Foreign licensee. This agreement made _________, _________[date] by and between _________, a _________ corporation, having a principal office at _________(Licensor), and _________, a _________ corporation, having its principal office at _________(Licensee), Whereas, Licensee desires to obtain an exclusive license under certain patents and applications of Licensor throughout the world except for the United States of America, and Licensor is desirous of granting such a license to Licensee. Now, therefore, in consideration of the mutual covenants contained in this Agreement, the parties agree as follows: Article I. Licenses Section 1. Licensor agrees to grant and hereby grants to Licensee a nonassignable exclusive license throughout the world, except for the United States, under any and all Licensor patents and applications, to manufacture, or to have manufactured, to use, to lease or to sell apparatus that is covered, or the method of manufacturing, or the use of such, is covered by a claim or claims of any such Licensor patent and application (other than a U.S. patent or application). Section 2. Licensor patents and applications shall mean those patents and applications: (1) that have been or will be filed on inventions made or conceived by employees or consultants of the Licensor; and (2) which patents and applications have been or will be filed in countries foreign to the United States of America; and (3) which patents and applications receive or are entitled to receive the benefit of a filing date prior to _________, _________[date]; and (4) under which Licensor has the right to license others during the term of this Agreement without being obligated to pay an earned royalty to a third party. Section 3. Licensee under the exclusive license of Article I, Section 1, shall have the right to license others under any or all Licensor patents and applications licensed under this Agreement provided such others are obligated to make payments to Licensee at least equal to that Licensee is obligated to pay Licensor under this Agreement. Section 4. It is agreed that no license is hereby granted or agreed to be granted, directly or by implication, estoppel or otherwise, under any patents of Licensor other than those licensed under Article I, Section 1. Article II. Royalty Section 1. Licensee agrees to pay Licensor _________ percent (_____%) of the net royalty income of Licensee
attributable to the exercise of its sublicensing rights under this Agreement. Article III. Royalty Statement & Payments Section 1. Licensee shall render to Licensor a written statement within sixty (60) days after each March 31, June 30, September 30 and December 31 of each calendar year during the term of this Agreement. The statement shall be true and accurate, and so certified, by a responsible representative of Licensee, and shall set forth the gross royalty income, all deductions from that income, and the results net royalty for the period covered by such statements. Such statement shall be accompanied by a payment for the total amount shown by the statement to be due in accordance with Article II, Section 1. Section 2. Licensee agrees to keep true and accurate records, and to cause its sublicensees to keep similar records, of all particulars necessary to prepare the statement specified in this Article III. Licensor shall have the right to inspect and audit such records at least once each year and may designate an employee or other representative of Licensor to make such examination. Section 3. In the event an audit carried out in accordance with Section 2 of this Article III uncovers any errors or omissions in such records, prompt adjustment shall be made by the appropriate party. Neither such right of examination nor the right to receive such adjustment shall be affected by any statement to the contrary appearing on checks or documents unless the statement expressly waiving such right appears in a separate instrument duly executed by Licensor. Section 4. Payments due under this Agreement from Licensee shall be payable in United States currency without any deductions for taxes or charges of any kind, which taxes or charges, if any, are assumed by Licensee. The official rate of exchange applicable shall, in the case of each payment, be the rate in effect at the time such payment is made by Licensee. Article IV. Section 1. During the term of this Agreement and to the extent its contractual and United States Government security obligations permit, Licensor shall submit to Licensee a copy of each United States patent application filed after the execution of this Agreement by Licensor on an invention made or conceived by an employee or consultant of Licensor. The application shall be submitted to Licensee within seven (7) months after the filing of the application. In the event Licensee elects to file in the name of Licensor and prosecute a corresponding foreign application in any country other than the United States, Licensee agrees to pay the cost incurred in the filing and prosecuting of such elected applications and any taxes necessary to maintain such applications and any patents issuing on such applications. In the event Licensee elects not to file a corresponding application in any country outside the United States, Licensor shall have the right to do so subject to incurring the expense of filing, prosecuting and maintaining any such applications and patents obtained on them, and in which event Licensee will not be licensed thereunder. Section 2. Licensor, to the extent its contractual and United States security obligations permit, agrees to supply to Licensee a copy of all pending United States patent applications that have been filed or conceived on an invention made by an employee or consultant of Licensor and for which there has been filed a corresponding foreign application as follows: (a). All those applications that have been on file more than six (6) months in the U.S. Patent Office prior to the execution of this Agreement will be supplied promptly after execution of this Agreement.
