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I invented a tool, patented it, and sold it years. A large…

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I invented a tool, patented...
I invented a tool, patented it, and sold it for 7 years. A large tool company is buying the patent from me. They will pay $ at signing and $ each year for five years. I will have them sign a Security Agreement and a Promissory Note with the patent as collateral. They have already mentioned improvements they want to make to the tool. If they are successful getting an Improvement Patent will it render the original patent worthless, allowing them to sell the tool on "their" Improvement Patent and making the original patent of little or no value to them thus giving them a way out of paying the yearly installments and allowing me to repossess the original patent?
Submitted: 2 years ago.Category: Intellectual Property Law
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1/16/2016
IP Lawyer: Robert McEwen, Esq., Lawyer replied 2 years ago
Robert McEwen, Esq.
Category: Intellectual Property Law
Satisfied Customers: 18,139
Experience: Licensed Texas General Practice Attorney
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Thank you for using JustAnswer.

That depends upon how the contract is specified. So long as there's no "out" that allows them to stop paying, they have to pay, even if they no longer use the patent.

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IP Lawyer: Robert McEwen, Esq., Lawyer replied 2 years ago

Now since they're buying the patent from you, rather than a license, I don't see that they could "get out of" the payments by an improvement patent. It would have to be explicit in the contract, and I doubt that this would apply in a sale.

Hope that clears things up a bit. If you have any other questions, please let me know. If not, and you have not yet, please rate my answer AND press the "submit" button, if applicable. Please note that I don't get any credit for the time and effort that I spent on this answer unless and until you rate it positively (3 or more stars). Thank you, ***** ***** luck to you!

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Customer reply replied 2 years ago
Honestly this answer seems a little short with an "I don't see" and "I doubt" in it. Past answers have fleshed the subject matter out a little more with sure answers
1. Does an Improvement Patent supersede and render useless the original patent?
2. Could they sell the tool on the Improvement Patent if they lost the original patent or would an improvement patent be tied to the original?
3. Could they legally just stop paying and invite me to take the original patent back?
IP Lawyer: Robert McEwen, Esq., Lawyer replied 2 years ago

It was a "yes" / "no" question after all.

1. Does an Improvement Patent supersede and render useless the original patent? - No. If an inventor obtains a patent on improvements to an existing invention which is still under patent, they can only legally use the improved invention if the patent holder of the original invention gives permission, which they may refuse. "A patent is not the grant of a right to make or use or sell. It does not, directly or indirectly, imply any such right. It grants only the right to exclude others. The supposition that a right to make is created by the patent grant is obviously inconsistent with the established distinctions between generic and specific patents, and with the well-known fact that a very considerable portion of the patents granted are in a field covered by a former relatively generic or basic patent, are tributary to such earlier patent, and cannot be practiced unless by license thereunder." – Herman v. Youngstown Car Mfg. Co., 191 F. 579, 584–85, 112 CCA 185 (6th Cir. 1911)

2. Could they sell the tool on the Improvement Patent if they lost the original patent or would an improvement patent be tied to the original? - No. See above.

3. Could they legally just stop paying and invite me to take the original patent back? - Not legally, in that you could sue if they didn't pay according to the contract.

Hope that clears things up a bit. If you have any other questions, please let me know. If not, and you have not yet, please rate my answer AND press the "submit" button, if applicable. Please note that I don't get any credit for the time and effort that I spent on this answer unless and until you rate it positively (3 or more stars). Thank you, ***** ***** luck to you!

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IP Lawyer: Robert McEwen, Esq., Lawyer replied 2 years ago

If there's nothing else, please rate this answer. Please note that I don't get any credit for the time and effort that I spent on this answer unless and until you rate it a 3, 4, 5 (good or better) AND press the "submit" button, if applicable. If you feel that I have gone above and beyond in this answer (my average answer is about 10 minutes) bonuses are greatly appreciated. Thank you, ***** ***** luck to you!

▼ RATING REQUIRED! ▼ Please don't forget to Rate my service as OK Service or higher. It's only then I am credited.

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IP Lawyer: Robert McEwen, Esq., Lawyer replied 2 years ago

Are you there? Please note that I am still here, awaiting your response or rating... (please note that rating closes this question out, so if there's nothing else, please rate it so that I can assist other customers that are waiting for answers to their questions)

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IP Lawyer: Robert McEwen, Esq., Lawyer replied 2 years ago

Hello?

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IP Lawyer: Robert McEwen, Esq., Lawyer replied 2 years ago

Again, please note that I am waiting for your response or rating...

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IP Lawyer: Robert McEwen, Esq., Lawyer replied 2 years ago

Should I continue to await your response, or may I assist the other customers that are waiting?

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IP Lawyer: Robert McEwen, Esq., Lawyer replied 2 years ago

My apologies, but I must assist the other customers that are waiting. If there's nothing else, please rate this answer. Please note that I don't get any credit for the time (~45 minutes) and effort that I spent on this answer unless and until you rate it 3 or more stars (good or better) AND press the "submit" button, if applicable. If you feel that I have gone above and beyond in this answer (my average answer is about 10 minutes) bonuses are greatly appreciated. Thank you, ***** ***** luck to you!

RATING REQUIRED! ▼ Please don't forget to Rate my service positively. It's only after you rate that I am credited.

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Customer reply replied 2 years ago
Sorry...had to step away...Great job...will give you good score...thanks for the follow-up
IP Lawyer: Robert McEwen, Esq., Lawyer replied 2 years ago

You're welcome. If you would please indicate that rating so it would close out on my screen, I'd appreciate it. (It locks back onto the question when you respond). Thanks, ***** ***** good luck to you!

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IP Lawyer: Robert McEwen, Esq., Lawyer replied 2 years ago

Are you there? If there's nothing else, please rate this question so it will close out and allow me to assist other customers...

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IP Lawyer: Robert McEwen, Esq., Lawyer replied 2 years ago

I see that you have not responded in some time. If there's nothing else, please rate this answer. Please note that I don't get any credit for the time and effort that I spent on this answer unless and until you rate it a 3, 4, 5 (good or better). If you feel that I have gone above and beyond in this answer (my average answer is completed in about 10 minutes) bonuses are greatly appreciated. Thank you, ***** ***** luck to you!

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IP Lawyer: Robert McEwen, Esq., Lawyer replied 2 years ago

I see that you still have not responded or rated in some time. Please note that this question is still open until you rate it. I believe that I have answered your question, but if you have any other questions, please let me know.If not, and you have not yet, please rate my answer. Please note that I don't get any credit for my answer unless and until you rate it a 3, 4, 5 (good or better). Thank you, ***** ***** good luck to you!

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IP Lawyer: Robert McEwen, Esq., Lawyer replied 2 years ago

Did you have any other questions before you rate this answer?

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IP Lawyer: Robert McEwen, Esq., Lawyer replied 2 years ago

You mentioned that you would rate favorably, but it's been three days and you have yet to rate. I don't get any credit or pay for the time (~ 1 hour) that I have spent on your question unless and until you do rate.

Again, If you feel that I have gone above and beyond in this answer (my average answer is about 10 minutes) bonuses are greatly appreciated. Thank you, ***** ***** luck to you!

RATING REQUIRED! ▼ Please don't forget to Rate my service positively. It's only after you rate that I am credited.

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IP Lawyer: Robert McEwen, Esq., Lawyer replied 2 years ago

Should I continue to wait for your rating? Please let me know. This question remains open as an active request, and it prevents new ones from coming on. If you don't intend to rate, please let me know so I can see about closing it out.

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