International Patent Technology Licensing Agreement
This International Patent Technology Licensing Agreement (the “Agreement”) is made and entered into this ___ day of ____, 20___, by and between ___________, a ___________ company having its principal office located at ____________ (hereinafter referred to as the “Licensor”) and ____________, a ___________ company having its principal office located at ___________ (hereinafter referred to as the “Licensee”).
Whereas,
A. The Licensor owns or controls a number of patents, patent applications and related technology (the “Technology”) in several jurisdictions; and
B. The Licensee wishes to obtain an exclusive license in certain jurisdictions to the Technology and the Licensor is willing to grant the same.
Now, Therefore, in consideration of the mutual covenants and conditions set out herein, and for other good and valuable consideration, the receipt and sufficiency of which is hereby acknowledged, the Licensor and Licensee agree as follows:
1. Definitions and Interpretation:
1.1 In this Agreement, the following terms shall have the following meanings:
(a) “Confidential Information” means any information, data, know-how, trade secrets and the like which is disclosed or made available to the Licensee in connection with this Agreement, including information which the Licensee knows or should know to be Confidential Information;
(b) “Licensed Jurisdiction” means those territories requested by the Licensee within the jurisdiction of the Licensor, including but not limited to the __________, in which the Licensee will be granted a license to the Technology;
(c) “Licensed Products” means any products produced or sold by the Licensee based upon or incorporating the Technology or as a consequence of use of the Technology;
(d) “Intellectual Property” means any and all copyrights, patent rights, trade secret rights, trademarks, design rights and other intellectual property rights;
(e) “Third Parties” means any person or entity other than the Licensor and Licensee; and
(f) “Trademark” means any trademark, service mark, trade name, symbol or logo which the Licensee may choose to register as a trade mark in accordance with the applicable laws of any jurisdiction.
2. License Grant:
2.1 In consideration of the Licensee agreeing to the terms of this Agreement and other good and valuable consideration, the Licensor hereby grants to the Licensee a non-exclusive, royalty-free, fully paid up, irrevocable and perpetual license (the “License”) to the Technology in the Licensed Jurisdiction.
2.2 The License shall include the Licensees right to use, make and sell Licensed Products within the Licensed Jurisdiction, in accordance with the terms of this Agreement.
3. Royalty Payments:
3.1 For the Licensed Products sold within the Licensed Jurisdiction, the Licensee shall pay the Licensor a royalty fee calculated as ______________ (___ %) of the gross sales price of each Licensed Product.
3.2 Payments must be received by the Licensor within sixty (60) days following the end of the month in which the Licensed Products were sold.
3.3 The Licensee shall prepare and submit a quarterly report to the Licensor setting forth the Licensed Products sold during the preceding quarter and the amount of royalty due thereon.
3.4 The Licensor reserves the right to periodically audit the Licensees records in order to verify that the Licensee is in compliance with its royalty obligations hereunder.
4. Ownership of Technology and Intellectual Property:
4.1 The Licensor reserves all right, title and interest in and to the Technology and any and all Intellectual Property concerning the Technology.
4.2 The Licensee shall not acquire any ownership or other interest in any of the Technology or Intellectual Property as a result of this Agreement.
5. Confidentiality:
5.1 The Licensee agrees to maintain the confidentiality of all Confidential Information and shall not disclose any Confidential Information to Third Parties without the prior written consent of the Licensor.
5.2 The Licensee further agrees to use the same care and diligence to protect and prevent the unauthorized disclosure of the Confidential Information as the Licensee uses to protect its own confidential and proprietary information.
5.3 The obligations hereunder shall remain in effect during the term of this Agreement and for a period of five (5) years thereafter.
6. Trademarks:
6.1 The Licensor agrees that the Licensee may use the Licensors Trademarks on the Licensed Products sold within the Licensed Jurisdiction, provided such use is in accordance with the terms and conditions set forth in this Agreement.
6.2 The Licensor shall have the right to approve any use of its Trademarks and to withdraw approval of any such use for any reason in its sole discretion.
7. Term
This Agreement shall be effective as of the date first written above and shall remain in full force and effect until ___________ (___), unless earlier terminated by either party upon thirty (30) days’ notice to the other.
8. Miscellaneous
8.1 This Agreement constitutes the entire agreement between the parties with respect to the subject matter hereof and supersedes all prior negotiations and agreements, whether written or oral.
8.2 This Agreement may be modified or amended only by a written agreement signed by both parties.
8.3 If any of the provisions of this Agreement are held to be invalid or unenforceable, such provisions shall be deemed to be divisible and shall be excluded from this Agreement and the remaining provisions shall remain in full force and effect.
8.4 This Agreement shall be governed and construed in accordance with the laws of __________ and the parties submit to the exclusive jurisdiction of the courts of _______________.
8.5 This Agreement may not be assigned by either party without the written consent of the other.
IN WITNESS WHEREOF, the Licensor and Licensee have executed this Agreement as of the date first written above.
__________________________
Licensor
__________________________
Licensee
