QUESTION
Can I license my own abandoned patent that I abandoned 25 years ago?
Asked on Aug 13th, 2021 on Intellectual Property Licensing - Utah
More details to this question:
I developed a prototype in 1995 and submitted through a patent att. my application. Eventually I ended up abandoning due to expense of att. and lack of interest that a local business marketing consultant determined. Which turned out to be an extremely shallow study, since it was for free. I have recently been approached by a marketing and manufacturing entity that wants to license it. I explained it was abandoned and they could easily produce without my consent and they said they don't do that and want to license it properly.
1 ANSWER
Patent Applications Filling and Prosecution Attorney serving Bellevue, WA
Partner at
Claiborne Patent Law Services
4 Awards
You clearly cannot license patented technology because you didn't obtain a patent. if there is any licensable intellectual property here, it is your know-how, expertise in making and using the invention that is not contained in your abandoned patent application. Also any improvements, enhancements or refinements you made to the invention (whether or not resuced to practice in a later prototype).
I recommend you engage an intellectual property law attorney to assist you in licensing discussions with the other party. The interested party clearly thinks there is something that is exclusive to you in this technology and it may take an intellectual property professional to discern what exactly that is and how to monetize it for you.
Answered on Aug 16th, 2021 at 9:47 AM