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A contract is an agreement, written or oral between at least two
parties for the provision of goods or services by a first party
to a second party or to a third party. In most states, contracts
for an amount in excess of $500 must be in a writing signed by the
parties to the contract. If Mr. Jones agrees to deliver coal to
Mr. Smith's house, but the bill is being paid by Mr. Doe, due to
some prior arrangement between Smith and Doe, the third party Smith
is said to be the beneficiary of the contract between Smith and
Jones.
In order to be enforceable, there must be what is known as sufficient
legal consideration for one party to provide goods or services to
another. Usually this consideration is the payment of money ,either
now or in the future on a date certain. But the consideration can
also be a PROMISE to do or not do a certain act that the party legally
had the right to do.
Patent and Trademark Lawyers. Create contracts for their clients
in several areas of the law. First there is the NON-DISCLOSURE AGREEMENT.
Oftentimes these are referred to as Secrecy Agreements . In such
a contract or agreement, Party A agrees to divulge information deemed
by him/her to be proprietary , to a third part y C, in exchange
for Party C's' promise not to do certain acts with the technical
information obtained from Party A Usually the promises are not to
use , disclose or copy information pertaining to the invention.
Other restrictions and conditions are also recited in the Secrecy
Agreement, which need not be discussed here. Inventors often utilize
this type of agreement with a company that builds models or prototypes
of an invention.
Another type of contract that is often written by a patent and
trademark attorney is a LICENSE. A License grants to a party the
right to use the intellectual property of another , again under
certain terms and conditions. By analogy to real estate, a License
is a rental but not of a house, but of intellectual property rights,
in exchange for a fee , called a ROYALTY. An ASSIGNMENT by contrast
is a sale or transfer of all rights title and interest in a patent
or trademark or Copyright among other things. . Employed inventors
and other employees who make inventions while in the course of their
employment usually assign the ownership rights to their employer,
often in exchange for $1.00 and other consideration- job retention.
Assignments can transpire at the time a patent is filed or at a
future time if an invention is sold subsequent to a patent filing.
One company may sell a trademark to another and this transaction
is denoted by an assignment of trademark rights for a dollar amount.
Or a company may permit a different company to use its brand - trademark-
on a product made by the second company. This often happens in instances
where the first company wants to extend its brand onto different
products that does not manufacture.
Sometimes a company will hire consultants for specific tasks be
they financial or technical.. Contracts to hire such persons are
frequently drafted by patent and trademark attorneys.
Patent lawyers also draft MANUFACTURING AGREEMENTS. In this instance,
Company A hires Company B to produce part of a product or even the
entire product, which Company A will then sell in the marketplace.
There are many instances in the Intellectual Property arena that
require the Patent Attorney to draft a contract for and in behalf
of the client.. If in doubt call the lawyer.
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