Standard patent license agreement this patent license agreement hereinafter referred to as the agreement, is made and entered into by and between. Licensor has the right to grant licenses under the licensed patent rights as hereinafter defined,and wishes to have the inventions covered by the licensed patent rights in the public interest. E upon termination or expiration of the license granted under this agreement by operation of law or otherwise, all rights including the right to use the work privileges and obligations arising from this agreement shall cease to exist, except for licensees obligation to pay royalties to licensor pursuant to the terms herein. Licensee understands and agrees to all terms and conditions set forth in this patent license agreement and said terms and conditions.
Uc davis sample template for exclusive patent license agreement 20208 2 infringement of, a valid claim of any issued, unexpired patent under patent rights, or b is covered by a claim in a pending patent application under patent rights. The agreement outlines how the licensor the party who owns the property will grant the license to use their property to the licensee the party who is using the licensors property. Licensee name the licensee, an individual with his main address located at or a. A patent license agreement is a contract between the patent owner, the licensor, and another, the licensee, that grants to the licensee the right to use, develop, manufacture, or sell the patented technology or process, rights otherwise exclusive to the patent owner. This is a standard trademark licensing agreement for parties who wish to license trademarked material. Subject to the terms and conditions set forth herein, agent, with the consent and approval of licensor, hereby grants to licensee, and licensee hereby accepts, this license to utilize the property as specifically set forth herein and in schedule b, solely and only in connection with the manufacture, marketing, sale and distribution of the products set forth in. The licenses granted in this agreement are subject to any rights required to be granted under prior research or sponsorship agreements, or retained by the u. Chipset license shall mean the chipset license agreement entered into by and between intel and nvidia dated november 18, 2004, as amended by amendment to chipset license agreement dated december 22, 2010. Agreement, including the terms as set forth in exhibit b, fields of use and financial considerations, which is attached to this agreement and hereby incorporated by reference, alliance hereby grants to licensee an exclusive right and license, subject to certain government. Drafting patent license agreements course description icensing is a key strategy by which companies realize significant value from their patents and technology. Copyright license agreement this license agreement this. Licensing patent rights to make, sell and lease the products. Subject to the terms and conditions of this agreement, gilead hereby grants to licensee a royaltyfree, nonexclusive, nonsublicensable other than a sublicense to an affiliate in accordance with section 2. This chapter provides a road map for licensing professionals to identify the most common terms, contractual obligations, and other provisions that are likely to be encountered in crafting a license agreement.
Sample exclusive patent license agreement between a licensor. This agreement sets out the specific terms of the license including the intended use of the patent, whether the license is exclusive or nonexclusive and term of the license agreement. Implied patent licenses for additional patents arising from an existing license agreement. Upon expiration, if licensee has complied with all terms and conditions of this. The licensor can be the owner of a, trademark, patent, service mark, trade secret, knowhow, or other ip. This agreement sets forth all of the covenants, promises, agreements, conditions and understandings between the parties and there are no covenants, promises, agreements or conditions, either oral or written, between them other than herein set forth. Exclusive patent license agreement template tech launch arizona. Americans with disabilities act ada section 508 statement of compliance. Trademark license agreement free download on upcounsel. Intellectual property license agreement this agreement is effective as of may 27, 2011 by and between futures industry association, with a place of business in washington, d. Upon expiration of the exclusivity term, the exclusive license granted pursuant to paragraph 3. A patent grants its owner the exclusive rights to make, use, offer to sell, and sell the patented technology or process. Patent licence agreement australia this patent licence agreement is designed for use in australia.
This l a agreement gilead sciences limited licensee r e c. Whereas, licensor and its affiliated undertakings are the owners of patent rights. Whereas, fia is a wellknown trade association that provides. This agreement sets out the specific terms of the license including the intended use of the patent, whether the license is exclusive or. A checklist to aid in negotiating a licensing agreement, much less to aid in actually preparing and writing the agreement itself, may sound like a simplistic tool to an experienced negotiator or contract attorney. Sample exclusive patent license agreement between a.
