VIEWS: 34 PAGES: 7 CATEGORY: Protecting Intellectual Property POSTED ON: 6/6/2014
This agreement is between two parties whereby one party is granted a license to use the intellectual property rights of the granting party. This agreement is designed for use with international licenses, requiring the parties to specify the county of permitted use, the currency to be used, import/export requirements, and more. This agreement is ideal for individuals or small businesses that want to grant or receive a license to use intellectual property rights internationally.
International License Agreement This agreement is between two parties whereby one party is granted a license to use the intellectual property rights of the granting party. This agreement is designed for use with international licenses, requiring the parties to specify the county of permitted use, the currency to be used, import/export requirements, and more. This agreement is ideal for individuals or small businesses that want to grant or receive a license to use intellectual property rights internationally. INTERNATIONAL LICENSE AGREEMENT THIS INTERNATIONAL LICENSE AGREEMENT (hereinafter referred to as the “Agreement”) is hereby made and entered as of ___________________ [Instructions: Insert the date of this agreement] by and between ____________________ [Instructions: Insert the Licensor’s name; this is the party granting the license] (hereinafter referred to as the “Licensor”), of _______________________________________ [Instructions: Insert the Licensor’s address] and ____________________ [Instructions: Insert the Licensee’s name; this is the party obtaining the license] (hereinafter referred to as the “Licensee”), of _________________________________. [Instructions: Insert the Licensee’s address] WHEREAS, Licensor owns and/or controls certain intellectual property, as set forth in Exhibit “A” attached hereto and incorporated by this reference (the “IP”); WHEREAS, Licensee desires to license the use of the IP as set forth in Exhibit “A” (the “Licensed Use”); and subject to the terms and conditions contained herein, Licensee desires to grant such license. NOW, THEREFORE, for good and valuable consideration the receipt of which is hereby acknowledged by each party hereto, it is agreed as follows: 1. GRANT OF RIGHTS Licensor hereby grants to Licensee, during the Term and in the Territory of this Agreement, the [Instructions: Choose one] exclusive /// non-exclusive right and license to utilize the IP in the Licensed Use, solely as set forth in Exhibit “A”. 2. RESERVATION OF RIGHTS a. Licensee acknowledges and agrees that, with respect to the IP and the Licensed Use thereof, during the Term and thereafter, on a world-wide basis, Licensor shall retain all now known or hereafter known tangible and intangible (i) rights associated with works of authorship including, without limitation, copyrights and moral rights (ii) rights associated with trademarks, service marks, trade names and similar rights, (iii) trade secret rights, (iv) patents, designs, algorithms and other industrial property rights, (v) rights in domain names; and (vi) all other intellectual and industrial property rights of every kind and nature and however designated, whether arising by operation of law, contract, license or otherwise, including all registrations, applications, renewals, extensions, continuations, continuations-in-part, re-examinations, divisions or reissues thereof in and to the IP and/or the Licensed Use thereof (the “IP Rights”). b. Licensee, in its Licensed Use of the IP, shall take all reasonable measures to protect Licensor’s IP Rights. In the event that Licensor has not registered the IP in any country within the Territory, with Licensor’s prior written consent, at Licensor’s cost and expense, Licensee may, acting as an agent of Licensor, register the IP, in Licensor’s name, with the applicable jurisdiction’s governing body. Except as otherwise provided herein, Licensee is not © Copyright 2014 Docstoc Inc. registered document proprietary, copy not 2 granted any rights or licenses to any IP Rights with respect to any IP and/or the Licensed Use thereof. c. Without limiting any of Licensor’s other remedies, whether in law or equity, Licensee acknowledges and agrees that Licensor shall have the right to injunctive relief, to prevent and/or cure a breach or threatened breach of this Agreement by Licensee. 