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Let's suppose that a micro entity, solitary inventor with a day job, has successfully filed a utility application for a patent to their invention using a law firm.

Now they are exploring options to sell and / or license their patent to large entities.

Does the same patent law firm that drafted their utility application provide services to advise them on the proper legal protocols to negotiate and deal with these large entities?

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    If there is already a law firm involved and he wants THAT firm to provide the services, he should ask them directly.
    – SJuan76
    Aug 28, 2022 at 20:28

3 Answers 3

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Do patent law firms also have services to help you license / sell your patent to large entities?

Many licensing deals are negotiated and drafted by attorneys, but some are also negotiated by non-lawyers and just written up by attorneys. Licensing deals are also commonly negotiated by top executives of start up companies pitching their patents, or by designated senior executives in large companies who routinely seek to license patents held by others.

There is also a niche in the market for firms that buy patents at bargain basement prices not with an intent to use them, but with an intent to sue other firms that actually utilize technologies arguably covered by the patent (disparagingly called "patent trolls").

Often, the people who prosecuted the patent with the patent office are not the same individuals as the ones who handle licensing negotiations, but sometimes they are in the same law firm or are in two firms that regularly refer business to each other.

There is no single consistent business model that is used across the board with respect to this vertical integration (or lack thereof) of the patenting and licensing process work.

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Does the same patent law firm that drafted their utility application provide services to advise them on the proper legal protocols to negotiate and deal with these large entities?

This depends on each law firm.

The assistance a law firm could provide in that regard mostly pertains to issues of contract law. The law firm could advise the client on how to avoid inadvertently entering, during negotiations, a contract (such as granting a license) the client would rather not enter. That sort of assistance is not specific to patent law, though.

The lawyer's expertise in patent law would be more useful when drafting the terms of the license or contract.

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There are professional patent brokers, one I know is a patent attorney but that is not a requirement. Often it is families of patents that are bought and sold.

A strategy for assignment and licensing is more a patent lawyer job - beating the bushes to find and qualify licensing prospects is not so much in the center of what law firms do.

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  • Can you confirm this statement A strategy for assignment and licensing is more a patent lawyer job? Aug 29, 2022 at 23:42
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    Yes, more than finding licensees. For example you might license many companies to a saw blade technology but license individual patents on innovative saws using the blade technology exclusively to separate companies. Or license “exclusively” to many companies with non-overlapping field of use scopes. Some of the licensing strategies need to be reflected in patenting actions in advance. Aug 29, 2022 at 23:52

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