Patent Purchase Agreement

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									This Patent Purchase Agreement is used to transfer the rights and interests in a patent
from a seller to a purchaser. This document contains the material terms and conditions
of the sale including patent information, payment details, and the closing date. It
contains numerous standard provisions that are commonly included in these types of
agreements and may be customized to fit the specific needs of the contracting parties.
This should be used by seller and purchasers of a patent.
                           PATENT PURCHASE AGREEMENT

This PATENT PURCHASE AGREEMENT (the “Agreement” ) is entered into this ____ day of
___________, 20__ (the “Effective Date” ) by and between ______________________, having
offices at _________________________ _____________ (the “ Purchaser” ), and
______________________, having offices at _________________________ _____________
(the “ Seller” ) collectively referred to herein as (the “Parties”). The Parties hereby agree as
follows.


BACKGROUND


WHEREAS Seller owns United States Patents Nos. ________________________________ and
applications as listed in Exhibit A attached hereto (collectively “Patents”).


WHEREAS Seller wishes to sell its right, title and interest in such patents and the causes of
action to sue for infringement thereof, and any other legal rights to the Purchaser;


AND WHEREAS Purchaser wishes to purchase the said Patents.


 In consideration for the mutual covenants contained herein and other good and valuable
consideration, the sufficiency of which is hereby acknowledged, the Parties agree as set forth
herein.


I.       DELIVERY

1.1    Upon receipt of payment, Seller shall execute and deliver to Purchaser an original copy(s)
of the Assignment of Patent Rights attached hereto as Exhibit B (“Assignment”) for filing with
the USPTO and other patent offices worldwide.

1.2     Within __________ (___) days from the execution of this Agreement (the “Closing
Date”), provided Purchaser has made all payment as set forth in this agreement, Seller shall
deliver to Purchaser the executed original of the Assignment along with all files and original
documents owned or controlled by Seller or its agents or attorneys relating to the Patents
including, without limitation, any letters, patents, assignments of patents, documents and
materials evidencing dates of invention, prosecution history files, and an electronic copy of an
updated docket current as of the Closing Date.




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II.      PAYMENT

2.1    In consideration for the assignment of such rights, title and interest in the Patents and the
other obligations of Seller as set forth in this Agreement, Purchaser shall pay Seller the total sum
of ________________ ($_______ U.S. Dollars) (the “Purchase Price”).
2.2    Payment shall be made in the form of [Insert type of payment to be accepted, for
example, cashier’s check, wire transfer, business check], and shall be paid to Seller upon the
Closing Date.


III.     TRANSFER OF PATENTS

3.1     Effective on the Closing Date, Seller hereby sells, assigns, transfers and conveys to
Purchaser all right, title and interest it has in and to the Patents and all inventions and
discoveries, including without limitation, any and all rights of Seller to sue, to collect royalties
under the Patents, to prosecute all existing Patents in the name of Purchaser and all rights to
collect royalties under such Patents.

3.2     Effective on the Closing Date, Seller hereby sells, assigns, transfers and conveys to
Purchaser all right, title and interest it has in and to all causes of action and enforcement rights,
whether known, unknown, currently pending, filed, or otherwise, for the Patents and all
inventions and discoveries, including without limitation all rights to pursue damages, injunctive
relief and other remedies for past, current and future infringement of the Patents.

3.3      Effective on the Closing Date, Purchaser hereby grants to Seller, a royalty-free, perpetual,
irrevocable, non-exclusive, non-transferable, past release and future worldwide right and license
(“Pre-Existing Licenses”) to practice the methods and to make, have made, use, distribute, lease,
sell, offer for sale, import, export, develop and otherwise dispose of and exploit any past, present
or future products, processes or services covered by the Patent Rights (“Covered Products”).
This transfer extends to and includes third parties who pursuant to previous licensing or grants of
rights, (including, without limitation, any customers, suppliers, licensees, distributors, and end-
users) have been authorized to manufacture, use, sale, offer for sale, lease, or distribute any of
Seller’s Covered Product, and any royalty or other income due Seller post Closing Date.

3.4     As a condition to the assignment of rights of the Patent, Purchaser hereby agrees, with
respect to the Patents, (i) to comply with all Pre-Existing Licenses and patent covenant
commitments of Seller and (ii) not to bring a lawsuit or other legal proceeding (or otherwise
assert the Patents) based on the products or services distributed or provided by such third parties.
Seller represents that Purchaser’s compliance with such Pre-Existing Licenses will not require
any additional consideration or payment on the part of Purchaser.

3.5     Seller acknowledges that none of the Pre-Existing Licensess or covenant commitments is
an exclusive grant or right, and none are transferable (except to affiliates or in the case of
acquisition).




