
Ask HN: Starting a Company on a Cofounder's Patent - anonymoustache
My friend invented a very exciting technology over the course of many years and received a patent on it. We have been casually working together on developing and commercializing it and there are many promising signs. We work well together and trust each other, and plan to formalize the project by incorporating.<p>I know typically founders are encouraged to assign all relevant IP to the new company, but my friend thinks his patent is worth &gt;$100m and wants to maintain personal ownership of the patent. I&#x27;m worried that if we start a company that uses the invention without owning the patent, our company could be killed at any time by the patent holder. While I trust my cofounder, investors may be turned off and the patent could always end up in the hands of a less benevolent owner.<p>Is there any way we can safely start a company using his invention without holding the patent? Perhaps my friend can grant a license&#x2F;authorization to the new company? Or is my friend being delusional and should just assign his patent to the company?<p>Any thoughts will be appreciated–thanks!
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pjc50
> but my friend thinks his patent is worth >$100m

This is almost certainly delusional, especially if it's a software patent.
Although that may not prevent you from building a $100m business on it.

> and wants to maintain personal ownership of the patent.

This was one of the WeWork shenanigans with the trademark being held by the
owner.

> I'm worried that if we start a company that uses the invention without
> owning the patent, our company could be killed at any time by the patent
> holder. While I trust my cofounder, investors may be turned off and the
> patent could always end up in the hands of a less benevolent owner.

These are reasonable worries.

The bare minimum for any company with multiple founders is to sort out the
initial equity distribution. This may not be 50/50 if it's his patent, but it
needs to be something you're both happy with. It's a difficult conversation,
but it only gets more difficult if you're successful and there's real money
involved.

The bare minimum for the company should be a permanent non-revokable license
for the patent. He may want it to be non-sublicensable and non-transferable,
which are reasonable requests.

If you can't satisfactorily resolve this between you, your working
relationship is not good enough to run a business between you.

You also need to ask your co-founder: when someone comes and offers $10m
equity investment into the business on condition that the company is fully
assigned the patent, would they really say no?

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cupofjoakim
> The bare minimum for the company should be a permanent non-revokable license
> for the patent. He may want it to be non-sublicensable and non-transferable,
> which are reasonable requests.

I think this is the most important thing in your response. Hopefully, OP
listens and lifts it with his co-founder.

~~~
anonymoustache
Thank you! This could be a solution–I'll research this and discuss with my
cofounder.

~~~
djweis
This will also put your co-founder in 100% control of whether or not an exit
will happen. You won't be able to sell the business if a critical patent
doesn't come along with it.

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tompccs
Generally it's not uncommon for companies to be started by licensing existing
patents from other companies. The nature of that license matters more than who
owns it - things like how long it will last, what you can and can't do, do you
have exclusive rights, etc.

I am curious who paid for the patent application. Usually this is a lengthy
and expensive process. I am also assuming that the inventor was employed
somewhere while they developed this stuff - have the employers signed away
their rights to the IP?

I would also point out that patents on their own are basically worthless. They
do not protect small startups from being copied because you cannot afford to
sue a competitor. At best they are a signal to investors that what you have
invented is sufficiently unique as to pass a patent search, but even that is
not saying a whole lot.

In short, I think the patent itself is a secondary issue. The problem seems to
be a lack of incentive alignment between the founders. I would also suggest
you look into some of the issues I've stated above, such as who the assignee
currently is, who the co-inventors are, if there are any other parties who
could have claims over it. This I see as a potentially bigger problem.

~~~
pjc50
> I am curious who paid for the patent application. Usually this is a lengthy
> and expensive process. I am also assuming that the inventor was employed
> somewhere while they developed this stuff - have the employers signed away
> their rights to the IP?

This is also an important point. Everywhere I've ever worked has requested all
patent rights. If the company is successful you may have to deal with a
lawsuit (merited or not) from the founder's previous employer.

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grabeh
I would strongly recommend assignment to the company. As you allude to, any
investor will want to see core IP in the ownership of the company, and to not
have this, even in the presence of a cast-iron license agreement, will be off
putting.

Having said that, you could mitigate through an arms length license agreement
but it would have to be water-tight and obviously there's a tension between
protecting your friend's patent and protecting the company's rights in that
patent. The more it protects the company, the less confidence your friend
would have (perpetual grant of rights vs time-limited, termination triggers
etc).

You could also always start off with a license to give the company confidence,
but if you are subsequently looking to fundraise and see investors are being
put off, look to assign the patent to the company. The license could even
incorporate an option to purchase to give the company further certainty that
for the right price it could acquire the rights.

Hopefully some food for thought!

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tluyben2
I have been in similar situations and I would (and did) go for putting the
patent into the company or walking away. Maybe with your shares vesting based
on milestones. Companies do license patents (in my country this would put a
strain on the company as a license implies you have to pay for it and that
sets all kinds of precedents with respect to value etc, not sure how that
works elsewhere) but those are usually in different situations; if you like
each other and work well together, then this is the better (short and long
term) option in my opinion.

Edit: also, and again in my experience, investors and buyers will find the
company to be worth a lot more; we had a perpetual license with all the
protections in the past and we had a lot of investor hesitance to take risks
as they were worried about the IP for the core product of the company not
actually being in the company. The license did nothing to alleviate that.

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sandGorgon
yes you can license the patent to the startup under a non-revocable license.
Make sure that the license rights pass on in case of "change of control"
(acquisition, merger, sale). You should be able to google for this agreement.
its pretty standard.

if you do a non-revocable, transferable license grant...it should be investor
friendly.

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natch
You say he worked on this for many years. How old is the patent? Could be new
or old but it makes a difference as they expire after 17 years.

Also do your own informal search for prior art to at least understand whether
his patent is novel... most aren’t. Patent examiners famously do not do a good
job at this determination.

Also the patent may well be worth 100m in his dreams but in the real world it
is execution of ideas that matters and makes value. Ideas are worth basically
zero without execution. But he may take offense if anyone tells him this!

Of course patents may be worth slightly more than bare ideas but it really
depends on the patent and the prior art. Many patent lawyers will gladly file
any patent as long as they are paid, even for a poor quality idea that should
be unpatentable or that has prior art, or that offers no protection due to
workarounds being available. Good luck.

