Does it impact your intellectual property?
Yes! It is a business decision which may strongly affect your IP
A partner is interested in our 3D bioprinter for their feasibility study. Shall we sell it or rent it out?
Answering this question does not only depend on your business model, but raises important IP issues which should be considered.
They shall only run the feasibility tests. We do not want them to develop new cell printing processes with our printer.
If the partner’s goal is to test the 3D printer’s viability for their use case to decide later whether to place an order, a rental or loan agreement allows you to clearly define both the allowed and prohibited uses.
When you rent your machine, you remain the rightful owner and you are relatively free to control which uses are allowed and which are not - provided this is defined in the rental agreement.
Thereby you may be able to prevent that your partner makes new developments in other areas and generates IP with your printer without your consent.
We are fine with our partner having the printer, but we fear that they will give it to our Swiss competitor
If the printer is sold in Switzerland or the European Economic Area, the patent right protecting the printer is exhausted for the particular unit you sold.
Thus, if it is sold to your partner, they are generally free to resell it or give it to your Swiss competitor. The patent protecting the printer will not help because you consented to the sale and it is therefore exhausted.
To avoid this, the printer can be rented or loaned to your partner and it can be specifcally stated in the rental agreement that they are not allowed to give the printer to a third party.
We patented a process for cell printing improving cell vitality by a combination of process parameters and additives. Can our partner use our process when we sell them the machine?
The situation in Switzerland is not entirely clear on this. If you sell a device that can be used with a patented process, the Swiss Patent Act implies that the buyer can then also use the protected process, because the sale of the printer can also exhaust the method patent.
By renting the printer to your partner you can avoid this, as neither of the patents will be exhausted.
This has the additional advantage that you remain the owner of the device and the right to use the process cannot be sold to a third party.
We still want to sell the printer, but can we collect license fees for the protected process?
In this case, one may try to include the condition to pay license fees for the patent protected process in the sales agreement before the actual sale.
However if the device is then sold to another party, the second buyer may be free to use the 3D printer without being obliged to continue to pay the license fees.
Deciding between selling or renting can strongly affect a company’s IP strategy and assets. It is crucial to clarify beforehand what potential consequences are and what the best solution for the present case is
