II. PATENT LICENSING – DOS AND DON'TS D
{"Image DocumentName": "II. PATENT LICENSING \u2013 DOS AND DON\u2019TS D", "Image ImageDescription": "II. PATENT LICENSING \u2013 DOS AND DON\u2019TS D. Assignment Rather than Exclusive License. Illustrative licensing experience in New Zealand. At one point I was to go to New Zealand, to chase down an elusive invention and an elusive inventor and prospective licensor and come back with a signed patent application ready for filing in the U.S. and Canada. And I was to bring back an executed exclusive license agreement, ready for execution by my management as well. Invention: a novel bovine parturition control method invented by a veterinarian of a dairy company employing dexamethasone TMA, a pharmaceutical of Ciba-Geigy. I came back with a finished patent application but also with an assignment with a provision for installment payments based on net sales. Why an assignment and not a license? I don\u2019t recall why I prepared an assignment. Perhaps it was intuition, because it was not until later that I learned of Tom Arnold\u2019s suggestion that. what is perceived by the businessman as an \u2018exclusive license,\u2019 is best negotiated into the form of a patent assignment with rights to reversions of title if royalties are not paid \u2026 because the exclusive license differs from assignments only in areas (like who sues infringer and has authority to compromise in settlement) which may be better borne by the party actively in the business than by the passive transferor of the technology. Indeed, the New Zealand dairy company was merely a passive transferor of the technology and my company was going to have to do considerable additional R&D work to obtain the requisite government approvals for commercialization.", "Image XResolution": "37", "Image YResolution": "37", "Image ResolutionUnit": "Pixels/Centimeter", "Image Software": "SlidePlayer", "Image YCbCrPositioning": "Centered"}