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International Patent Licensing Agreement

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International Patent Licensing Agreement Powered By Docstoc
					International Patent
Licensing Agreement
This International Patent Licensing Agreement will allow a Licensee to distribute or
manufacture a Licensor’s patented products in a foreign country. This agreement can be
customized to grant an exclusive or non-exclusive license. Customize the type of
products that will be licensed, payment arrangements, the length of the agreement,
quality control standards, and much more. This agreement is ideal for small businesses
or other entities that want to grant or obtain a license to manufacture or distribute
patented products in a foreign country.
              INTERNATIONAL PATENT LICENSING AGREEMENT

THIS INTERNATIONAL PATENT LICENSING AGREEMENT (hereinafter referred to as
the “Agreement”) is made on _________________ [Instructions: Insert the date of this
agreement] between _______________________ [Instructions: Insert the name of the party
granting     the     license]   (hereinafter  referred to   as   the    “Licensor”)     of
____________________________________ [Instructions: Insert the Licensor’s address] and
_______________________ [Instructions: Insert the name of the party obtaining the license]
(hereinafter referred to as the “Licensee”) of ____________________________________.
[Instructions: Insert the Licensee’s address]

                                                     RECITALS

WHEREAS, Licensor is the owner of validly issued and subsisting patents relating to the
manufacture of ________________________ [Instructions: Insert the type of product(s)
subject to this agreement] (hereinafter referred to as the “Products”) which patents are
registered in the United States of America and _______________________ [Instructions: Insert
the name of the foreign country the patents are also registered in] bearing the registration
numbers and descriptions as set forth in “Exhibit A” attached hereto and made a part hereof;

WHEREAS, Licensee desires to obtain a [Instructions: Choose one] nonexclusive OR
exclusive license to practice the art described in the Patents and to use the know-how (which
Licensor owns) in connection with the Patents, and Licensor desires to grant these licenses to
Licensee on terms and conditions acceptable to the parties; and

WHEREAS, the quality of the goods manufactured by the Licensee pursuant to this Agreement
and the maintenance of the know-how in confidence are material conditions of this Agreement
and Licensor's grant of the licenses contained in this Agreement;

NOW, THEREFORE, for and in consideration of the matters described above, and of the
mutual benefits and obligations set forth in this Agreement, the parties agree as follows:

                                                       TERMS

1. GRANT OF RIGHTS

Licensor grants Licensee the [Instructions: Choose one] nonexclusive OR exclusive license to
manufacture, use, and sell as the Products as described in the Patents
within _______________________ [Instructions: Insert the territory Licensee will have the
right to sell the products in] (hereinafter referred to as the “Territory”) and to use the know-
how in the manufacture, use, and sale of the Products within the Territory, subject to the terms
and conditions set forth in this Agreement. Licensee may not manufacture, use, or sell the
Products produced pursuant to the license granted by this Section for use, sale, or resale outside
of the Territory. If Licensor develops or discovers modifications to or improvements in the
technology embodied in the Patents and know-how that it deems in its sole discretion to be


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useful to the Licensee's use of the rights granted by this Section (hereinafter referred to as the
“Improvements”), Licensor promptly must disclose the Improvements to Licensee in writing and
offer a license to use the Improvements upon the terms and conditions set forth in this
Agreement.

2. GRANT BACK TO LICENSOR

Licensee grants to Licensor a nonexclusive, royalty-free license to use any modification to or
improvement in any technology used by Licensee pursuant to this Agreement and promptly to
disclose all such modifications and improvements to Licensor.

3. WARRANTIES BY LICENSOR

Licensor warrants and represents that it is the sole owner of the Patents, that the Patents are
validly issued and in effect, that to its knowledge no claim has been made contesting the validity
of any of the Patents, and that the practice of the art disclosed in the Patents will not constitute an
infringement of the rights of any third party. Licensor indemnifies and holds Licensee harmless
against any loss, damage, or claim, including reasonable attorney fees, arising from or relating to
any breach of the warranties contained in this Section. Licensor reserves the right to control the
defense of any resulting suit or claim, including without limitation the right to choose counsel
and to settle and dispose of the suit or claim as it deems appropriate in its sole discretion.

