WO2016037263A1

WO2016037263A1 - Method and system for transacting intellectual property

Info

Publication number: WO2016037263A1
Application number: PCT/CA2015/000487
Authority: WO
Inventors: Christian Robillard; Shirlee BIRON
Original assignee: 9437169 Canada Inc.
Priority date: 2014-09-11
Filing date: 2015-09-11
Publication date: 2016-03-17
Also published as: CA2960891A1

Abstract

A computing device implemented method for negotiating a transaction agreement between a first and a second parties, the method comprising executing on a processor the steps of providing to the first and second parties a set of clauses, prompting the first and second parties to select one or more clause from the set of clauses, in response to the selection of one or more clause by one of the first or second parties, providing for acceptance the selected one or more clause to the other of the first and second parties, verifying if the selected one or more clause is accepted within a first configurable time period and if the selected one or more clause is accepted within the first configurable time period then joining the one or more clause forming the transaction agreement, if not then ending the negotiation.

Description

METHOD AND SYSTEM FOR

TRANSACTING INTELLECTUAL PROPERTY

TECHNICAL FIELD

[0001] The present disclosure relates to a method and system for transacting intellectual property. More specifically, the present disclosure relates to a method and system for licensing or selling the rights to intellectual property such as patents, designs, copyrights and trademarks.

BACKGROUND

[0002] In the field of Intellectual Property transfer, such as negotiating the licensing or selling of intellectual property rights, it is known In the art that transactions often fail or are not successfully maintained for many reasons. One common reason is that the nature and the objectives of the parties involved are often diametrically opposed. The discussions between the two parties, licensor/seller and licensee/buyer, often become irrational and lead to a failure of the negotiation process or of the maintaining of a licensing agreement.

[0003] Often, the licensor/seller Is an Independent Inventor or a small business but may also be a large corporation. Often as well, the licensee/buyer is a large corporation but may also be an individual. Clearly the differences between the parties from one transaction to another can vary greatly,

[0004] Therefore, there is a need for a means allowing licensors/sellers of Intellectual property rights and interested licensors/buyers to license or acquire these intellectual property rights. SUMMARY

[0005] It is therefore a general object of the present disclosure to provide an IP rights transaction system that establishes and maintains communication between negotiating parties, i.e. a licensor/seller and a licensee/buyer,

[0006] Another object of the IP rights transaction system is to establish and maintain communication between the parties while allowing one or both of them to remain anonymous.

[0007] Another object of the IP rights transaction system is to provide the parties with a plurality of selectable clauses to automatically build personalized confidentiality, licensing, assignment and/or other contractual agreements.

[0008] Another object of the IP rights transaction system is to automatically follow up on any additional information needed by the parties to continue the negotiation process.

[0009] Another object of the IP rights transaction system is to provide a royalties calculator to estimate royalties to be received by the licensor (i.e. paid by the licensee) for the licensed intellectual property rights.

[0010] Another object of the IP rights transaction system Is to automatically follow up, send reminders, report and invoice on the payment of royalties and on any conditions and requirements mentioned in the licensing agreement for either parties.

[0011] According to an aspect of the present disclosure there Is provided a computing device implemented method for negotiating a transaction agreement between a first and a second parties, the method comprising executing on a processor the steps of:

[001 ] a) providing to the first and second parties a set of clauses; [0013] b) prompting the first and second parties to select one or more clause from the set of clauses;

[0014] c) in response to the selection of one or more clause by one of the first or second parties, providing for acceptance the selected one or more clause to the other of the first and second parties;

[0015] d) verifying If the selected one or more clause is accepted within a first configurable time period; and

[0016] e) if the selected one or more clause is accepted within the first configurable time period then joining the one or more clause forming the transaction agreement, if not then ending the negotiation.

[0017] There is further provided a method as above wherein the transaction agreement Is selected from a group consisting of licensing an intellectual property right and selling an intellectual property right, and further comprising providing prior to step a) the steps of:

[0018] storing at least one intellectual property owned by one of the first and second parties;

[0019] providing a list of the stored a least one intellectual property; and

[0020] prompting the other of the first and second parties to select one of the listed a least one Intellectual property.