3. ROYALTY PAYMENT AND ACCOUNTING a. Provided Licensor fully performs all material obligations hereunder, and in full consideration of all rights granted herein, Licensee shall pay or cause Licensor to be paid the Royalties set forth in Exhibit “A”. b. The Royalties owed to Licensor shall be calculated no less than four (4) times per year, on or before March 31st, June 30th, September 30th and December 31st and shall be payable no later than __________ (___) [Instructions: Insert the number of days after the calendar quarter that royalty payments must be made] days after the end of the preceding calendar quarter. With each royalty payment Licensee shall provide Licensor with a written royalty statement. c. All Royalty payments shall be calculated pursuant to the provisions of Exhibit “A” hereof and payable in __________ [Instructions: Insert the Currency Type, e.g. “U.S. Dollars”] (the “Currency”). In the event that that Licensee receives any receipts that are in a currency other than the Currency, Licensee will calculate Royalties as if such receipts were converted to the Currency on the last day of the calendar quarter in which the receipts were received. Licensee will use the applicable currency exchange rate quoted in the Wall Street Journal as of 3:00 PM Eastern Standard Time, for currency trading among banks in amounts of One Million Dollars ($1,000,000) or more, on the last day of the applicable calendar quarter d. Licensee shall keep accurate books of account governing all transactions relating to the IP and the Licensed Use thereof. Licensor or Licensor’s duly authorized representative shall have the right upon reasonable notice, not more frequently than once per statement or once per calendar year, and at Licensor’s sole cost and expense to examine Licensee’s books of account and records with respect to all sale, manufacture, and purchase relating to the IP and the Licensed Use thereof at Licensee’s place of business where such books and records are usually kept and to make reasonable extracts thereof. All accountings rendered hereunder shall be binding upon Licensor and not subject to any objection by Licensor for any reason unless specific written objection, stating the basis thereof, is furnished to Licensee within __________ (___) [Instructions: Insert the number of years that Licensor has to raise an objection to Licensee’s accounting] years from the date rendered. Licensor shall be foreclosed from maintaining any action, claim or proceeding against Licensee with respect to any statement or accounting due hereunder unless commenced against me in a court of competent jurisdiction within __________ (___) [Instructions: Insert the number of years that Licensor has to raise an objection to Licensee’s accounting] years after the date such accounting is rendered. © Copyright 2014 Docstoc Inc. registered document proprietary, copy not 3 e. The Royalty payments shall constitute payment in full to Licensor, and to all persons or entities deriving or claiming rights through Licensor. 4. REPRESENTATIONS, WARRANTIES AND INDEMNIFICATION a. Licensor represents and warrants to Licensee that: (i) Licensor owns and controls one hundred percent (100%) of all rights, titles and interests (including but not limited to all copyright) in and to the IP throughout the universe; (ii) Licensor has the exclusive, unconditional right to enter into this Agreement, to convey the IP to Licensee, and grant the and the Licensed Use herein; (iii) the IP and the and the Licensed Use thereof will not and will not infringe upon or violate any copyright of, or infringe upon or violate the right of privacy or any other right of any third party; and (iv) Licensor has no knowledge of any claim or potential claim by any party which might in any way affect Licensee’s rights herein. b. If any of the agreements, representations or warranties contained in this Agreement are breached, in whole or in part, Licensor shall indemnify and hold Licensee harmless from any and all damages, losses and costs (including, but not limited to, legal costs and attorneys’ fees) resulting from any and all claims inconsistent with such agreements, representations or warranties. c. Licensee shall indemnify, defend and hold Licensor harmless of and from any and all liability, loss, damage, claim or expense (including, but not limited to, reasonable attorneys’ fees and court costs) arising from or related to Licensee’s business, provided said claim is not specifically related to the IP and/or the Licensed Use thereof. 5. IMPORT; EXPORT; COMPLIANCE WITH LAWS Licensee shall comply with all applicable foreign and domestic laws and regulations relating to the importation or exportation of the IP and/or the Licensed Use thereof (“Export Laws”) and relating to this Agreement. In addition to the foregoing, Licensee shall at all times maintain those permits, licenses, registrations and authorizations that are required to be obtained and maintained in order for Licensee to carry out its activities and meet its obligations hereunder in accordance with all applicable laws and regulations. Licensee shall not knowingly import or export or cause to be imported or exported, directly or indirectly, any technology licensed hereunder to any country for which any governmental authority requires a license or other government approval at the time of such import or export, without first obtaining the required license or approval. Without limiting the generality of the foregoing, Licensee shall not, and shall require its representatives not to, export, direct or transfer any IP or any Licensed Use thereof, to any destination, person or entity restricted or prohibited by the Export Laws. 6. MISCELLANEOUS a. No failure by either party to perform any of its material obligations hereunder shall be deemed a breach hereof, unless the non-breaching party has given