4. ROYALTIES

In consideration of the rights granted in this Agreement, Licensee will pay to the Licensor the
following:

    A. Initial Payment. Licensee will pay to Licensor $________ United States Dollars
       [Instructions: Insert the U.S. Dollars the Licensee will pay upon the execution of this
       agreement] upon the execution of this Agreement.

    B. Additional Royalties. Licensee will pay to Licensor on the ____ [Instructions: Insert the
       day of the month the Licensee will make the monthly royalty payment] day of each
       month during any term of this Agreement a sum equal to _____% [Instructions: Insert
       the percentage of gross sales Licensee will pay the Licensor as a royalty] of the gross
       revenues obtained by Licensee during the preceding month from (i) the sale, lease, or
       other disposition of any good or article manufactured by Licensee pursuant to this
       Agreement; and (ii) the provision of technical, advisory, design, or development services to
       Licensee's customers in connection with any good or article manufactured pursuant to
       this Agreement. As used in this Section, the term gross revenue means the total of all
       consideration received by Licensee without deduction or allowance for any item of cost
       or expense.

    C. Currency. All payments required by this Agreement must be made in United States
       dollars and be delivered for deposit to the account or accounts specified from time to time
       by Licensor.



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    D. Access to Records. Licensee will maintain records of (i) the manufacture, lease, sale, or
       other disposition of all goods and articles manufactured pursuant to this Agreement; and
       (ii) the provision of technical, advisory, design, or development services to Licensee's
       customers in connection with any good or article manufactured pursuant to this
       Agreement. These records must be accurately maintained and conform to all generally
       accepted accounting standards. Licensee will permit access by Licensor to all these
       records during normal business hours. If Licensor discovers that the records have not
       been maintained or are not accurate or that Licensee has failed to make payment of any
       royalties required by the Agreement as shown by the records, Licensee shall reimburse
       Licensor for the cost of reviewing the records, including reimbursement of all reasonable
       accountant and attorney fees.

5. TECHNICAL ASSISTANCE

Licensor will provide, at Licensee’s sole expense, sufficient technical assistance to enable
Licensee to manufacture the Products.

6. CONFIDENTIALITY

Licensee acknowledges and agrees that all know-how and other manufacturing, sales, marketing,
technical, and other information disclosed to it by Licensor is confidential and proprietary to
Licensor (hereinafter referred to as the “Confidential Information”) and acknowledges that the
unauthorized disclosure of any of the Confidential Information will result in immediate and
irreparable competitive injury to Licensor. Licensee may disclose the Confidential Information
only to those of its employees to whom such disclosure is necessary to permit the manufacture,
use, and sale of the Products and may not disclose any of the Confidential Information to any
other person or entity without the prior written approval of Licensor.

7. QUALITY

All goods manufactured, sold, or otherwise disposed of by Licensee pursuant to this Agreement
must meet the quality specifications set forth on “Exhibit B” to this Agreement, which is
incorporated by reference. Licensee will permit Licensor access to its manufacturing facilities
during normal working hours for the purpose of ensuring that Licensee's manufacturing practices
conform to the requirements of this Section.

8. ASSIGNMENT

Licensee may not grant any sublicense of any of the rights granted by this Agreement without the
prior written permission of Licensor.

9. INFRINGEMENT

If Licensee becomes aware of any act that may constitute an infringement of any right granted by
this Agreement, Licensee promptly must notify Licensor of that act. Licensee will, at Licensor's



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expense, assist Licensor in the prosecution of any claim or action arising from or relating to that
act, provided that Licensee must bear all attorney fees and expenses incurred as a result of
Licensee's use of counsel other than or in addition to counsel retained by Licensor.

10. TERM AND TERMINATION

    A. Initial Term. This Agreement is effective as of _________________ [Instructions:
       Insert the commencement date of the license] and will remain in effect through and
       until _________________ [Instructions: Insert the termination date of the license]
       unless earlier terminated pursuant to this Section.

    B. Termination by Consent. This Agreement may be terminated at any time by the written
       consent of both the Licensor and Licensee.

