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ed the day and year first above written. LICENSOR Signature Print Name LICENSEE Signature Print Name Patent License Agreement 6 gs or other agreements, whether oral or written, relating to the subject matter of this Agreement. Patent License Agreement 5 IN WITNESS WHEREOF, the parties have caused this Agreement to be executgreement between Licensor and Licensee, and supersedes any prior understanding or representation of any kind preceding the date of this Agreement. There are no other promises, conditions, understandin. Headings. The headings for section herein are for convenience only and shall not affect the meaning of the provisions of this Agreement. 16. Entire Agreement. This Agreement constitutes the entire aing and mailed certified return receipt requested, postage prepaid, or delivered by overnight delivery service, addressed as follows: Patent License Agreement 4 If to Licensor: If to Licensee: 15vision would make the provision valid, then such provision shall be deemed to be construed as so limited. 14. Notice. Any notice required or otherwise given pursuant to this Agreement shall be in writainder of this Agreement shall continue in full force and effect. If any provision of this Agreement is deemed invalid or unenforceable by any court of competent jurisdiction, and if limiting such pronstitute an original and all of which, when taken together, shall constitute one agreement. 13. Severability. If any part or parts of this Agreement shall be held unenforceable for any reason, the remspects by, the laws of the State of ___________________, without regard to conflicts of law principles. 12. Counterparts. This Agreement may be executed in several counterparts, each of which shall conment"). The Licensor's Notice of Assignment must be sent to Licensee within 30 days of such assignment. 11. Governing Law. This Agreement shall be construed in accordance with, and governed in all re in the Patent without the consent of Licensee. Licensor must notify Licensee in writing in the event of that Licensor assigns all or a material part of this Agreement (the "Licensor's Notice of Assigsubstantially all of Licensee's assets, or to a purchaser or other transferee of a controlling equity interest in Licensee. Licensor shall have the right to transfer its interest in this Agreement andnder this Agreement without the prior written approval of Licensor. Licensee may, however, assign this Agreement without Licensor's prior written approval if such transfer is to a purchaser of all or days of such execution or alteration. Licensee may not sublicense this Agreement without prior written approval of Licensor. 10. Assignment. Licensee may not assign its rights, duties or obligations uof this Agreement. Licensee must submit written notification of the execution of any new sublicense agreement, or of any material alteration of an existing sublicense agreement, to Licensor within 30 easible. 9. Sublicense. (mark the applicable provision) Licensee shall have the right to sublicense this Agreement. Licensee shall be responsible for all operations and obligations of any sublicensee fense, and to grant the Party defending the Patent access to any records, materials, personnel, or other resources relevant to the defense of the Patent, unless such access would not be commercially fe, Licensor shall have the right to retain any recovery made against a third party for infringement. Regardless of which Party defends the Patent, both Parties hereby agree to cooperate in any such de to file a suit in that time period, than Licensor shall have the right to defend the Patent at its own expense. If Licensor defends the Patent due to Licensee's failure to file suit as set forth abovent License Agreement 3 retained by Licensee. If Licensee has knowledge of an infringement of the Patent, Licensee shall have 6 months in which to file a suit to defend the Patent. If Licensee failse Patent. 8. Infringement. Licensee shall be responsible, at its sole expense, to defend the Patent against infringement by any third party. Any recovery made as a result of such a defense may be Pat Licensee of any patent, copyright, trademark, or other intellectual property of any third party, where such claimed infringement arises out of Licensee's use, development, or other exploitation of thation. Licensee agrees to indemnify and hold harmless Licensor for any claims, suits, damages, actions, or other costs (including reasonable attorneys' fees) arising out of any claimed infringement byction, that it has reason to believe will adversely affect the value or integrity of the Patent. This shall include producing Licensed Products of a poor or dangerous quality. 7. Licensee's Indemnificts, damages, actions, or other costs arising out any breach of Licensor's warranties set forth in Section 4 above. 6. Licensee's Obligations. Licensee shall not take any action, nor omit to take any ase the Patent to any person or entity other than Licensee for the duration of this Agreement. 5. Licensor's Indemnification. Licensor agrees to indemnify and hold harmless Licensee for any claims, suisent for the License to be valid. c. (if License is exclusive) Licensor represents and warrants that Licensor has not licensed the Patent to any person or entity other than Licensee, nor will it licenght, title and interest in the Patent. b. Licensor represents and warrants that it has the legal authority to grant Licensee the License, and that no other person or entity is required to give its conore or after the termination of this Agreement. 