licensing patents
Is it possible (and is it common) to negotiate a global licensing deal just by using a patent in the USA
<p>If an inventor has a patent for an invention in the USA, then this would be tremendous amount of leverage as the USA is obviously an enormous consumer market.</p>
<p>If a large corporation wants to license out the inventor's patent to distribute this invention to the USA market, is the inventor able to stipulate in the contract that the corporation pay royalties for this invention sold globally, i.e. in and outside of the USA.</p>
<p>Can this stipulation be made? Will it be enforced in the USA? Is this stipulation common?</p>

<p>That is not really a &quot;global license deal&quot;. You can try to attach strings to your US deal that makes you money when the US licensee sells out of the US. It is not typical and you may or may not have the leverage to get that agreement.</p>
<p>Since you have no IP outside the US you can’t keep third parties from competing with them so it might not be good business for them.</p>
<p>Also the <a href="https://www.finnegan.com/en/insights/articles/u-s-supreme-court-upholds-ban-on-post-expiration-royalties-in.html" rel="noreferrer">SCOTUS has ruled</a> that a contract licensing a U.S. patent can’t include royalties after the patent expires. In the past people negotiated deals where the royalties dropped in half (for example) after a patent expired. Although freely contracted and making business sense to the parties these royalties are not enforceable as a matter of public policy.</p>
<p>It is possible that there may be a prohibition on contracted royalties where no IP exists.</p>
<p>However you can license know-how, trademarks etc. independent of the term or existence of a patent.</p>

<h2>A US patent applies in the US and nowhere else</h2>
<p>Because patents are public, anyone is free to use the information to sell the same product in the EU, Canada, Mexico, Australia etc. without paying the inventor anything.</p>
<p>The inventor is also free to patent the invention in any or all of those jurisdictions by going through the relevant, local process. If the inventor wants to licence the invention to someone who will go through that process and pay the fees, they can do that.</p>

<p>You can force someone to have a licensing deal to use your patent in the USA, you can't force them into the same deal outside the USA.</p>
<p>Obviously you can negotiate with them: Asking &quot;Pay me X$ for each product sold worldwide, or you won't get a US license, so you can't sell in the USA&quot;  is legal, and it would be up to the licensor if they want to agree to your terms or not. If they don't agree, they can use your patent outside the USA. They have the risk that in any country X where they sell, patent law <em>might</em> allow you to still get the patent, and that could be very expensive for them. (Starting sales and then having to stop them can be expensive).</p>