    C. Early Termination by Licensor. Licensor may terminate this Agreement without cause
       on _________________ [Instructions: Insert the number of days written notice
       Licensor must provide to Licensee to terminate this agreement without cause] days
       prior written notice to Licensee. In addition, Licensor may terminate this Agreement
       on _________________ [Instructions: Insert the number of days written notice
       Licensor must provide to Licensee to terminate this agreement for cause] days prior
       written notice if Licensee breaches any term of this Agreement.

    D. Effect of Termination. The expiration or termination of this Agreement will not affect
       any accrued monetary obligation owed to Licensor by Licensee.

11. TAXES, EXPENSES, AND COMPLIANCE WITH LAW

Licensee will pay and discharge or cause to be paid and discharged as and when they become
due all taxes, levies, assessments, governmental charges, fines, and penalties of whatsoever
nature lawfully imposed in connection with its activities under this Agreement and any income
derived from this Agreement. Licensee must at all times comply with and assist Licensor to
comply with any and all applicable conventions, laws, rules, regulations, and bylaws of
whatsoever nature incident to any or all of its activities contemplated by this Agreement,
including, but not limited to, United States export control regulations, the United States Foreign
Corrupt Practices Act, and the United States anti-boycott regulations. Licensee will promptly
deliver to Licensor a copy of any notice or instrument that alleges a violation of any of these
laws. Notwithstanding any other provision of this Agreement to the contrary, it is a specific
condition precedent to the performance by Licensor of its obligations under this Agreement, and
specifically to any transfer of technology by Licensor to Licensee, that Licensor receive from the
government of the United States of America an export license or licenses permitting the export
of any and all samples, drawings, manuals, technology, intellectual property rights, and other
information and data relating to any goods manufactured, sold, or otherwise disposed of pursuant
to this Agreement and otherwise necessary to the proper fulfillment by Licensor of its obligations
under this Agreement.

12. COUNTERPARTS



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This Agreement may be executed in any number of counterparts, each of which shall be deemed
to be an original, but all of which together shall constitute but one and the same instrument.

13. COMPLIANCE WITH LAWS

In performing under this Agreement, all applicable governmental laws, regulations, orders, and
other rules of duly-constituted authority will be followed and complied with in all respects by
both parties.

14. GOVERNING LAW

This Agreement shall be governed by, construed, and enforced in accordance with the laws of
the State of ______________________. [Instructions: Insert the state’s laws that will govern
this agreement]

15. NOTICES

Unless provided herein to the contrary, any notice provided for or concerning this Agreement
shall be in writing and shall be deemed sufficiently given when sent by certified or registered
mail if sent to the respective address of each party as set forth at the beginning of this
Agreement.

16. ATTORNEYS’ 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 may be called
on to pay, a reasonable sum for the successful party's attorney fees.

17. MANDATORY ARBITRATION

Notwithstanding the foregoing, and anything herein to the contrary, any dispute under this
Agreement shall be required to be resolved by binding arbitration of the parties hereto. If the
parties cannot agree on an arbitrator, each party shall select one arbitrator and both arbitrators
shall then select a third. The third arbitrator so selected shall arbitrate said dispute. The
arbitration shall be governed by the rules of the American Arbitration Association then in force
and effect.

WITNESS our signatures as of the day and date first above stated.

LICENSOR                                                 LICENSEE



By: ____________________________                         By: _______________________________
I have authority to bind the Company                    I have authority to bind the Company




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                                                    EXHIBIT A

                                               PATENT DETAILS


[Instructions: Insert or attach the details of the patents that will be granted under this
agreement. e.g. U.S. patent registration numbers, foreign registration numbers,
instructions, processes, procedures, etc.]




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                                                    EXHIBIT B

                                           QUALITY STANDARDS


[Instructions: Insert or attach the Licensor’s quality standards that the Licensee must
abide by when manufacturing the Products under this agreement]




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DOCUMENT INFO
Description: This International Patent Licensing Agreement will allow a Licensee to distribute or manufacture a Licensor’s patented products in a foreign country. This agreement can be customized to grant an exclusive or non-exclusive license. Customize the type of products that will be licensed, payment arrangements, the length of the agreement, quality control standards, and much more. This agreement is ideal for small businesses or other entities that want to grant or obtain a license to manufacture or distribute patented products in a foreign country.