4. Licensor's Representations and Warranties. a. Licensor represents and warrants that it is the sole and exclusive owner of the Patent, and owns all rint to the terms and conditions under Section 2 above, Licensee shall remain obligated to pay to Licensor any royalties due to Licensor for each unit of the Work sold, whether those units were sold befilure to pay deficient royalty amounts within the time allotted above shall be considered to be a material breach of this Agreement. e. In the event that this Agreement expires or is terminated pursua royalty payments are properly stated and accounted for. If it is determined that any Quarterly Royalty Payment has been deficient, Licensee shall have 14 days to pay Licensor the deficient amount. Fagreement. d. Licensor shall be given access by Licensee to Licensee's records, wherever and whenever commercially reasonable, in order to audit Licensee's stated sales records, and to confirm that allithin 30 days of the end of each quarter. Failure to submit Quarterly Reports or to make Quarterly Royalty Payments within the time allotted above shall be considered to be a material breach of this Aterly Reports must be received by Licensor no more than 7 days after the end of each quarter. Payment of each Quarterly Patent License Agreement 2 Royalty Payment must be paid to Licensor in full w the number of units of the Licensed Product sold for the thenending quarter, and the corresponding amount owed to Licensor as royalty payments for that quarter (the "Quarterly Royalty Payment"). Quarreement. c. Licensee shall submit to Licensor written quarterly reports (the "Quarterly Reports") at the end of each quarter of the calendar year (March 31; June 30; September 30; December 31) stating shall pay to Licensor an advance against the royalties discussed in Subsection (a) above, in the amount of $ . This advance shall be paid in full to Licensor within 7 days of the execution of this Agcts sold. Additional details: . (Include any considerations, deductions, or other formulae that will be used to determine the definition of "gross sales" for the purposes of this section.) b. Licensee to Licensor, and shall be the sole property of Licensor. 3. Payments. a. Licensee shall pay to Licensor a royalty of: per unit of the Licensed Product sold. % of the gross sales of all Licensed Produent, but shall not produce any further units. e. At the end of the Term, or upon any termination of this Agreement, all rights and privileges granted in the Patent pursuant to the License shall reverticensee shall cease using the Patent in the course of Licensee's business as soon as is commercially feasible. Licensee may sell any units of the Work that are on hand after termination of this Agreemt within 30 days of the date of termination stating Licensor's intent to terminate and the intended date of termination. d. In the event that this Agreement is terminated pursuant to this Section 3, Ltrolling equity holder of the Licensee. c. In order to terminate this Agreement pursuant to Subsection (b) above, Licensor must provide written notice to Licensee or to Licensee's successor in interesperiences a Change in Control. For the purposes of this Agreement, Change in Control shall mean a sale or other transfer of equity in the Licensee, resulting in a new person or entity becoming the cond of 12 consecutive months. iii. Licensee materially breaches a material provision, term, or condition under this Agreement, including. iv. Licensee sells all or substantially all of its assets, or exduct based upon or comprising the i. Licensee does not sell Patent (a "Licensed Product") within 12 months of the date of this Agreement. ii. Licensee ceases to sell any Licensed Product for any periothe terms of this Section 2. b. Should any one or more of the following enumerated events occur, Licensor shall have the right to terminate this Agreement: Patent License Agreement 1 units of a pro2. Term. a. The term of this Agreement shall begin on the date written above and shall continue in full force and effect for a period of years (the "Term"), unless terminated earlier pursuant to this ownership of the Patent. Licensee may not make any other use of the Patent nor practice under the Patent in any manner other than those authorized above without prior written approval from Licensor. usive nonexclusive. Licensor shall remain the sole owner of the Patent. Licensee shall enjoy only the rights set forth above, and nothing in this Agreement shall entitle Licensee to make any claim toet forth herein, the Parties agree as follows: 1. Grant of License. Licensor hereby grants to Licensee a license to use the Patent in the following manner (the "License"): . The License shall be exclded use of Patent) (the "Work"), under the terms set forth in this Agreement; NOW THEREFORE, in consideration of the mutual promises, covenants, warranties, and other good and valuable consideration sd Trademark Office, Patent Application Number (the "Patent Application"). AND WHEREAS, Licensor wishes to permit Licensee to use the Patent in the preparation of (Brief description of Licensee's inten invention) (the "Invention"), and has been granted United States Letters Patent for said invention, Patent No. (the "Patent"), granted on the patent application filed with the United States Patent an PATENT LICENSE AGREEMENT THIS AGREEMENT is made this day of , 20 , by and between ("Licensor") and ("Licensee", and collectively, the "Parties"). WHEREAS, Licensor has invented (Brief description ofsor will guarantee theses basic representations by indemnifying the licensee against any damages that the licensee might suffer due to the failure of the licensor to live up to those representations. s the ownership interest in the patent that it claims to have, and that it therefore has the right to grant the license in the first place. The terms of the sample agreement below state that the licenearly the method by which royalty payments will be calculated. Licensor's Representations and Warranties The most basic representation that a licensor will generally be expected to make is that it had from gross sales before the percentage is taken, i.e., the amount of products returned by customers, expenses incurred in advertising the product, etc. It is important in this provision to define clpenses from gross sales revenue before a royalty percentage is applied. For example, will the royalty be a percentage of the total gross sales received by licensee? Or will certain expenses be deductepercentage of total sales is to select a percentage of gross sales revenues from all sales of the licensed products. However, in many instances, a licensee will be given the right to deduct certain exthe licensee. In other cases, a royalty is computed as a percentage of the sales revenue received by the licensee in the sale of licensed