(b). All other such applications will be supplied six (6) months after filing. Section 3. As to those Licensor patents and applications presently being prosecuted and maintained by Licensor, Licensee agrees to pay the expense incurred in the further prosecution and maintenance of any of such Licensor patents and applications as it elects. Licensee shall notify Licensor of those patents and applications elected by it under this Section 3 of Article IV within sixty (60) days after execution of this Agreement. Any such applications and patents that Licensee elects not to pay the expense thereon will not be licensed to Licensee. Section 4. During the term of this Agreement, Licensee agrees to supply to Licensor a copy of each patent application filed by Licensee or a Licensee sublicensee in the country of its domicile, as applicable, on an invention that is the property of Licensee or such sublicensee, as the case may be. Any such patent application shall be supplied promptly after its filing. In the event Licensor or its designee elects to file a corresponding patent application in any country outside the country of domicile, Licensee agrees, and it will cause its sublicensees to agree, that such applications shall be the property of Licensor and will be filed, prosecuted and maintained at the expense of Licensor. Licensee further agrees, and will cause its sublicensees to agree, to render such assistance as may be necessary in the prosecution and maintenance of such applications, and any patents issuing on such applications. Section 5. In the event Licensee subsequently elects to be discharged of its obligation to continue to pay expenses incurred as to a particular application or patent, Licensee shall give Licensor three (3) months notice to this effect. If Licensor elects to assume such obligation as to a particular patent or application, it is agreed that Licensee will not be licensed under such patent or application. Article V. Section 1. If Licensee shall at any time default in rendering any of the reports required or in the payment of any monies due under this Agreement, or in fulfilling any of the other obligations, and such default shall not be cured within sixty (60) days after written notice by Licensor to Licensee specifying the nature of the default, Licensor shall have the right to terminate this Agreement by giving written notice of termination to Licensee, and upon the giving of such notice this Agreement shall terminate on the sixtieth (60th) day after such termination notice. No failure or delay on the part of Licensor to exercise its right of termination under this Agreement for any one or more defaults shall be construed to prejudice its right of termination for any other subsequent default. Section 2. It is agreed that termination of this Agreement, as here provided, shall not relieve Licensee from its obligation to pay any sums of money due or payable or accrued under this Agreement at the date of such termination. Article VI. Section 1. All notices required or provided for in this Agreement shall be in writing and shall be given by Registered Mail, prepaid and properly addressed to the last known address of the party to be served and shall be deemed to have been given on the date upon which the notice was received. Any notice to be supplied to Licensor should be addressed as follows: _________. Section 2. The rights and obligations of this Agreement shall not be assignable or transferrable by Licensee. Section 3. This Agreement shall be construed in accordance with the laws of the State of _________, United States of America, and constitutes the entire Agreement between the parties with respect to the subject matter of this Agreement and shall supersede all previous communications, representations, understandings, and Agreements, either oral or written, between the parties or any official or representative of the parties with respect to the subject matter of this Agreement, and it is expressly understood that there has been made to Licensee no other inducement,
either oral or written, to enter into this Agreement other than the terms stated in this Agreement. Section 4. Licensee agrees not to manufacture or use or lease or sell, or enable others to do so, apparatus covered by a claim or claims of any patent licensed under this Agreement by Licensor in or to any country that, under pertinent laws and regulations of the United States Government, Licensor is forbidden to export its technology. This restriction shall not apply when and in the event that at the request of Licensee, Licensor had made application to and has received a license from the competent agency of the United States Government to consent to such manufacture or use or lease or sale in or to any of the above-stated countries. Section 5. It is agreed that Licensee shall, if required, secure in writing any approval of this Agreement by the _________[name of country] Government which is required to enable Licensee to enter into this Agreement or to make payments to Licensor in United States Dollars. Licensee shall supply Licensor a copy of any such approval within six (6) months after execution of this Agreement. If approval by the _________ Government is required and such is not granted within six (6) months after execution of this Agreement then this Agreement shall be null and void ab initio. Section 6. Licensee agrees, and will cause its sublicensees to agree, to apply to all apparatus covered by a patent licensed under this Agreement such notice as may be required by the laws of the various countries where such patent is effective, or as may be requested by Licensor. Section 7. In the event of the direct or indirect taking over or assumption of control of Licensee by any governmental authority, Licensor shall have the right to terminate this Agreement at any time thereafter upon giving written notice to Licensee, and upon the giving of such notice of termination this Agreement shall terminate immediately. Section 8. This Agreement shall continue in effect, unless sooner terminated as elsewhere provided in this Agreement, for the term of the patents licensed under this Agreement. In witness whereof, the parties have caused this instrument to be executed in duplicate by their duly authorized and empowered officers and representatives and have caused their corporate seals to be affixed thereto. [Signatures] [Attestation]