I have been told by the Owner & CEO of the Corporation that owns Patented process that I have the Right to a License to use the Process in my own design. I have yet to get that in Writing. The Attorney that is drafting the License agreements as not finished them yet.

I have a New Start up Corporation Business plan that will use this new Process on our own design. I have asked for Exclusivity to this License in the USA for the period of 2-3 years in the field I am Planning to Manufacture/Market/ Distribute the product to as to allow the new Corporation to be successful and give the Potential Investors Confidence in our success.

I was told that they can not give exclusivity to me due to "Restraint of Trade" Laws?
Is this actually correct that anyone that ask for the License must be Granted one if the License fee can be paid?
Thanks,
M~R

 

[divgradcurl]

I was told that they can not give exclusivity to me due to "Restraint of Trade" Laws?
Is this actually correct that anyone that ask for the License must be Granted one if the License fee can be paid?
Thanks,
M~R

If it is a U.S. patent, then no, that is not correct from a patent law perspective -- there is no compulsory licensing scheme for U.S. patents.

There are three possibilities that come to mind immediately. First, you misunderstood what they were telling you in some way. Second, they don't want to grant you an exclusive license, but don't want to really argue about either. Third, the patented invention was based on research funded by the government such that the government owns rights to the patent, products made using the invention will be made for the government under a federal contract, and the company wants to avoid lawsuits (Contractors for the government essentially have a right to a compulsory license when a patent's rights are also owned by the government, such license is usually hammered out in the courts).

My bet, based on what you have written, is 2.

 

[Monkeyron]

Patent Licensing Exclusivity

If it is a U.S. patent, then no, that is not correct from a patent law perspective -- there is no compulsory licensing scheme for U.S. patents.

There are three possibilities that come to mind immediately. First, you misunderstood what they were telling you in some way. Second, they don't want to grant you an exclusive license, but don't want to really argue about either. Third, the patented invention was based on research funded by the government such that the government owns rights to the patent, products made using the invention will be made for the government under a federal contract, and the company wants to avoid lawsuits (Contractors for the government essentially have a right to a compulsory license when a patent's rights are also owned by the government, such license is usually hammered out in the courts).

My bet, based on what you have written, is 2.

Thanks for the help here. I truly need all I can get on this.
I have also submitted this to the Nevada Attorney Generals office for clarification as well.
Our Licensing for Manufactures to use Our Patented Technology will be starting in 3-5 weeks from now. The Patent is based off of an old expired patent and is nothing to do with the government.
The Director/CEO/Owner of the Patent is allowing any and all Manufactures to acquire a license when meeting basic qualifications. Money in as fast as possible. It is not anything involved with the US Government. However the DOD would confiscate it if they could.
So anyone with Money can apply and buy a License to use this technology.
Hence the reason I requested an Exclusivity Clause to Aid in the Success of our Corporate Start up and to promote Investor confidence.

So any help will be so helpful.
Thanks,
M~R

 

[cyjeff]

Since I already answered this on another board (including the relevant SCOTUS case), all I will say her is that I also pick door #2.

The CEO of the company does not want to grant a 3 year exclusivity contract to a start up that may or may not succeed.

 

[Monkeyron]

Exclusivity Denide and so much more

Since I already answered this on another board (including the relevant SCOTUS case), all I will say her is that I also pick door #2.

The CEO of the company does not want to grant a 3 year exclusivity contract to a start up that may or may not succeed.

Well now it's been a year since I became a stockholder and the CEO has still denied any exclusivity.
He also has refused to provide me a Hard Copy of my promised License.
He is now threatening me to have me removed as an "Undesirable" all due to my requesting copies of my promised License.
I could also add more but will start a new thread labeled "Getting Booted out as an "Undesirable Stockholder"

Thanks,
R~~

 

[Monkeyron]

Update

What is the name of your state (only U.S. law)? CA & NV

I have Stock in a Company that owns a Patented Process. As an Investor I have been told by the Owner & CEO of the Corporation that owns Patented process that I have the Right to a License to use the Process in my own design. I have yet to get that in Writing. The Attorney that is drafting the License agreements as not finished them yet.

I have a New Start up Corporation Business plan that will use this new Process on our own design. I have asked for Exclusivity to this License in the USA for the period of 2-3 years in the field I am Planning to Manufacture/Market/ Distribute the product to as to allow the new Corporation to be successful and give the Potential Investors Confidence in our success.

I was told that they can not give exclusivity to me due to "Restraint of Trade" Laws?
Is this actually correct that anyone that ask for the License must be Granted one if the License fee can be paid?
Thanks,
M~R

Today the Patent Application has had 18 of it's 20 claims rejected due to prior art.
The Licenses are being sold by the Inventor all over the world even though the Patent is still as an application.
He has said he will just renew the old expired patent that has expired 8 years ago named as prior Art.
Can this old patent be extended?
M~R