[0021] There is also provided a system implemented on a computing device for negotiating a transaction agreement between a first and a second parties, comprising:

[0022] a computing device, the computing device having:

[0023] a database;

[0024] an interface;

[0025] and being programmed to: [0026] a) provide to the first and second parties through the interface a set of clauses;

[0027] b) prompt the first and second parties to select one or more clause from the set of clauses;

[0028] c) in response to the selection of one or more clause by one of the first or second parties, provide for acceptance the selected one or more clause to the other of the first and second parties;

[0029] d) verify if the selected one or more clause is accepted within a first configurable time period; and

[0030] e) if the selected one or more clause is accepted within the first configurable time period then join the one or more clause forming the transaction agreement, if not then end the negotiation.

[0031] There is further provided a system as above, wherein the transaction agreement is selected from a group consisting of licensing an intellectual property right and selling an intellectual property right, and Is further programmed to, prior to step a):

[0032] store at least one intellectual property owned by one of the first and second parties in the database;

[0033] provide a list of the stored a least one intellectual property; and

[0034] prompt the other of the first and second parties through the interface to select one of the listed a least one intellectual property.

BRIEF DESCRIPTION OF THE FIGURES

[0035] Embodiments of the disclosure will be described by way of examples only with reference to the accompanying drawings, in which:

[0036] FIG. 1 is a schematic view of computing devices connected to an intellectual property transaction system through a network; [0037] FIG. 2 is a flow diagram depicting the process of accessing the intellectual property transaction system;

[0038] FIG. 3 Is a flow diagram depicting the guest access process in accordance with an illustrative embodiment of the present disclosure;

[0039] FIG. 4 is a flow diagram depicting the member access process according to an Illustrative embodiment of the present disclosure;

[0040] FIGS. 5A and 5B is a ^■ flow diagram depicting the negotiation process according to an illustrative embodiment of the present disclosure; and

[0041] FIG. 6 is a schematic representation of the transaction server In accordance with an illustrative embodiment of the present disclosure.

[0042] Similar references used in different Figures denote similar components.

DETAILED DESCRIPTION

[0043] Generally stated, the non-limitative illustrative embodiments of the present disclosure provide a method and system for transacting intellectual property rights (e.g. patents, trademarks, designs, copyrights, trade secrets, knowhow, etc.). More specifically, the present disclosure relates to a method and system for transacting or licensing the rights to intellectual property such as patents, designs, copyrights and trademarks via an intellectual property (IP) rights transaction system and method.

[0044] The objective of the IP rights transaction system is an intermediary between negotiating parties (i.e. the licensor/seller and licensee/buyer) that guides them through the negotiation process via an automated process. The IP rights transaction system can also be used to provide and execute non-disclosure, licensing, assignment and/or other contractual agreements and, optionally, follow up on royalties' payment and engagements.

[0045] The IP rights transaction system ensures that the licensor/seller and the licensee/buyer have a clear view of their objectives of the negotiation and forces them to decide all of the requirements before entering into the negotiation process. This, in turn, reduces the time of required for the negotiation process.

[0046] During the negotiation process, the IP rights transaction system can enforce a configurable maximum delay for each step of the negotiation, and optionally of the entire process, in order to provide for a timely negotiation process.

[0047] The IP rights transaction system also produces a follow up after a licensing agreement is endorsed to ensure that both parties adhere to the clauses of licensing agreement for as long as It Is in effect.

[0048] A difficult challenge for a licensor is the evaluation of the price to be paid for his/her intellectual property rights. The IP rights transaction system provides an automated calculator for estimating the royalties to be received before entering into the negotiation process for a licensing agreement

[0049] Once a licensing agreement accepted by both parties, the IP rights transaction system can follow up on the payment of royalties and alerts both parties when a royalty payment is due. In an alternative embodiment, the IP rights transaction system may automatically collect funds from the licensor and provide them to the licensee, for example via credit card, direct deposit, PayPal™, Interact transaction, etc, for a configurable transaction charge.

