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If our idea gets licensed do we own any improvements made by the licensee?

sparkjockey's Avatargold

Hello fellow EN'rs...

I have a product currently going through EN's 8 step process and also through ASOTV.  I've got a few questions about licensing through Edison Nation as compared to licensing ideas on my own.  

1.) If my product does get licensed through EN, would I own any and all improvements made to my idea?  

2.) Is there a minimum performance clause in the EN agreement?  

3.) Do inventors have any input regarding contract terms?

Thanks for any information and insight you have:-)

Robert Pontius
Karen C Adams
Vee R___
Sarah Mann
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rpontius's Avatarg8_badge

Excellent questions John but I think you will need to wait for an "official" response on those...

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ring-go's Avatargold

Hey Duane,

I agree with Robert...good thoughts. Perhaps this link can help to clarify some of the general ideas in question.

https://www.edisonnation.com/faq/legal

Best to you!

Duane Bartlett
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rogerbrown's Avatargold

I would suggest if anyone has these types of questions to get the responses prior to entering into any system. Signing up without reading what you are signing gets many Inventors in situations  that cost them more than they expected.

Duane Bartlett
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magurn's Avataren_staff_badge

Hi Duane!

Please see answers to your questions below in bold:

1.) If my product does get licensed through EN, would I own any and all improvements made to my idea?

You are named as the inventor on the patent. If any new features are added to the product concept and included on the original patent, and if the contract is terminated, you would receive the patent rights back.

2.) Is there a minimum performance clause in the EN agreement?

Within our contract with a licensing partner, our licensing team negotiates mutually agreed upon annual minimums for production. If the company fails to produce and sell those minimums, EN has the right to pull the agreement back from the sponsor company to explore other licensing avenues for the product. This is language within our contract with the company.

3.) Do inventors have any input regarding contract terms?

All negotiations are handled on behalf of our innovators by our Licensing Team. There is no outside input, but we always look to secure the most lucrative and fair deal as we are in it 50% as well.


As Roger mentioned, before submitting, I always recommend to review all the content found on the Edison Nation Help Page, this includes our standard innovator agreement which can be found if you click on the "Legal" page.

Thank you!

Duane Bartlett
Karen C Adams
Robert Pontius
Sarah Mann
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rpontius's Avatarg8_badge

Am I correct that there is also a "minimum performance clause" in the sense that if, after 5 years, an inventor has received less than $100,000, then he/she can elect a "grantback" of their IP?

Duane Bartlett
Karen C Adams
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sparkjockey's Avatargold

"You are named as the inventor on the patent. If any new features are added to the product concept and included on the original patent, and if the contract is terminated, you would receive the patent rights back."


I understand most of that, thank you Michelle!  So this also applies to provisional patents correct?  

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rpontius's Avatarg8_badge

Duane: I defer to Michelle, but I believe in all cases EN obtains a *non-provisional* patent for products it licenses in partnership with the inventor.

Duane Bartlett
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joekur's Avatargold

Hi Duane, I will also defer to Michelle for the official response, though I'll just put out there that there is not truly a "provisional patent," rather there is a provisional patent *application* used to establish an early filing date.  It does not mature into a patent -- a true patent application must still be filed.

Duane Bartlett
Frank White
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magurn's Avataren_staff_badge

Hi Duane!

This applies to any IP filings during the time of the license. 

Robert, yes if after 5 years the product does not meet the minimums you can request it back.

Thanks!

Michael Heagerty
Duane Bartlett
Robert Pontius
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sparkjockey's Avatargold

Thanks very much for the inputs! Michelle, so youre saying that if my idea is improved upon by EN or the licensee but my existing PPA doesnt cover the improvement,  EN will file a new PPA that does cover the improvement?

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let-them-fly's Avatar

I defer to Michelle, but if I may, Duane.... 

If your idea is licensed, EN files a Non Provisional Application on the concept, which would be worded to encompass any improvements for the life of the contract; in addition, they will file new Non Provisional Applications on any new matter that evolves on it's own or from said improvements.

EN does not file PPA's on submissions.

They have interest in licensing deals for 20 years, so they will aggressively pursue every possible commercialization avenue that comes about during that time, which will be to your advantage the same as it is to theirs.

Hope this helps...

Sarah Mann
Duane Bartlett
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sparkjockey's Avatargold

Frank, that explains it perfectly....much appreciated!

Frank White
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gizmo's Avatar

@ Frank, EN absolutely does file PPA's on submissions and its a good business practice on their part I might add. 

EN does not file PPA's on submissions.


@Duane. 

1.) If my product does get licensed through EN, would I own any and all improvements made to my idea? 

ANSWER: Duane your question depends on who came up with the improvements and are they tied to "patent claims".  If you had nothing to do with the improvements and the USPTO allowed the added feature as a patent claim/claims then I see no way you could own the improvements unless the added improvements were assigned to you. 

Your question is actually pretty good and Im sure this discussion could get pretty deep .

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rogerbrown's Avatargold

Gizmo, your statement "EN absolutely does file PPA's on submissions" might add to the confusion because that question gets asked all the time for any and all submissions. You would be surprised how many Inventors think if they post a submission into a search that EN is filing a PPA on it, which they don't.

