Option to License
Agreement
This Option to License Agreement is intended to be used by an
Individual/Company (Grantor) to grant an option to acquire an exclusive,
worldwide license to practice Patent Rights and Technology Rights, to the
other Individual/Company (Grantee) subject to non-disclosure of
Confidential Information and in consideration of payment by the Grantee to
the Grantor.
ALL INFORMATION AND FORMS ARE PROVIDED “AS IS” WITHOUT ANY EXPRESS OR IMPLIED
WARRANTY, INCLUDING AS TO LEGAL EFFECT OR COMPLETENESS. They are for guidance and should be
modified by you or your attorney to meet your specific needs and the laws of your state. Use at your own
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Entire document © Docstoc, Inc., 2010, 2011
Attorney Drafted
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OPTION TO LICENSE AGREEMENT
THIS OPTION TO LICENSE AGREEMENT (hereinafter “Agreement”) is made and
entered into between _________________________ [ Instruction: Insert the name of
company], a company organized under _______________ [Instruction: Insert the state] laws
(hereinafter “Grantor”) having its principle office at,
______________________________________________ [Instruction: Insert the address of
company] and __________________________ [ Instruction: Insert the name of company] a
company organized under the laws of __________________ [Instruction: insert the state]
(hereinafter “Grantee”), having its principle office at
__________________________________________ [Instruction: Insert the address of
company].
1. Definitions:
Patent and Technology Rights means the intellectual property described in Exhibit A.
2. Grant of Option: Grantor hereby grants Grantee an exclusive option to acquire an
exclusive, worldwide license to practice Patent Rights and Technology Rights under terms
set forth in the License Agreement attached as Exhibit B.
3. Exercise of the Option: Grantee may exercise its option at any time during the option
period by notifying Grantor in writing of its intent to exercise this option.
4. Confidential Information:
a) Upon the execution of this Agreement Grantor, will disclose all relevant Confidential
Information as defined in Section 4 (b) below, other information, and data relating to
Patent and Technology Rights, to enable Grantee to evaluate the possible commercial
significance of the Patent Rights and Technology Rights.
b) In addition to the initial disclosure described in Section 4 (a), the parties may disclose
other Confidential Information to each other, from time to time, in connection with work
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contemplated under this Agreement. All such information whether disclosed initially or
during the option Period will be referred to as "Confidential Information." Each party will
use reasonable efforts to prevent the disclosure of any of the other party's Confidential
Information to third parties during the term and after the termination of this Agreement,
provided that the recipient party's obligation will not apply to information that:
i. is not disclosed in writing or reduced to writing and so marked with an appropriate
confidentiality legend within ______ (__) [◊ thirty (30)] days of disclosure;
ii. is already in the recipient party's possession at the time of disclosure thereof and not
obtained directly or indirectly from the other, as proven by the receiving party’s
written records;
iii. is or later becomes published through no fault of the recipient party;
iv. is lawfully acquired from a third party having no obligations of confidentiality to the
disclosing party;
v. is independently developed by the recipient party; or
is required by law or regulation to be disclosed; provided, however that, the receiving
party gives the disclosing party prompt notice of such disclosure and reasonably
cooperates with the disclosing party’s efforts to secure an appropriate protective
order.
In the event that information is required to be disclosed under Sections 4 (a) and (b) above, the
party required to make disclosure will notify the other to allow that party to assert whatever
exclusions or exemptions may be available to it under such law or regulation.
5. Payment:
In consideration for the option granted herein, Grantee agrees to pay Grantor ________
($___) [Instruction: Insert the payment amount E.g., Fifty dollars only ($ 50)] within
______ (__) [◊ thirty (30)] days after the effective date.
6. Termination:
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a) Grantee may terminate this Agreement by giving ______ (__) [thirty (30)] days
[Comment: these numbers are not provided by the law, but can be any number the
user chooses] written notice to Grantor.
b) Grantor may terminate this Agreement upon ______ (__) [◊ thirty (30)] days written
notice to Grantee if Grantee breaches or defaults on its payments obligations under
Section 5 herein, unless, before the end of the 30 day period, Grantee has cured the
breach or default to the satisfaction of Grantor and so notifies Grantor in writing, stating
the manner of the cure.