[0050] Referring to FIG. 1, users using various client devices such as, for example, a personal computer 12, laptop computer 14, smart phones, tablet PCs or personal digital assistant (PDA) 16, or any other such computing device, on which runs a user interface in the form of a communication software such as, for example, a web browser, may access the intellectual property (IP) transaction system 30 through a web portal on a web server 32 via a network 20 such as, for example, Ethernet (broadband, high-speed), wireless WiFi, cable Internet, satellite connection, 3G, 4G, LTE or other cellular/mobile network, etc, or a combination thereof

[0051] Further to the web server 32, the IP transaction system 30 includes a transaction server 34, a user database 36 and an IP database 38, all of which will be detailed further below, It is to be understood that although throughout the disclosure reference is made to separate servers 32 and 34 as well as separate databases 36 and 38, these may be implemented on one or more physical device and/or may be combined. It is to be further understood that the user 36 and IP 3B databases may equally be Implemented by a data structure within a computer memory, such as the memory of servers 32 and/or 34.

[0052] Referring now to FIG. 2, there is shown a flow diagram of the process 100 of accessing the IP transaction system 30. Steps of the process 100 are indicated by blocks 102 to 114.

[0053] The process 100 starts at block 102 where a user connects to thB IP transaction system 30 through a web portal on the web server 32. It is to be understood that in an alternative embodiment the user connects to the IP transaction system 30 through a dedicated app.

[0054] At block 104, the process 100 verifies if the user wishes to login Into the IP transaction system 30. If so, the process 100 proceeds to block 1 2, if not, it proceeds to block 06.

[0055] Then, at block 106, process 100 verifies if the user wishes to register as a member of the IP transaction system 30. If so, the process 100 proceeds to block 1 10, if not, it proceeds to block 108 where the user is given access to the guest menu.

[0056] At block 110, the user registers and becomes a registered member by entering personal information such as name, emaif, member identification (e.g. nickname), password, etc, as well as, optionally, payment information such as credit card number, direct deposit information, Paypal™ account, Interact transaction Information, etc., which Information is saved in the user database 36, The registering member may also select various functionalities which may be provided in exchange for a fee, for example in order to list and/or search intellectual property rights and/or to execute transactions anonymously. It is to be understood that various verifications may be executed by the IP transaction system 30 in order to validate the information provided by the registering user. The process 100 then proceeds to block 112,

[0057] At block 12, the user logs into the IP transaction system 30 with its member identification and password, which are validated using the user database 36.

[0058] Once the identification and password of the member are validated the member is given access, at block 114, to the member menu.

Guest Menu

[0059] Referring now to FIG. 3, there is shown a flow diagram of the sub-process 200 of a user accessing the guest menu of the IP transaction system 30 at block 108 of process 100 of FIG. 2. Steps of sub-process 200 are Indicated by blocks 202 to 218.

[0060] The sub-process 200 starts at block 202 where the guess menu Is displayed, listing the functions available to guest users, for example searching the IP database 38, register as a member of the IP transaction system 30, etc. Optionally, the search options may be limited for guest users.

[0061] At block 204, the sub-process 200 verifies if the guest user has selected the search option and If so, effectuates, at block 206, the search according to desired search criteria (for example keywords, subject matter, classification, issue date, country or region, etc.), which may be limited for guest users, and displays the IP items resulting from the search at block 208. The sub-process 200 then proceeds back to block 202.

[0062] At block 210, the sub-process 200 verifies if the user has selected a displayed IP item to be viewed and if so, displays, at block 212, the information about the selected IP item, It Is to be understood that the displayed Information and/or information fields for the displayed IP item may be limited for guest users, some of the Information/information fields being reserved for members. Furthermore, guest users may not be provided with the ability to contact and/or Initiate any negotiation process with the owner of the displayed IP items. The sub-process 200 then proceeds back to block 202,

[0063] At block 214, the sub-process 200 verifies If the user has selected to register and if so, it proceeds to block 106 of process 100 of FIG. 2, if not, the sub-process 200 proceeds to block 216.

[0064] At block 216, the sub-process 200 verifies if the user has selected to logout and if so, it exits the IP transaction system 30 at block 218, if not, the sub-process 200 proceeds back to block 202.