Fia and fia european principal traders association licensee. Lot agreement the lot agreement is an industryled networked, royaltyfree patent cross licensing agreement for transferred patents launched by industry participants, including canon, dropbox. Trademark license agreement instructions the following provisionbyprovision instructions will help you understand the terms of your agreement. Under this agreement, the licensee company has the sole rights for using the intellectual property during the length of the agreement. License agreement this license agreement this agreement is entered into. Needs to fill the pipeline business opportunity in view of financial problems of dreampharma interested in full pipeline strategy. A patent owner holds exclusive rights to market his or her invention but is also entitled to transfer those rights to another party. Guide was made possible by a cooperative agreement with the national institute for occupational safety and health, niosh oh009762. Whereas, bruk is the inventor and owns all right, title and interest in and to the invention and the licensed patent application, which invention is in the field of. Form of patent and knowhow license agreement pfizer as licensor this patent and knowhow license agreement the agreement is made effective as of the effective date, by and between pfizer inc. Should this agreement terminate or expire other than on a june 30, the annual fee for such portion of a year shall be determined by multiplying the amount set forth above for the given year by a fraction, the numerator of which shall be the number of days since the prior june.
The are 2 types of patent license agreement as under. Licensee shall use commercially reasonable efforts a to develop licensed products in accordance with the development plan, b to introduce licensed products. License agreement license contract library this license agreement library contains actual l e gal docum e nts draft e d by top law firms for th e ir cli e nts. A note on global accessdevelopment of technologies borne from harvard. The ability to draft, negotiate and interpret license agreements is a core skill for ip attorneys and other professionals who deal with licenses. Therefore, the trademark owner is well advised, often required by law, to contractually ensure that the quality standards are maintained so that the consumer is not deceived. This experience comes from years of inhouse experience, or working closely with the private equity and venture capital community in investments, acquisitions, and divestitures. Us e th e m for comp e titiv e int e llig e nc e, drafting docum e nts or to g e t information about transactions within a particular industry or s e ctor. University of rochester model exclusive license agreement revised 09222009. This patent license agreement is between the owner of the patent the licensor and the party to whom a license is granted the licensee. Prioris patent license agreement sample can help you understand the important terms business. A detailed checklist can help in preparing and writing the agreement.
It is like an assignment of rights by a property owner where the licensee has the. Although it sounds like an easy step that you could skip, it is crucial in ensuring all aspects of the agreement are covered. Pdf licensing agreements in the pharmaceutical industry. Exclusive patent license agreement between alliance and. This patent license agreement agreement is made and effective the date. This agreement hereinafter referred to as the agreement is made by and between xyz inc. This patent licence agreement is designed for use in india. This patent license agreement template grants a licensee exclusive rights to manufacture, sell, and use a patented. Apr 30, 2016 having an attorney draft a licensing agreement, or a licensing expert negotiate a licensing agreement, from start to finish is obviously the best way to proceed. Intellectual property and trademark license c term. This patent license agreement hereinafter pla is effective as of the effective date, by and between ncr corporation, a maryland corporation, having a principal place of business at 1700 s. Form of patent and knowhow license agreement pfizer as. Exclusive patent license agreement between alliance and company.
A licensing agreement is a legal document between two parties the licensor, or person who owns the intellectual property ip, and the licensee, or person who is receiving a license to use the ip. A patent license agreement checklist can be a very helpful tool when obtaining license agreements for a patent. Drafting a licensing agreement, a patentee perspective. Licensing agreements in the pharmaceutical industry article pdf available in journal of medical marketing 24. Emphasis is placed on agricultural technology licenses. Most attorneys on upcounsel offer free consultations. A patent license agreement typically grants a licensee exclusive rights to manufacture, sell, and use a patented invention, subjected to certain terms. Licensing can help a company expand into new markets effectively and easily while lending the licensee an established name and reputation. After all, most people in such positions are well educated and used to dealing with multiple projects having many details in the.