written notice of such failure to the breaching party, and the breaching party fails to cure such non-performance within thirty (30) days after receipt of such notice (fifteen (15) days with respect to non-payment). © Copyright 2014 Docstoc Inc. registered document proprietary, copy not 4 b. All notices, statements and/or requests for approvals that either party hereto is required or may desire to give to the other party shall be given in writing by addressing the same to the other party at the addresses set forth above, or at such other address as may be designated in a notice to the other party. Notices shall be made by personal delivery, courier, or by certified U.S. mail, return receipt requested, postage prepaid. Notice shall be deemed given on the date of delivery to the other party. c. This Agreement constitutes the entire agreement between the parties hereto with respect to the specific subject matter hereof and supersedes all prior agreements or understandings of any kind with respect to the specific subject matter hereof. d. This Agreement has been written in the English language. It may be translated, for convenience, into other languages. However, in the case of error or disagreement, the executed English language version shall prevail. e. In the event that any provision or part of this Agreement shall be deemed void or invalid by a court of competent jurisdiction, the remaining provisions or parts shall be and remain in full force and effect. f. Any and all additions, deletions, or modification to this Agreement must be in writing and signed by the parties or it shall have no effect and shall be void. g. This Agreement is binding upon and shall inure to the benefit of the respective successors, licensees and/or assigns of the parties hereto. Notwithstanding the foregoing, neither party may assign or transfer its rights or delegate its obligations under this Agreement without the other party's prior written consent, which consent will not be unreasonably withheld. h. This Agreement shall be governed in accordance with the laws of the State of _________________ [Instructions: Insert state’s or province’s laws that will govern this agreement] Country of ___________________ [Instructions: Insert the country where the state or province is located] applicable to agreements to be wholly performed therein, without giving effect to its laws governing conflict of laws. IN WITNESS WHEREOF the parties have duly executed this Agreement as of the date first written above. LICENSOR: LICENSEE: __________ [Instructions: Insert name] __________ [Instructions: Insert name] __________________________ __________________________ Authorized Signatory Authorized Signatory © Copyright 2014 Docstoc Inc. registered document proprietary, copy not 5 EXHIBIT “A” 1. Term. __________ (___) [Instructions: Insert the number of years that licensed use of the IP is granted] years (the “Term”). 2. Territory. _______________________ [Instructions: Insert what countries licensed use of the IP is granted] (the “Territory”) 3. IP. IP Description Registration Number Country of Origin “__________” __________ __________ __________ [Instruction: Insert [Instruction: Instruction: Insert Instruction: Insert Title of IP] Describe the IP] Copyright, Patent or Country] Trademark Reg No.] 4. Licensed Use. a. Licensee shall have the [Instructions: Choose one] exclusive /// non-exclusive right and license to utilize the IP in ______________________ [Instructions: Insert what rights licensee has regarding the use of the IP] during the Term and in the Territory (the “Licensed Use”). The Licensed Use shall include the right to i. _________________ [Instructions: Insert any ancillary rights granted] ii. _________________ [Instructions: Insert any ancillary rights granted] iii. _________________ [Instructions: Insert any ancillary rights granted] b. Prior to exploiting the Licensed Use, Licensee shall provide Licensor with a proof and/or sample for prior written approval. In the event that Licensor fails to provide Licensee with written approval within ten (10) days following Licensor’s receipt of the proof and/or sample, the use shall be deemed [Instructions: Choose one] approved /// denied by Licensor. 5. Royalties. Licensee shall pay to Licensor an amount equal to __________ percent (___%) [Instruction: Insert the percentage of Licensee’s net receipts the Licensor will receive as a royalty] of Licensee’s Net Receipts. For purposes hereof, “Net Receipts” shall mean the gross invoice amount of monies actually received by Licensee in connection with Licensee’s exploitation of the Licensed Use, less all taxes paid (including but not limited to sales, use, receipts, income, excise, remittance and VAT), duties, customs and imports, credits, discounts, refunds, allowances, adjustments, returns, and costs incurred by Licensee in connection with Licensee’s exploitation of the IP, including distribution costs, manufacturing costs, reasonable overhead costs, legal fees and collection costs. © Copyright 2014 Docstoc Inc. registered document proprietary, copy not 6
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