Member Menu

[0065] Referring now to FIG. 4, there is shown a flow diagram of the sub-process 300 of a user accessing the member menu of the IP transaction system 30 at block 114 of process 100 of FIG. 2. Steps of the sub-process 300 are indicated by blocks 302 to 330. [0066] The sub-process 300 starts at block 302 where the member menu is displayed, listing the functions available to guest users, for example searching the IP database 38, set alerts, submit an IP item, etc.

[0067] At block 304, the sub-process 300 verifies if the guest user has selected the search option and effectuates, at block 306, the search according to desired search criteria and displays the IP Items resulting from the search at block 30Θ.

[0068] At block 310, the sub-process 300 verifies if the user has selected a displayed IP Item to be viewed and displays, at block 312, the information about the selected IP item. The sub-process 300 then proceeds back to block 302.

[0069] At block 314, the sub-process 300 verifies if the user has selected to set an alert and if so, it proceeds to block 316 where the criteria of a desired IP item are set (for example keywords, subject matter, classification, issue date, country or region, etc.) such that the IP transaction system 30 alerts the user when a matching IP item is added to the IP database 38. Alternatively, the owner of the corresponding IP item may also be alerted of the match. The sub-process 300 then proceeds back to block 302.

[0070] At block 31 B, the sub-process 300 verifies if the user has selected an IP item for which to initiate a negotiation and if so, proceeds to block 320, where the negotiation process is initiated with the owner of the selected IP item. Alternatively, in the case where the owner of an IP item is alerted In case of a match, the owner of the IP item may initiate the negotiation process with the user having set the corresponding alert. The sub-process 300 then proceeds back to block 302.

[0071] At block 322, the sub-process 300 verifies if the user has selected to add an IP Item and if so, proceeds to block 324, where information about the IP item is entered. For example, the information may include one or more countries with associated serial number. The user may also select if he/she desires to license and/or sell the IP item, and In the case of licensing if an exclusive and/or non-exclusive license Is available and any other needs and/or requirements. Using the Information provided at block 324, the IP transaction system 30 executes a data gathering process that queries online databases (for example the United States Patent and Trademark Office (USPTO) database, the World Intellectual Property Organization (WIPO) database, etc.) in order to access the full information of the [P item and stores it into the IP database 38, along with the provided Information, at block 326. Before the IP item is made available to queries and transactions, the IP transaction system 30 executes an authentication process to ensure that the user adding the IP item is the proper owner of the IP item rights. The sub-process 300 then proceeds back to block 302.

[0072] At block 328, the sub-process 300 verifies if the user has selected to logout and if so, it exits the IP transaction system 30 at block 330, if not, the sub-process 300 proceeds back to block 302.

[0073] It is to be understood that other functionalities, such as editing a user's profile, help, email, password modification, etc., as commonly known in the art, may also be provided.

Negotiation Process

[0O74J Referring now to FIGS. 5A and 5B, there is shown a flow diagram of the sub-process 400 of the negotiation process at block 320 of process 300 of FIG. 4. Steps of the sub-process 400 are indicated by blocks 402 to 424.

[0075] The sub-process 400 starts at block 402 where the sub- process 400 verifies if both parties wish to or not to enter into the negotiation process and if so, proceeds to block 406, if not, the sub- process 300 exits at block 404.

[0076] At block 406, the negotiation timer is started.

[0077] At block 408, the sub-process 400 queries the parties as to which type of document they wish to negotiate (for example nondisclosure, assignment, licensing or other contract agreement).

[0078] Then, at block 410, the sub-process 400 imports the required information for the document type selected at block408 (for example the name and addresses of the parties, patent application or patent serial number, etc.) and prompts the parties for any missing information.

[0079] At block 412, a list of clauses for the selected document is provided to both parties and, at block 414, each party selects one or more clauses including, in the case of a licensing agreement, royalties (for example percentage of sales or profits, fixed amount per item, etc.), as well as any amount to be exchange (for example sale price). Optionally, a royalties calculation process using various methods of calculation based on monthly sales, purchase orders, profit margins and other method of calculation may be provided by the IP transaction system 30 to help the licensor set royalties. When a party is done with Its selection of clauses, the other party is alerted and is queried to accept or reject the selected clauses.