7. Assignment: This Agreement shall bind and benefit the parties' successors and assigns.
Neither party may assign rights under this Agreement without the prior written consent of
the other party.
8. Indemnity: Grantee shall indemnify, hold harmless, and defend Grantor and its trustees,
officers, employees and agents against any and all allegations and actions for death, illness,
personal injury, property damage, and improper business practices arising of the optioned
rights.
9. Notice: Any notice required by this Agreement will be given by personal delivery
(including delivery by reputable messenger services such as Federal Express) or by prepaid,
first class, certified mail, return receipt requested, addressed to:
GRANTOR : ____________________________________
____________________________________
____________________________________
____________________________________
GRANTEE : ____________________________________
____________________________________
____________________________________
____________________________________
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Or at such other addresses as may be given from time to time in accordance with the terms
of this notice provision
10. Amendment and Modification: This Agreement sets forth the entire agreement between
the parties with respect to the subject matter hereof, and may not be modified or amended
except by written agreement executed by the parties hereto.
11. Independent Business Relationship: Grantor and Grantee are independent contractors and
are not and shall not be construed as joint ventures, partners, employer/employee, or agents
of the other and neither shall have the power to bind or obligate the other, except as set forth
in this Agreement.
12. Warranty: Optioned rights are experimental in nature and are provided WITHOUT
WARRANTY OR REPRESENTATIONS OF ANY SORT, EXPRESS OR IMPLIED,
INCLUDING WITHOUT LIMITATION WARRANTIES OF MERCHANTABILITY
AND FITNESS FOR A PARTICULAR PURPOSE OF NON-INFRINGEMENT. Grantor
makes no representations and provides no warranty that the use of the optioned rights will
not infringe any patent or proprietary rights of third parties.
13. Counterparts: This Agreement may be executed in several counterparts, each of which
shall be an original, but all of which together shall constitute one and the same Agreement.
14. Governing Law/ Forum: This Agreement shall be governed by the laws of the State of
Mississippi, applicable to agreements made and to be wholly performed therein.
15. Articles and Other Headings: The paragraph headings used in this Agreement are
provided for convenience of reference only and shall not be used to interpret the provisions
of this Agreement. In the event any provision of this Agreement proves to be illegal or
unenforceable, the remaining provisions of this Agreement shall be interpreted as if such
illegal or unenforceable provision were not a part of this Agreement.
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16. Survival: The obligations set forth in this Agreement shall survive expiration or termination
of this Agreement and shall continue for a period of ________ (__) [◊ five (5)] years from
the date of disclosure of the confidential information, except for obligations regarding trade
secrets, which shall endure for so long as a trade secret is protected as such.
To evidence their agreement to the foregoing terms and conditions, the Grantor and the Grantee
have executed this Agreement below.
[Instruction: Insert name and address of Grantor]
By : ________________________
Title : ________________________
[Instruction: Insert name and address of Grantee]
By : ________________________
Title : ________________________
EXHIBIT A.
PATENT RIGHTS & TECHNOLOGY
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EXHIBIT B
LICENSE AGREEMENT
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This agreement is made and executed on _____ day __________[Month], 20__ between
_____________________(“Licensor”) an individual/Corporate doing business at ___________
_______________________ [Instruction: Insert the address of the Licensor] in the State of
_____________ [Instruction: Insert the name of the State] and _______________________
(“Licensee”) an individual/Corporate doing business at _________________________________
______________________ [Instruction: Insert the address of the Licensee] in the State of
_________________ [Instruction: Insert the name of the State] for a license to use
_________________ [Instruction: Insert the name/description of the material to be
licensed].
In consideration of mutual promises contained in this agreement, the parties mutually agree upon
as follows:
1. Grant of License: Licensor hereby grants licensee a license to occupy and use
______________ [Insert the name of the licensed product/material] for the original
and/or extended term of this agreement and subject to all the terms and conditions of this
agreement. All other rights including but not limited to the ownership right shall vest in the
Licensor, during and after the termination of this agreement.