Double click on the pdf and a separate page will open. Licensed patents means alliances united states and foreign patents and patent applications listed in exhibit a, licensed patents which, is hereby. Uc davis sample template for exclusive patent license agreement. Ip agreements our team of professionals have significant experience in a variety of ip agreement matters, patent assignments, license agreements, and related matters. Licensee agrees that, notwithstanding any other provision of this agreement, licensee has no right to enforce the licensed patents against any such. Harvard also offers option agreements to companies that are considering licensing a harvard technology. Site licensing agreement en espanol pdf 62 kb 4 pages. The contents are solely the responsibility of the authors and do not necessarily represent the official views of niosh. A patent license agreement will also define the amount of royalties the licensee owes the licensor. Sample licensing agreements harvard office of technology.
Startup nonexclusive license agreement preamble this license agreement agreement is entered into between the national aeronautics and space administration nasa, an agency of the united states, hereinafter referred to as licensor, having its headquarters in washington, d. Indemnification clauses in tech licensing agreements. Sample license agreement with exclusive patent rights. If this patent license agreement is executed firstby the licensor and is no t executed by the license e and received by the licensor at the address and in the manner set forth. Your company name the licensor, a corporation organized and existing under the laws of the stateprovince of stateprovince, with its head office located at. Proper identification of correct parties in organizations where there are a number of corporate entities, whether on the side of the licensor or the licensee, you must ensure that the correct entity enters into the agreement and that it. This form will assist in drafting this type of licensing agreement and is available for immediate download. Implied licenses where cons issue from parent patents that previously have been licensed as to certain products, it may be presumed that, absent a clear indication of mutual intent to the contrary, those products are impliedly licensed under the cons as well.
Attached is a university of california, davis sample template for a license agreement providing an exclusive license under university of california patent rights. Within thirty 30 days after the end of the calendar quarter annual period during which this agreement shall be executed and delivered within thirty 30 days after the end of each following quarter annual period, licensee shall make a written report to licensor setting forth the gross sales of licensed patent rights sold, leased or used by. A trademark license agreement allows the licensee to use but not own the licensors trademark in connection with agreedon products or services. Having an attorney draft a licensing agreement, or a licensing expert negotiate a licensing agreement, from start to finish is obviously the best way to proceed. Agreement shall be deemed an act or omission by licensee under this agreement. Proper identification of correct parties in organizations where there are a number of corporate entities, whether on the side of the licensor or the licensee, you must ensure that the correct entity enters into the agreement and that it is properly identified. Claims shall mean all claims, including, without limitation, counterclaims and. A patent grants its owner the exclusive rights to make, use, offer to sell. Certicom is willing to grant and licensee accepts a licence under the patent rights restricted to the field of use in accordance with the terms and conditions set. A license agreement can be disadvantageous when the product or technology is not clearly defined or is not complete.
Cpwr the center for construction research and training 8484 georgia avenue suite silver spring, md 20910 phone 301. Download this trademark licensing agreement for free. If no such patent ever issues, the term shall be until twenty years from the effective date. The template is presented here on a nonbinding basis, and without obligation of any. This intellectual property license agreement this agreement is made and entered into as of june 6, 2009 the effective date, by and between texas instruments incorporated, having a place of business at 12500 ti boulevard, dallas, tx 75243 ti and maxlinear, inc.
Dec 21, 2011 the agreement which provides for the right of the non. Uc davis sample template for exclusive patent license. A licensing agreement is a document used by the owner of some form of intellectual property such as a logo, photograph, or song to give permission to some other individual to use that property. Upon expiration of the exclusivity term, the exclusive license granted pursuant to. An option agreement permits a company to hold a technology for a short period of time, during which the company can further evaluate its potential, or raise funding. Negotiated license agreements will include terms specifically tailored to the subject matter of the patent rights, the business of the licensee and other factors that may alter or replace the terms below. Since most people engaged in deal making are involved in multiple deals at the same time, important aspects can be forgotten or. This l a agreement gilead sciences limited licensee r e c i t. Before signing the licensing agreement, work with an experienced attorney to ensure you understand all the stipulations and negotiate with your counterparty to obtain reasonable terms. Sample exclusive license agreement uc berkeley ipira. A license agreementbeing a contract is like a fiduciary relationship.