[0080] At block 416, the sub-process 400 verifies if both parties have agreed to the selected clauses and, if applicable, royalties/Sale price, proceeds to block 418, where the parties are given the opportunity to negotiate another document, proceeding back to block 408 if this is the case, or to block 420 if not.

[0081] At block 420, in the case where the document type selected at block 408 Is a licensing agreement, the IP transaction system 30 may, optionally, automatically follow up on the royalties payments, sending reminders, generating payment reports and may also be used to transfer funds from the licensee to the licensor. If the payment is not send or any other condition of the licensing agreement is not met after a predetermined number of reminders both parties are release of any engagements except for any and ail penalty clauses In the licensing agreement.

[0082] If at block 416 both parties have not agreed to the selected clauses and, if applicable, royalties/sale price, the sub-process 400 proceeds to block 422 where is verifies if the timer is within a configurable period of time (i.e. the time period allotted for the negotiation process) and if so, proceeds back to block 414 where the clauses can be modified, canceled or new ones added, if not, the sub-process 400 exits at block 424 and both parties are released of any previous engagements instantaneously. Optionally, the parties may be queried as to their wishes to further continue the negotiation process, in which case a new configurable time period for the negotiation may be set and the sub- process 400 restarted from block 414.

[0083] It is to be understood that the configurable time period allotted for the negotiation process may be per Iteration, per document or overall for all related documents.

[0084] It is to be understood that at block 412 the available clauses may vary according to the IP item and that each clause may Include a number of further selectable sub-clauses. It is also to be understood that a set of complete agreements (i.e, containing standard sets of clauses) may also be provided. In an alternative embodiment, one or both of the parties may be allowed to add their own clauses to the agreement.

[0085] In an alternative embodiment, instead of using a configurable time period for the negotiation process, both parties may be allowed to iteratlvely modify the selected clauses and/or royalties/sale price until one of the parties elects to end the negotiation process or a configurable total number of iterations have been reached.

[0086] It is to be understood that the negotiation process described by sub-process 400 of FIGS. 5A and 5B can also be used as a stand- alone process, be included in or be accessed by a remote third party system in order to provide document generation capabilities.

[0087] Referring to FIG. 6, the transaction server 34 is a computing device that includes a processor 42 with an associated memory 44 having stored therein processor executable instructions 46a, 46b, 46c and 46d for configuring the processor 42 to perform, respectively, the data gathering and authentication processes of block 326 of FIG. 4, the negotiation process 400 and the royalties calculation process of block 412 of FIGS. 5A and 5B. The transaction server 34 further includes an input/output (I/O) Interface 48 for communication with the web server 32, the user database 36, the IP database 38 and the network 20.

[0088] In an alternative embodiment, the agreement document creation/clause selection steps of blocks 410 to 414 of sub-process 400 may be provided as an option in the member menu (sub-process 300) in order to allow users to create, for example, a confidentiality agreement document and/or licensing/sale agreement document without being in the negotiation process (sub-process 400), with or without involvement of another party.

[0089] It is to be understood that although reference were made to IP rights, the above described system and method may also be used for any transfer of assets or rights, in whole or in part, for example real estate leasing/selling, equipment leasing/selling, consulting services (legal, financial, etc.), financing, freight, etc. In an alternative embodiment, the above described system and method may be used as an educational tool for practicing and learning negotiations and calculating royalties. [0090] Although the present disclosure has been described with a certain degree of particularity and by way of an illustrative embodiments and examples thereof, it is to be understood that the present disclosure is not limited to the features of the embodiments described and Illustrated herein, but includes all variations and modifications within the scope and spirit of the disclosure as hereinafter claimed.

Claims

CLAIMS What Is claimed is:

1. A computing device Implemented method for negotiating a transaction agreement between a first and a second parties, the method comprising executing on a processor the steps of:

a) providing to the first and second parties a set of clauses;

b) prompting the first and second parties to select one or more clause from the set of clauses;

c) in response to the selection of one or more clause by one of the first or second parties, providing for acceptance the selected one or more clause to the other of the first and second parties;

d) verifying if the selected one or more clause is accepted within a first configurable time period; and

e) if the selected one or more clause is accepted within the first configurable time period then joining the one or more clause forming the transaction agreement, if not then ending the negotiation.

