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they may do so with the written consent of the other parties under Part 1 above. The cost of the prod uct or service shall include, in addition to normal profit, labor, commission, and/or overhead, etc., provision for a reasonable royalty which shall be paid for the term of the above patent application and any patent which may issue thereon. Such royalty shall be determined before any action is taken under this part and as if a valid patent on the invention had been licensed to an unrelated exclusive licensee (or a nonexclusive licensee if the patent is licensed to others) in an arm’s-length transaction. Such royalty shall be distri buted to all of the parties hereto according to their proportionate shares and on a quarterly bas is, accompanied by a written royalty report and sent within one month after the close of each calendar quarter. 5. In Case of Dispute: In case any dis pute, disagreement, or need for any decision arises out of this agreement or in connection with the invention or patent application, and the parties cannot settle the matter or come to a decision in accordance with Paragraph 2, above, the parties shall first confer as much as necessary to settle the disagreement; all parties shall act and compromise to at least the degree a reasonable person would act. If the parties cannot settle their differences or come to a decision on their own, they shall submit the dispute or matter to mediation by an impartial third party or professional mediator agreed to by all of the parties. If the parties cannot agree on a mediator, or cannot come to an agreement after mediation, then they shall submit the matter to binding arbitration with a mutually acceptable arbitrator or the American Arbitration Associa tion. The arbitration shall take place in (City and State) and the law of (State) shall apply. The arbitrator shall settle the dispute in whatever manner he or she feels will do substantial justice, recognizing the rights of all parties and commercial realities of the marketplace. The parties shall abide by the terms of the arbitrator’s decision and shall cooperate fully and do any acts necessary to implement such decision. The costs of the arbitrator shall be advanced by all of the parties or in accordance with Part 3 above and the arbitrator may make any allocation of arbitration costs he or she feels is reasonable. The arbitrator’s award may be entered as a judgment by the prevailing party in any court of record. 6. Nonfrustration: No party to this Agreement shall commit any act or take any action which frustrates or hampers the rights of another party under this Agreement. Each party shall act in good faith and engage in fair dealing when taking any action under or related to this Agreement. Signature Signature Signature Date Date Date www.nolo.com Form 16-2: Joint Owners’ Agreement Page 2 of 2
Assignment of Invention and Patent Application For value received, , of (hereinafter ASSIGNOR), hereby sells, assigns, transfers, and sets over unto of and her or his successors or assigns (hereinafter ASSIGNEE) % of the following: (A) ASSIGNOR’s right, title, and interest in and to the invention entitled “ ” invented by ASSIGNOR; (B) the application for United States patent therefor, signed by ASSIGNOR on , U.S. Patent and Trademark Office Serial Number , filed ; (C) any patent or reissues of any patent that may be granted thereon; and (D) any applications which are provisional patent applications which said application claims priority of, or nonprovisional applications which claim priority of said application, or continuations, continuations-inpart, substitutes, or divisions of said application. ASSIGNOR authorizes ASSIGNEE to enter the date of signature and/or Serial Number and Filing Date in the spaces above. ASSIGNOR also authorizes and requests the Commissioner for Patents to issue any resulting patent(s) as follows: % to ASSIGNOR and % to ASSIGNEE. (The singular shall include the plural and vice versa herein.) ASSIGNOR hereby further sells, assigns, transfers, and sets over unto ASSIGNEE, the above percentage of ASSIGNOR’s entire right, title, and interest in and to said invention in each and every country foreign to the United States; and ASSIGNOR further conveys to ASSIGNEE the above percentage of all priority rights resulting from the above-identified application for United States patent. ASSIGNOR agrees to execute all papers, give any required testimony, and perform other lawful acts, at ASSIGNEE’s expense, as ASSIGNEE may require to enable ASSIGNEE to perfect ASSIGNEE’s interest in any resulting patent of the United States and countries foreign thereto, and to acquire, hold, enforce, convey, and uphold the validity of said patent and reissues and extensions thereof, and ASSIGNEE’s interest therein. In testimony whereof ASSIGNOR has hereunto set its hand and seal on the date below. Signature Signature Date Date Witnessed by: Signature Signature Date Date www.nolo.com Form 16-3: Assignment of Invention and Patent Application Page 1 of 1
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N O LO ® “The best roll-up-your-
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Products & Services Books & Softwar
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15th edition Patent It Yourself You
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Acknowledgments My deep thanks go t
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2 3 4 The Science and Magic of Inve
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8 9 E. Make and Sell Your Invention
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13 14 J. The Patent Laws of Other C
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Appendixes 1 2 Abbreviations Used i
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Your Legal Companion A. You Don’t
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Your Legal COMPANION | 3 D. Should
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Your Legal COMPANION | 5 E. New Mat
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10 | Patent it YOURSELF • Utility
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C H A P T E R 4 Will Your Invention
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ChaPter 4 | Will Your INVENTION SEL
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C H A P T E R 7 What Should I Do Ne
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Fig. 7A—Invention Decision Chart
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ChaPter 7 | What SHOULD I do Next?
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Nondisclosure Agreement 1. Parties.
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Invention Disclosure Sheet of Inven
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Positive and Negative Factors Evalu
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Searcher’s Worksheet Sheet of Inv
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Form 10-1A: Declaration for Utility
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Page 595 and 596: INDex | 577 Biotechnology patents e
Page 597 and 598: INDex | 579 Classification searches
Page 599 and 600: INDex | 581 format of, 247, 249 ind
Page 601 and 602: INDex | 583 including all possible,
Page 603 and 604: INDex | 585 in specification, 198,
Page 605 and 606: INDex | 587 exploitation of flowcha
Page 607 and 608: INDex | 589 designs as, 298 sketche
Page 609 and 610: INDex | 591 official date of, 351 P
Page 611 and 612: INDex | 593 paragraph numbers in, 2
Page 613 and 614: INDex | 595 digital, for use in CAD
Page 615 and 616: INDex | 597 press release, 413 See
Page 617 and 618: INDex | 599 slash-sandwiched, 72, 4
Page 619 and 620: INDex | 601 in notebook, 50, 51, 53
Page 621 and 622: Bestsellers The Small Business Star
Page 623 and 624: Online Legal Forms Nolo offers a la
Page 625 and 626: Keep Up to Date 1 Go to Nolo.com/ne
Page 627: About the Author David Pressman is
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