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Tennessee Option to License Agreement

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Tennessee Option to License Agreement Powered By Docstoc
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                             This Option to License Agreement provides an individual or company a time-limited right to
                             obtain a full license agreement by exercising the option. These agreements are typically
                             used in situations where the individual or company needs to conduct further research and
                             development to evaluate the technology prior to entering into a full license agreement.
                             During the option period, the individual or company has an exclusive opportunity to
                             understand the technology and its market potential. At any time during the option period, a
                             formal license can be signed. This document is useful to an individual or company located
                             in Tennessee that is interested in acquiring intellectual property rights, but needs additional
                             time to conduct research.
             ®




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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
    Tennessee, 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]


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:



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    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.
6. Confidential Information:




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   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
   Tennessee, 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




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Description: This Option to License Agreement provides an individual or company a time-limited right to obtain a full license agreement by exercising the option. These agreements are typically used in situations where the individual or company needs to conduct further research and development to evaluate the technology prior to entering into a full license agreement. During the option period, the individual or company has an exclusive opportunity to understand the technology and its market potential. At any time during the option period, a formal license can be signed. This document is useful to an individual or company located in Tennessee that is interested in acquiring intellectual property rights, but needs additional time to conduct research.
This document is also part of a package Essential Tennessee Legal Documents 144 Documents Included