Aspects and considerations of licensing patents in the metallurgical industry

"IntroductionIn the past decade, metallurgical and mining companies have shown an increased interest in the licensing of technology. When licensing technology, it is usually to the benefit of the parties, to have at least some of the technology to be licensed protected by a patent.This paper is intended to bridge the gap between the engineer in the field of mining, metallurgy and mineral processing who is interested in exploiting an invention commercially, and the patent agent or intellectual property lawyer whom he/she might retain to prepare a patent application and then prosecute the application to obtain a granted patent. It is also intended to encourage the inventor or a small business concern to consider the value of patents in the sale and licensing of technology. The lawyer may subsequently advise and assist the inventor in licensing his/her invention.A brief outline of some of the basic features of the patent system follows. The nature of the information, which the patent professional requires from the inventor to enable him/her to draft a patent application, will also be considered in general terms. Furthermore, various types of licenses which may be drawn up between a licensor of specific technical information and a licensee, will be listed and briefly discussed. No attempt, however, will be made to give a comprehensive and detailed account of the above aspects; the interested reader should consult legal publication and reference books, and patent professionals for further specific information.A granted patent is a document which describes an invention and how to practise it. The claims of the granted patent, figuratively speaking, fence off the intellectual property the inventor regards as his invention. The Commissioner of Patents, representing the Government, grants to the inventor or his assignee the exclusive right of making, constructing and using the invention, and selling it to others to be used, for a limited period of time, in exchange for disclosing the invention to the public. Thus, a patent prevents others from practising the claimed invention but it does not, necessarily, bestow the right to the patentee to practise his own invention. The term of a patent now in Canada and in most of the developed countries of the world, is 20 years from the date of filing the patent application. In the United States the patent term is still 17 years from the date of issuance of the patent. In Canada, the term was changed to 20 years in the new Canadian Patent Act which came into force on October 2, 1989. Any patent application filed prior to that date or granted before it, retains a 17 year life, commencing at the time of grant."