2. Permitted Uses: The Licensee is permitted to use the Product as follows:
a) For any purpose specifically mentioned herein in this agreement.
b) For ___________________________________________________________________
___________________________________________________________.
c) For _________________________________________________________________
_____________________________________________________________.
d) For _________________________________________________________________
_________________________________________________________________.
[Instruction: Insert the permitted use as agreed upon]
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3. Prohibited Uses: The Licensee is prohibited to use the product beyond any use as
specifically agreed and mentioned in this agreement including but not limited to:
a) For any purpose specifically denied herein in this agreement.
b) For ___________________________________________________________________
_________________________________________________________________.
c) For _________________________________________________________________
___________________________________________________________________.
d) For _________________________________________________________________
___________________________________________________________________.
[Instruction: Insert the Prohibited use as agreed upon]
4. Term and Termination: The term of this License agreement shall commence upon the
signing of this agreement and shall remain in force for a period of _____ [Instruction: Insert
the Number of years/month] years/months unless terminated by either party.
a) In case of termination for reason of breach or misuse of this agreement by other party,
either party may, terminate the agreement by serving a notice of 30 days.
b) The Licensor may, without any cause, terminate the agreement at any time during the
term by serving a notice of 30 days.
c) __________________________ [Instruction: Insert other terms/conditions as agreed
upon by the parties]
Upon termination of this agreement for whatsoever reason, the Licensee shall stop the use the
material/product with immediate effect and shall in no manner use or derive any benefit from
its use.
5. Payment/Royalty: The licensor shall pay to licensee an amount of
_________________________________ U.S. Dollars, $ ___________[Instruction: Insert
the initial amount to be paid at the time of signing of the agreement] at the time of
signing of this agreement while an amount of _____________________________________
U.S. Dollars, $ ____________ [Instruction: Insert the periodical (monthly/yearly)
amount to be paid at every month/year] shall be paid every month/year till the entire term
of this agreement.
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6. Confidential Information:
a) Licensor, shall disclose all relevant Confidential Information as defined in Section 6 (b)
below, other information, and data relating to Patent and Technology Rights, to enable
Licensee to evaluate the possible commercial significance of the Patent Rights and
Technology Rights.
b) In addition to the initial disclosure described in Section 6 (a), the parties may disclose
other Confidential Information to each other, from time to time, in connection with work
contemplated under this Agreement. All such information whether disclosed initially or
during the option Period will be referred to as "Confidential Information." Each party will
use reasonable efforts to prevent the disclosure of any of the other party's Confidential
Information to third parties during the term of, and after the termination of this
Agreement, provided that the recipient party's obligation will not apply to information
that:
vi. is not disclosed in writing or reduced to writing and so marked with an appropriate
confidentiality legend within ______ (__) [◊ thirty (30)] days of disclosure;
vii. is already in the recipient party's possession at the time of disclosure thereof and not
obtained directly or indirectly from the other, as proven by the receiving party’s
written records;
viii. is or later becomes published through no fault of the recipient party;
ix. is lawfully acquired from a third party having no obligations of confidentiality to the
disclosing party;
x. is independently developed by the recipient party; or
is required by law or regulation to be disclosed; provided, however that, the receiving
party gives the disclosing party prompt notice of such disclosure and reasonably
cooperates with the disclosing party’s efforts to secure an appropriate protective
order.
In the event that information is required to be disclosed under Sections 6 (a) and (b) above, the
party required to make disclosure will notify the other to allow that party to assert whatever
exclusions or exemptions may be available to it under such law or regulation
.
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7. Modification: Any modification of this agreement or any additional obligation assumed by
either party in connection to this agreement shall be binding only if evidenced in writing
signed by both the parties or by authorized representative of the party.
8. Assignment/Transfer: This Agreement shall bind and benefit the parties' successors and
assigns. Neither party may assign rights under this Agreement without the prior written
consent of the other party.
9. Warranties: Licensor warrants that it has the right to license the rights granted under this
Agreement to use Licensed Materials, that it has obtained any and all necessary permissions
from third parties to license the Licensed Materials, and that use of the Licensed Materials by
Authorized Users in accordance with the terms of this Agreement shall not infringe the
copyright of any third party. The Licensor shall indemnify and hold Licensee and Authorized
Users harmless for any losses, claims, damages, awards, penalties, or injuries incurred,
including reasonable attorney's fees, which arise from any claim by any third party of an
alleged infringement of copyright or any other property right arising out of the use of the
Licensed Materials by the Licensee or any Authorized User in accordance with the terms of
this Agreement. This indemnity shall survive the termination of this agreement. NO
LIMITATION OF LIABILITY SET FORTH ELSEWHERE IN THIS AGREEMENT IS
APPLICABLE TO THIS INDEMNIFICATION.