products. The simplest method of calculating the royalty as a m the earliest claimed filing date. Payments There are a number of different ways of calculating royalty payments. In some cases, a royalty is a flat amount paid based on the number of units sold by atent. Patents generally have a life of either 17 or 20 years, depending upon when they were filed with the U.S. Patent & Trademark Office. Patents filed after June 8, 1995 have a term of 20 years froope and boundaries of the license. Term The term of the license agreement, and of the license granted therein, is generally either for a fixed period of years or for the full life of the licensor's p of the patent to certain particular commercial uses, or to specific geographic areas. Make sure you describe any limitations upon licensee's permitted uses in detail, thus clearly establishing the scable to enjoy. You may grant the licensee the right to use the patent for any purpose whatsoever. Or you may place limitations upon the licensee's use of the patent, i.e., restricting the exploitationsult a competent attorney who can assist you in drafting a suitable agreement. Grant of License The license granted in this type of agreement spells out the kinds of rights that the licensee will be sic agreement, addressing the key elements of licensing a patent, and receiving royalty payments in return for that license. If your situation requires treatment of more complex issues, you should conrmation about U.S. patent law, visit the USPTO website. Instructions for Patent License Agreement Patent License Agreements can be extremely complex. The sample agreement included in this kit is a baonic submission; or b. Sign the cover sheet using some other form of electronic signature specified by the Director. For more information about recording your patent license agreement or general infoer sheet must either; a. Place a symbol comprised of letters, numbers, and/or punctuation marks between forward slash marks submission (e.g. /Thomas O'Malley III/) in the signature block on the electrld be mailed; 6. The date the document was executed; 7. The signature of the party submitting the document. For an assignment document or name change filed electronically, the person who signs the covecorded, or an indication that the document is filed together with a patent application; 5. The name and address of the party to whom correspondence concerning the request to record the document shoung title to a trademark or patent application, registration or patent: Each trademark or patent application number or each trademark registration number or patent against which the document is to be r known, a copy of the application or a reproduction of the trademark must be submitted, along with an estimate of the date that the USPTO received the application; or b. For any other document affectirk registration number and each trademark application number, if known, against which the U.S. Patent and Trademark Office (USPTO) is to record the document. If the trademark application number is notving the interest; A description of the interest conveyed or transaction to be recorded; Identification of the interests involved: a. For trademark assignments and trademark name changes: Each trademagreement with a cover sheer, which must include the following information (reproduced from CFR §3.31): 1. 2. 3. 4. The name of the party conveying the interest; The name and address of the party receionfidential information you would not want to become available for public consumption. If you do choose to record your patent license with the USPTO, you may need to accompany your submitted license ahat recordation also renders the patent license agreement becomes a public document. It may therefore not be in your interests to record such a license if the agreement granting the license contains cyour patent license in the USPTO is that it creates a public record, giving subsequent purchasers of the patent constructive knowledge of the existence of an outstanding licensee. It is worth noting the application. However, whereas patent assignments enjoy a host of benefits and protections by virtue of being recorded, patent licenses enjoy only limited benefits. The primary benefit of recording to prevent the licensee from exploiting the patent. Patent assignments may be registered with the U.S. Patent and Trademark Office (USPTO), the patent will be issued to the assignee upon approval of t to license the use of the patent to other persons. Patent licenses are not assignments, and they do not transfer ownership of the patent. Instead, they act as agreements on the part of the owner not ition of matter (or any new and useful improvement thereof). Further, the material to be patented must be novel and non-obvious. The owner or registrant of a patent has the right under U.S. patent lawd of time, during which the inventor has the exclusive right to exploit the invention. In order to qualify for a patent, the invention must be a new and useful process, machine, manufacture, or composIntroduction to U.S. Patents A patent is a legal device that protects an inventor and his invention. The patent prohibits other persons from using or profiting from that invention for a specific periot. NOTE: This kit is designed to be used as a guide for drafting your own agreement. You are advised to have a competent patent attorney review any patent license agreement before you sign it. Basic of a license. Included in this kit is a sample form for drafting a patent license agreement, along with general instructions explaining the significance and operation of each provision in the agreemene rights to make and market the invention, the owner is entitled to transfer those rights to another party either completely, by way of an assignment, or for a limited time, duration or scope, by way atent is a legal device that protects inventors, prohibiting other persons from producing or profiting from their inventions for a defined period of time. While the patent owner holds certain exclusivFINDLEGALFORMS.COM Patent License Agreement ­ Kit This kit includes information and tools that will assist you in drafting a patent license agreement, licensing the use of a United States patent. A p