~~~
tzs
> Could be new or old but it makes a difference as they expire after 17 years.

Assuming US, it would only be 17 years if the patent was filed before 1995.
The term then was 17 years after the patent issued. For patents filed 1995 or
later, the term is 20 years from the date of filing.

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wolco
I wouldn't proceed. The problem is your partner did his work previously and
your friend feels like he has a 100 million dollar worth of value.

How is he going to extract that 100 million? Through the company you will
build for him. Any licease he assigns he will want 100m value for it. If
things go well problems will start over how much each should get. If things
don't he has an escape route ready. Worse if things go really well he can sell
a licease to another company with bigger pockets.

I would create my own company and buy access to his patient through a percent
of ownership + a fixed amount per product/service sold for a period of time
with the right to renew.

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mkl
Google was started based on a patent owned by Stanford (PageRank). This was
kind of bad for Google, though, as Stanford ended up making hundreds of
millions off them for providing an exclusive license. The patents have only
just expired this year.

~~~
tompccs
"Bad for Google" \- you're making the opposite point that you think. In
practice it doesn't matter who owns the patent, what matters are the licensing
terms. Google make hundreds of millions in a day now, and PageRank was
probably irrelevant to Google's core revenue streams within a few years.

~~~
mkl
Am I? If Google had owned the patent, they wouldn't have had to pay Stanford
to license it, saving loads of shares/money, and the licensing terms would be
moot.

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matt_the_bass
Patents do not give the assignee any protection against IP theft. It merely
gives them the right to litigate.

I’m not suggesting this idea as your primary position. However, your new
company could just ignore his patent and infringe. If your company is
“successful” it will likely have more financial wherewithal than your friend.
He’d have to raise a lot of money to fight your company.

This is clearly and obnoxious move, but totally legal (IANAL but I hold 5
patents).

~~~
matt_the_bass
Also, have you read the patent? The protection is only offered to the claims
not the specification (all the rest of the text). Do the claims actually cover
the up you care about or could you do what you want differently (even if
covered in the specification) without doing what’s in the claims?

The patent may not actually cover what you want to do. Alternatively, can you
find other prior art that negates the claims? The patent issue process does
not perform and exhaustive search on prior art. It could by that you could
invalidate the claims if it ever claim to litigation.

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kenneth
Perhaps you could have an agreement in place that should the company be
dissolved, the patent gets reassigned back to him.

~~~
raleighm
If the patent is where significant value of the company lies this will be an
big issue for investors.

~~~
kenneth
I'm a VC and I would be ok with this arrangement.

It's important that the patent is owned by the company, but if the company
ends up failing, I've already lost my money anyways, and the likely value I'll
get out of liquidating some IP is negligible.

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brudgers
Stipulating that the patent is worth $100 million. Do you want to be in
business with someone who isn't satisfied with $50 million? Someone who sees
you as a competitor? Someone who doesn't want you to get rich? Good luck.

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natch
Tell us the patent number? I understand there may be good reasons to not share
it, and you’re still getting good answers regardless. Still just thought I’d
ask as it would be interesting to see HN pick it apart.

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pkrotich
Delusional or not - I think his thinking is reasonable. That said, you should
ask him to give perpetual license to the company and it's a win-win.

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onion2k
You're _effectively_ asking your friend to start a company with you and invest
whatever the patent is worth (maybe $100m, maybe $0) without any equivalent
input from you. Why would your friend do that?

In your situation I would suggest to your friend that he starts the company
owning 100% of the IP (and maybe the company) and assigns you 50% with a 5
year vesting schedule and a 1 year cliff (so during year 1 you'd have nothing,
at the end of year 1 you'd own 10%, at the end of year 2 you'd have 20%, and
so on). You might want something that defines what happens if you exit before
the end of year 5. That way he has much less risk personally because he
retains ownership until the company has proved to be more worthwhile than
holding the IP on its own.

~~~
natch
You seem to think ideas have value without execution.

I meet people like this at hackathons sometimes.

They tend to say things like: “I want to start a company. I already have the
idea. Since I supplied the idea, I’ll own most of the company but I’ll be
really generous and let you have 10% equity if you just write the program.”

Things don’t work this way.

~~~
onion2k
_You seem to think ideas have value without execution._

No I don't. I think _patents_ have value without execution - in so far as you
can license the patent without doing the execution yourself. To that end, the
author of the thread has to try and persuade the patent holder that it's
better to go in to business with him than it is to license the patent to
whoever will pay. That means mitigating the risk that the patent holder is
taking by offsetting it over time.

~~~
natch
But there are garbage patents.

~~~
onion2k
Sure. Maybe the one the original thread author is talking about is garbage,
but I'm willing to be charitable and accept he probably isn't an idiot and has
done a bit of due diligence to check. So, _assuming the patent in question isn
't garbage_, what I said stands.

~~~
natch
That’s a pretty large assumption though. Most people including many, many,
tech people I have met are, to use your word, idiots about patents,
essentially suspending all disbelief as if it is some kind of powerful magical
certificate that validates the idea.

So what you said stands but only in a world I haven’t encountered, and I have
a few patents and have been around the block on this one.

