Q: Another company wants to buy my business, which has a patent associated with it for one of our products. If I move
forward on the acquisition, will I lose control over the patent?
A: It depends upon what you and the buyer agree to.
If the rights to the patent have been assigned into your company and you sell that company to buyer, then buyer owns the assets including your patent. You would not have the right to practice that patented invention without getting a license from the buyer until the patent expires.
You and the buyer can agree that you retain a non-exclusive license to use the patent. You and the buyer can agree that you spin the patent out of the company before you sell it and that you provide a license to the buyer for whatever terms you agree to. That would give you the ability to continue to practice what is covered by your patent and perhaps provide license rights to others.
Generally, if you are not going to provide the patent with the sale of the business, then you will be paid less for the business but it could be that they are buying the business for reasons that have nothing to do with your patent (for example, you may have the patent but it does not cover an existing product).
You need to be sure that the attorney representing you in the sale of the business knows about the patent and knows what you want to happen with respect to the patent.
I hope that this helps.
Kevin E Flynn
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