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Suppose you owned a firm that produced glassware. The processes you use are
generally known in the industry, but you have a few tweaks that enable you
to produce a unique looking product. You have no patents on the processes.
Then, suppose you are approached by an overseas firm that wants to
manufacture your product under a licensing arrangement.
Can you legally license the technology to them? My thoughts are that as long
as you don't claim the process is patented or otherwise protected, it's
perfectly legal.
Thoughts?
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On Tue, 19 Jul 2005 15:02:47 -0400, "Ranieri" <uh-uh@giganews.com>
wrote:
Suppose you owned a firm that produced glassware. The processes you use are
generally known in the industry, but you have a few tweaks...
Can you legally license the technology to them?
Yes. You've described a straightforward case of licensing a trade
secret, which is a totally legitimate type of intellectual property,
and so far as I know, is given protection in every country with a
well-developed legal system.
There are well-known gotchas in trade secret law, and well-known ways
of avoiding them. Do a little research on trade secret protection.
This looks like as good a place to start as any:
http://cobrands.business.findlaw.com/intellectual_property/source/legal_briefs/b_trad_1.html
Licensing to a foreign company complicates things, because you have to
deal with at least two sets of laws and customs, only one of which is
familiar. If this is a real situation for you, you need to consult an
attorney who has experience with international intellectual property
law, and has a working arrangement with a similar attorney in the
licensee's country.
My email address is LLM041103 at earthlink dot net.
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Ranieri wrote:
Suppose you owned a firm that produced glassware. The processes you use are
generally known in the industry, but you have a few tweaks that enable you
to produce a unique looking product. You have no patents on the processes.
Then, suppose you are approached by an overseas firm that wants to
manufacture your product under a licensing arrangement.
Can you legally license the technology to them? My thoughts are that as long
as you don't claim the process is patented or otherwise protected, it's
perfectly legal.
It's legal. What you have is a proprietary business practice. Depending
on the country, you may have a really fine old time collecting your
royalty payments if the company decides to just go off on its own using
your process, but that's your problem for tomorrow.
-paul
ianal
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Ranieri wrote:
Suppose you owned a firm that produced glassware. The processes you use are
generally known in the industry, but you have a few tweaks that enable you
to produce a unique looking product. You have no patents on the processes.
Then, suppose you are approached by an overseas firm that wants to
manufacture your product under a licensing arrangement.
Can you legally license the technology to them? My thoughts are that as long
as you don't claim the process is patented or otherwise protected, it's
perfectly legal.
Why not? Although you may be jumping the gun to admit you have
nothing protectable; if that's the case, they can just start cranking
out copies of your product regardless of whether they are licensed or
not, either now or in the future, and you would have no recourse. You
can bet that the other company has had _their_ lawyer look at what
you've got and determine that they need a license, or else they would
have gone ahead and copied it already. So why aren't you having YOUR
lawyer tell you why what you have is worth protecting, before you talk
any further with this potential licensee? IMO that would be penny wise
and pound foolish. Run this by your company's lawyer first. If your
company doesn't have a lawyer familiar with the business matters that
are likely to come up in your industry, it should. It's not as
expensive as you may think to just make a phone call once in a while to
get an actual legal opinion from someone that you have brought up to
speed to be familiar with your business.
The most likely things I can see from your brief hypothetical that you
might be able to protect, and want to protect, are (a) trade secrets in
your manufacturing process (i.e. those "tweaks" that give your product
its unique look) assuming it is still a secret exactly which "tweaks"
you use and in what order and quantity; or (b) trademark/trade dress
issues, if what in fact they want to license is your "brand" identity
and that identity is closely linked to the unique way your products
look (i.e. no one else in the industry has it).
But anything further would be pure speculation because you provide no
meaningful detail, and my guess is we aren't really talking about
glass, but something else -- software maybe?
Before you do anything that ruins your entire future business, consult
a local lawyer versed in business law issues and discuss your real
facts. It will be a visit well spent. Good luck,
-This posting is for discussion purposes, not professional advice.
Anything you post on this Newsgroup is public information.
I am not your lawyer, and you are not my client in any specific legal
matter.
For confidential professional advice, consult your own lawyer in a
private communication.
Mike Jacobs
LAW OFFICE OF W. MICHAEL JACOBS
10440 Little Patuxent Pkwy #300
Columbia, MD 21044
(tel) 410-740-5685 (fax) 410-740-4300
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