10. Indemnity: Licensee agrees and undertakes to indemnify and hold harmless Licensor of and
from any and all claims, demands, losses, causes of action, damage, lawsuits, judgments,
including attorneys' fees and costs, arising out of or relating to the work of Licensee.
11. Force Majeure: Neither party shall be liable in damages or have the right to terminate this
Agreement for any delay or default in performing hereunder if such delay or default is caused
by conditions beyond its control including, but not limited to Acts of God, Government
restrictions (including the denial or cancellation of any export or other necessary license),
wars, insurrections and/or any other cause beyond the reasonable control of the party whose
performance is affected.
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12. Notices: Any notice provided for or concerning this agreement shall be in writing and shall
be deemed sufficiently given when sent through certificate or registered mail if sent to the
respective address of the party as mentioned herein as follows:
Licensor : ____________________________________
____________________________________
____________________________________
____________________________________
Licensee : ____________________________________
____________________________________
____________________________________
____________________________________
Or at such other addresses as may be given from time to time in accordance with the terms of
this notice provision
13. Entire Agreement: This Agreement constitutes the entire agreement of the parties and
supersedes all prior communications, understandings and agreements relating to the subject
matter hereof, whether oral or written.
14. Articles and Other Headings: The paragraph headings used in this Agreement are provided
for convenience of reference only and shall not be used to interpret the provisions of this
Agreement. In the event any provision of this Agreement proves to be illegal or
unenforceable, the remaining provisions of this Agreement shall be interpreted as if such
illegal or unenforceable provision were not a part of this Agreement.
15. Attorney’s Fees: in the event that any lawsuit is filed in relation to this agreement, the
unsuccessful party in the action shall pay to the successful party, in addition to all the sums
that either party maybe called on to pay, a reasonable sum for the successful party’s attorney
fees.
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16. Governing Law/ Forum: This Agreement shall be governed by the laws of the State of
Mississippi, applicable to agreements made and to be wholly performed therein.
17. Survival: The obligations set forth in this Agreement shall survive expiration or termination
of this Agreement and shall continue during the term of the agreement and thereafter.
IN WITNESS WHEREOF, the parties have executed this agreement as of the date first above
written.
LICENSOR LICENSEE
___________________________ ____________________________
Authorized Signature Authorized Signature
___________________________ ____________________________
Printed name and Title Printed name and Title
Note: Carefully read and follow the Instructions and Comments contained in this document for
your customization to suit your specific circumstances and requirements. You will want to
delete the Instructions and Comments from open bracket (“[“) to close bracket (“]”) after
reading and following them. You (or your attorney) may want to make additional modifications
to meet your specific needs and the laws of your state
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or something similar, or there is a blank for the user to complete, please note that although Docstoc believes the
information or number may be any that the user chooses, and that there is no law governing what the
information or number should be, you might want to verify this, including by consulting with your own attorney
practicing in your state, and be reasonable.
INFORMATION AND FORMS ARE PROVIDED "AS IS" WITHOUT ANY EXPRESS OR IMPLIED WARRANTY
OF ANY KIND INCLUDING WARRANTIES OF MERCHANTABILITY, NONINFRINGEMENT OF
INTELLECTUAL PROPERTY, OR FITNESS FOR ANY PARTICULAR PURPOSE. IN NO EVENT SHALL
DOCSTOC, INC., OR ITS AGENTS, OFFICERS, ATTORNEYS, ETC., BE LIABLE FOR ANY DAMAGES
WHATSOEVER (INCLUDING, WITHOUT LIMITATION, DAMAGES FOR LOSS OF PROFITS, BUSINESS
INTERRUPTION, LOSS OF INFORMATION) ARISING OUT OF THE USE OF OR INABILITY TO USE THE
MATERIALS, EVEN IF DOCSTOC HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES.
Your use of this document is deemed to be your agreement to the foregoing, the disclaimers on the cover page,
and that you have read and agree to our Terms of Service
(http://www.docstoc.com/popterm.aspx?page_id=15), as well as our disclaimer that Legal information is not
legal advice, and the important content available here: Read More
(http://www.docstoc.com/popterm.aspx?page_id=114)
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