2. The method of claim 1 , further comprising the prompting the first and second parties to select a transaction agreement type and wherein at step a) the set of clauses provided are related to the selected transaction agreement type.

3. The method of claim 1 , wherein the transaction agreement Is selected from a group consisting of licensing an intellectual property right and selling an intellectual property right.

4. The method of claim 1 , wherein the transaction agreement consist of an intellectual property right licensing agreement where one of the first and second parties is a licensor and the other of the first and second parties Is a licensee, and further comprising the step of sending royalty payment reminders to the licensee.

5. The method of claim 4, further comprising the step of generating payment reports.

6. The method of either of claims 4 or 5, further comprising the step of automatically transferring funds from the licensee to the licensor.

7. The method of any of claims 1 to 6, further comprising the repetition of steps a) to d) until the selected one or more clause is accepted or until a second configurable time period lapses.

8. The method of any of claims 1 to 7, further comprising the step of automatically Importing Information related to the transaction agreement from a database.

9. The method of any of claims 1 to 8, further comprising the step of prompting the first and second parties to enter information related to the transaction agreement.

0. The method of any of claims 3 to 9, further comprising providing prior to step a) the steps of:

storing at least one Intellectual property owned by one of the first and second parties;

providing a list of the stored a least one Intellectual property; and prompting the other of the first and second parties to select one of the listed a least one intellectual property.

11. The method of claim 10, further comprising the steps of setting an alert for a desired intellectual property and alerting the other of the first and second parties of the storing of a matching intellectual property.

12. The method of claim 11 , further comprising the step of alerting the one of the first and second parties owning the matching desired intellectual property.

13. A system implemented on a computing device for negotiating a transaction agreement between a first and a second parties, comprising:

a computing device, the computing device having:

a database;

an interface;

and being programmed to:

a) provide to the first and second parties through the Interface a set of clauses;

b) prompt the first and second parties to select one or more clause from the set of clauses;

c) in response to the selection of one or more clause by one of the first or second parties, provide for acceptance the selected one or more clause to the other of the first and second parties;

d) verify if the selected one or more clause is accepted within a first configurable time period; and e) if the selected one or more clause is accepted within the first configurable time period then join the one or more clause forming the transaction agreement, if not then end the negotiation,

14. The system of claim 13, wherein the computing device is further programmed to prompt the first and second parties to select a transaction agreement type and wherein at step a) the set of clauses provided are related to the selected transaction agreement type.

15. The system of claim 13, wherein the transaction agreement is selected from a group consisting of licensing an intellectual property right and selling an intellectual property right.

16. The system of claim 3, wherein the transaction agreement consist of an intellectual property right licensing agreement where one of the first and second parties is a licensor and the other of the first and second parties is a licensee, and wherein the computing device is further programmed to send royalty payment reminders to the licensee,

17. The system of claim 16, wherein the computing device is further programmed to generate payment reports.

8. The system of either of claims 16 or 15, wherein the computing device is further programmed to automatically transfer funds from the licensee to the licensor.

19. The system of any of claims 13 to 18, wherein the computing device is further programmed to repeat steps a) to d) until the selected one or more clause is accepted or until a second configurable time period lapses.

20. The system of any of claims 13 to 19, wherein the computing device is further programmed to automatically import information related to the transaction agreement from the database.

21. The system of any of claims 13 to 20, wherein the computing device is further programmed to prompt the first and second parties to enter information related to the transaction agreement.

22. The system of any of claims 15 to 21 , wherein the computing device is further programmed to, prior to step a):

store at least one intellectual property owned by one of the first and second parties in the database; provide a list of the stored a least one intellectual property; and

prompt the other of the first and second parties through the interface to select one of the listed a least one intellectual property.

23. The system of claim 22, wherein the computing device is further programmed to set an alert for a desired intellectual property and alert the other of the first and second parties of the storing of a matching intellectual property In the database.

24. The system of claim 23, wherein the computing device is further programmed to alert the one of the first and second parties owning the matching desired intellectual property.