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let-them-fly's Avatar

Gizmo; Duane's question was: "If my product does get licensed through EN, would I own any and all improvements made to my idea?"............ then he asked: "so youre saying that if my idea is improved upon by EN or the licensee but my existing PPA doesnt cover the improvement, EN will file a new PPA that does cover the improvement?"

EN does NOT file a PPA on submissions that have a PPA already filed by the inventor (which is the case with Duane's), and they do not file a PPA on submissions that have not been taken up for licensing.

If the submission has been taken up for licensing, whether the submitter has filed a PPA or not, Duane will have his Royalty share from any and all improvements that are incurred to said invention during the 20 year contract with Edison Nation.

Don't take my word for it.... Eggies for example, did not look like the commercial versions in the original PPA... neither did the Bacon Bowl, or Mr. Steamy, or Party in the Tub, or Emory Cat, or Gyro Bowl, or the OxiClean Splot, and the list goes on and on! ALL of these products are improvements over the original concept, both in design and embodiment, AND their inventors will continue to receive their share of royalties regardless of how many future improvements take place, for the life of the contract.

Duane Bartlett
Joe Kurtenbach
Robert Pontius
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gizmo's Avatar

Roger,. I didnt say they filed PPA's on (ALL) ideas. And again YES EN has filed PPA's on some ideas.  

@frank sorry i missed where duane said he had a PPA. 

Gizmo, your statement "EN absolutely does file PPA's on submissions" might add to the confusion because that question gets asked all the time for any and all submissions. You would be surprised how many Inventors think if they post a submission into a search that EN is filing a PPA on it, which they don't.


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rogerbrown's Avatargold

Gizmo, that is my point. Look at how you worded it "EN absolutely does file PPA's on submissions" You didn't say ALL and you didn't say Only those that have gotten a licensing deal. The word submissions could be misunderstood to mean ANY submission.

Which is why I stated "You would be surprised how many Inventors think if they post a submission into a search that EN is filing a PPA on it, which they don't."

The same goes for Inventors that would ask if the Inventor already had a patent and the maintenance fee was coming due they wanted to know if they submitted their patent into a search would EN pay the maintenance fee on it for them? The answer would be not unless a licensing deal had been signed prior to the fee being due. Otherwise every Inventor with a maintenance fee coming due would just enter it into a search and expect EN to pay it.

Joe Kurtenbach
Sarah Mann
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magurn's Avataren_staff_badge

Hello to all!

A few points of clarification and Duane, a response to your question...

First, Edison Nation does not file PPAs or any type of patent application unless a deal is signed with a licensing partner for that concept. This is standard policy. We do not file any IP until assignment takes place which, per our innovator agreement, is when a deal is done.

Duane, if your idea is improved upon or the licensing partner has made modifications once a deal has been done and no IP is filed, the new modifications will be included within the initial PPA filing - any contributors will be included as inventors of the concept, along with you. If something new is added that was not initially contemplated within the design or a product evolves into a new version that is along the same line but not the same utility as the original idea, new IP will be filed and those responsible for the unique modifications will be named.

Thank you!

Duane Bartlett
Joe Kurtenbach
Frank White
Frank White
Sarah Mann
Robert Pontius
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sparkjockey's Avatargold

Ok I understand that EN doesnt file PPAs without a license being signed. Thanks!... so what you are saying here is if new modifications are made by the licensing partner, then EN will file a new PPA and the partner will be listed as another inventor on my PPA?  I was under the impression that all modifications belong to the inventor since the original idea is their creation.  OK, here's a "What if?" ..... What happens if the contract ends for some reason, would I retain 100% ownership of my product again?  Finally, please apply the question to the scenario where my invention was changed to include the licensing partner's new utility and a non provisional patent naming the partner(s) as the inventor was written.. would I lose my ownership?

Robert Pontius
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sparkjockey's Avatargold

Frank I hear what youre saying.  What matters the most is who's going to receive the royalties!... and 20 years is a long time.  Thats where the rubber meets the road... who gets to shout "Show me the money!"... the rest is a lot of worry about nothing?  Especially considering the good reputation that EN has.


Robert Pontius
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magurn's Avataren_staff_badge

Hi Duane!

If, for some reason the license agreement is terminated, all IP rights filed on your behalf are returned to you as per the terms of the innovator agreement.

Thanks!

Michelle

Robert Pontius
Duane Bartlett
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let-them-fly's Avatar

Duane,

If EN had a history of double-crossing Inventors after they get a contract, the company would no longer be in business and a bunch of inventors would be in prison for hanging the staff.

As goes the old Allstate jingle: "You're in good hands" with EN"

Sarah Mann
Robert Pontius
Duane Bartlett
Michelle Sartori
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sparkjockey's Avatargold

Good morning everyone! Thanks Michelle and Frank and  i have a much better understanding of the process now.  My questions regarding IP ownership are only to learn more about the EN/inventor relationship. I totally agree that EN's solid reputation is the reason for their success.  This is my 3rd idea submission with many more to come.  Im also working on redesigning a submission that made it only to G4 because of prior art concerns.  Im so glad to have found EN where for $20 I can get my ideas in front of people who can truly make things happen!

Frank White
Sarah Mann
Michelle Sartori
Robert Pontius
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magurn's Avataren_staff_badge

Glad we could help Duane! Best of luck!

Frank White
Duane Bartlett
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