Help - Leasing a Patent for a New Folding Knife Lock Mechanism

[BladesIIB]

Anyone have any experience trying to lease a patent for a knife?

I have what I believe is a very marketable new lock mechanism for a folding knife. I am working through the patent process now and should have it submitted in a few weeks. The next step, at least in my mind, is to contact a major knife company and try to lease the patent. I am not planning to produce enough on my own to make it worth while. Would love any insight on how you go about making the connections with a knife company to begin these types of negotiations.

Thanks!

 

[gr8legs]

I am presuming what you mean is that you are applying for a provisional patent, a relatively inexpensive process that grants 'patent pending' status immediately upon mailing to the USPTO.

If that is not the case, STOP IMMEDIATELY before you spend any more money.

A provisional patent gives you a year to see if your idea is marketable.

There is an excellent resource (book or e-book) from Nolo Press (www.nolo.com) called 'Patent it Yourself' that helps you through the patent process and has a wealth of ideas for possibly profiting from your invention. Check with your local library or buy your own copy. Well worth the expense.

Stu
(1 patent issued, 1 currently pending)

 

[Superburban]

Are you planning on making some? if so, I would use those as samples, then you need to become a great salesman, or hire one. Selling a design/ patent, is not easy. You need to be able to show that your design is better then theirs, and easier to make, or worth the extra steps.

Not an easy sounding process. Big knife makers are not up to tooling for something different, so if your idea could be made on the equipment they have, then they might bite, but you do not have the inside information on what tools they have. The small to medium companies may be more cautious if the manufacturing process is different then theirs.

Then you have the issue on price, and how long. What conditions either side can break the deal. What is the minim that the companies needs to do.

Tools are a cut throat business. Sears was good at buying new innovative tools from a new company, then after a few years start making it under one of their names, basically telling the small go to go blow off.

Good luck I used to have a neighbor that worked in the patent officefor quite awhile, then started doing patent searches for individuals, and big corporations. Not an easy path to navigate.

 

[BladesIIB]

I am presuming what you mean is that you are applying for a provisional patent, a relatively inexpensive process that grants 'patent pending' status immediately upon mailing to the USPTO.

If that is not the case, STOP IMMEDIATELY before you spend any more money.

A provisional patent gives you a year to see if your idea is marketable.

There is an excellent resource (book or e-book) from Nolo Press (www.nolo.com) called 'Patent it Yourself' that helps you through the patent process and has a wealth of ideas for possibly profiting from your invention. Check with your local library or buy your own copy. Well worth the expense.

Stu
(1 patent issued, 1 currently pending)

Thank you for the insight. I will definitely pick up the book. I did explore the provisional option and then decided to go for it with the full blown application instead. I do realize the risk and potential for no return. Time was the final factor, I want to ensure if someone is interested then the patent will be published sooner rather than later. Congrats on having a patent and another in the works, great to hear from true experience.

 

[BladesIIB]

Are you planning on making some? if so, I would use those as samples, then you need to become a great salesman, or hire one. Selling a design/ patent, is not easy. You need to be able to show that your design is better then theirs, and easier to make, or worth the extra steps.

Not an easy sounding process. Big knife makers are not up to tooling for something different, so if your idea could be made on the equipment they have, then they might bite, but you do not have the inside information on what tools they have. The small to medium companies may be more cautious if the manufacturing process is different then theirs.

Then you have the issue on price, and how long. What conditions either side can break the deal. What is the minim that the companies needs to do.

Tools are a cut throat business. Sears was good at buying new innovative tools from a new company, then after a few years start making it under one of their names, basically telling the small go to go blow off.

Good luck I used to have a neighbor that worked in the patent officefor quite awhile, then started doing patent searches for individuals, and big corporations. Not an easy path to navigate.

Thank you for the reply. Yes, I have two samples complete to validate the idea actually works and give someone interested something they can touch and feel. I have several years of selling experience to lean on, and I already had some parts sourced and have an idea on manufacturing costs etc. Now I need to figure out how to make contact with the right people.

 

[rwm]

One thing to note well. Do not show your samples or disclose your design to anyone in the industry without having a signed non-disclosure agreement. Doing so will invalidate your ability to get the idea patented. If you do this wrong they will consider that the idea was made public and is therefore not patentable. This happened to me. You may have already created this problem? For example, did you share the design with the people from whom you had parts sourced? Was there an understanding that the design was confidential? Are they "in the industry?"
How the agreement is constructed is also important. I really feel like you need an expensive attorney to get through this process. You could apply for a provisional patent without an attorney but I think eventually you will need one.
Robert

 

[BladesIIB]

One thing to note well. Do not show your samples or disclose your design to anyone in the industry without having a signed non-disclosure agreement. Doing so will invalidate your ability to get the idea patented. If you do this wrong they will consider that the idea was made public and is therefore not patentable. This happened to me. You may have already created this problem?
How the agreement is constructed is also important. I really feel like you need an expensive attorney to get through this process. You could apply for a provisional patent without an attorney but I think eventually you will need one.
Robert

Robert, thank you. I am working with an attorney and have a NDA in place even with the places that made just 1 part and have not seen the full design. I have not even shared the design with family so it has not been disclosed publicly in any way. Sorry to hear about your experience, thank you for ensuring others don’t have the same thing happen.

 

[rwm]

That is great! Sounds like you are on top of this. My design was probably not going to make it big time anyway but you never know with medical devices. Best of luck and keep us posted!
Robert

 

[Papa Charlie]

I have two patents, my partner and I licensed our process from one of the patents to other companies to use. Some things to keep in mind in the agreement.

1) Ensure that the agreement includes a No Compete clause. This prevents them from using the logic in your design to develop their own, which might be different enough to get around your patent.
2) Make sure that you figure in the patent maintenance fees that you have to pay each year and patent attorney fees. They don't call the IP game the "Game of Kings" for nothing.
3) Do you plan to protect the technology outside or the US? If so, there are filing fees and maintenance fees for each country you file in. Many companies have teams that monitor US patents and will copy them for use outside of the US. Eventually they may find their way into the US. To protect your patent you will have to have attorney's defend you patent.
4) The knife industry is a tightly run ship. Given all the expenses associated with IP, you may want to consider selling the patent rights to the company and let them protect the patent.
5) Be sure to use a lawyer that is familiar with protecting IP in a licensing agreement. There are a lot of ways for you to get taken.
6) Lastly, don't forget you are looking at a 19 year window of protection under the US patent system. You have to get your money and get out before the end. All the while you have to maintain and defend your IP.

Don't mean to be negative here. But these costs mount up very fast. We were spending many thousands of dollars per year protecting our design in 19 countries.

 

[BladesIIB]

Papa Charlie, great information thank you. A lot to consider, glad to have so many people willing to share insight. The attorney I am working with is a IP attorney with experience. I don’t take your post as negative, I need to understand the reality. I don’t expect it to be easy.