Starting a Company on a Cofounder's Patent

> 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?

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.

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!

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.

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.

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.

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.

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.

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).

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

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.

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.

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.

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.