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IV.      ADDITIONAL OBLIGATIONS

4.1     At the request of Purchaser, Seller agrees to execute and deliver any such other
documents and instruments without demanding further consideration and to perform such other
acts as may be reasonably necessary for effecting the consummation of the transfer of ownership
in and to the Patents, including without limitation, execution, acknowledgment and recordation
of other documents as may be warranted for a specific jurisdiction, and specifically for the U.S.
Patent and Trademark Office.
4.2     Subject to the terms and conditions contained in this Agreement, Seller agrees upon the
reasonable request of Purchaser, to assist Purchaser in obtaining, perfecting, sustaining, and/or
enforcing the Patent Rights. Such assistance may also include providing, and obtaining from the
respective inventors, prompt production of pertinent facts and documents, giving of testimony,
execution of petitions, oaths, powers of attorney, specifications, declarations or other documents,
and other assistance reasonably necessary for supporting and/or maintaining patent applications,
complying with any duty of disclosure, and conducting prosecution, re-examination, reissue,
opposition proceedings, cancellation proceedings, public use proceedings, infringement or other
court actions and the like with respect to the Patent Rights. Seller's agreement to render any of
the foregoing assistance is subject to Purchaser' s payment of all reasonable expenses of Seller
incurred in connection therewith and the availability of Seller' s personnel.


V.       REPRESENTATIONS AND WARRANTIES

5.1      Seller hereby warrants to the Purchaser as follows:

         A. Seller has the right and authority, and requires no third party consent, approval,
         and/or authorization to enter into this Agreement and to carry out its obligations
         hereunder;

         B. Seller has good and marketable title to the Patents, including without limitation all
         rights, title, and interest in the Patents. The Patents are free and clear of all liens,
         mortgages, security interests or other encumbrances, and restrictions on transfer;

         C. There are no actions, suits, claims or proceedings threatened, pending or in progress
         relating in any way to the Patents and Seller has not received notice of and Seller is not
         aware of any facts or circumstances which could reasonably be expected to give rise to
         any other actions, suits, investigations, claims or proceedings threatened, pending or in
         progress relating in any way to the Patents. There are no existing contracts, agreements,
         options, commitments, proposals, bids, offers, or rights with, to, or in any person to
         acquire any of the Patents;

         D. Seller has not put a third party on notice of actual or potential infringement of any of
         the Patents or considered enforcement action(s) with respect to any of the Patents;




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         E. The Patents may have been licensed to third Parties through license arrangements.
         Such license arrangements are all non-exclusive and preclude licensees from granting
         sublicenses under the Patents other than to subsidiaries or assigning the license
         arrangements subject to various changes of control provisions. There are no exclusive
         licenses or exclusive covenant commitments with respect to the Patents; (optional
         provision)

         F. None of the Patents have been or are currently involved in any reexamination, reissue,
         interference proceeding, or any similar proceeding and that no such proceedings are
         pending or threatened;


         G. Seller has not made any commitments to any standards or other organizations that is
         not specifically set forth herein and attached herein as an Exhibit;

         H. All maintenance fees, annuities, and the like due on the Patents have been timely paid
         up to the Closing Date. There are no outstanding payments or other consideration due or
         owing with respect to the Patents; and

         I. To Seller's knowledge, the Patents have never been found invalid or unenforceable for
         any reason in any administrative, arbitration, judicial or other proceeding, and Seller has
         not received any notice or information of any kind from any source suggesting that the
         Patents may be invalid or unenforceable.


VI.      TERMINATION

6.1      This Agreement may be terminated by either party in the event of a material breach, upon
thirty (30) days written notice to the other party. All written notices shall detail the nature of the
breach and shall provide the non-breaching party a period of at least thirty (30) days to cure the
breach. If the breach is not cured within the thirty (30) day period, the non-breaching party may
terminate this Agreement without further notice.


VII.     DISCLAIMER OF REPRESENTATIONS AND WARRANTIES

7.1     Seller makes no representations or warranties except for the representations and
warranties set forth in Article 5, and each party disclaims all implied warranties, including,
without limitation, the implied warranties of merchantability and fitness for a particular purpose,
the Parties do not give the other Parties any assurances (a) regarding the patentability of any
claimed invention in, or the validity of, any patent or (b) that manufacture, use, sale, offering for
sale, importation, exportation or other distribution of any product or method disclosed and
claimed in any patent will not constitute an infringement of the intellectual property rights of
other persons. Except as specifically provided in Article 5 hereof, the patents are sold “as is”
without any further representation or warranty.



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VIII. DUE DILIGENCE

8.1     Purchaser acknowledges that it has had sufficient opportunity to perform, and has
performed, appropriate due diligence regarding the Patents to the satisfaction of Purchaser, and
accordingly, all sales are final after execution of this Agreement, provided that the foregoing
shall not limit any liability resulting from a breach of this agreement.


IX.      LIMITATION ON CONSEQUENTIAL DAMAGES

9.1    Except in the case of fraud, neither party shall be liable to the other for loss of profits, or
any other indirect or special, consequential, punitive or incidental damages, however caused,
known or unknown, anticipated or unanticipated, even if advised of the possibility of such
damage. The Parties acknowledge that these limitations on potential damages were an essential
element in setting consideration under this Agreement
10. LIMITATION OF LIABILITY

10.1 Except in the case of fraud, in no event shall either party' s total liability under this
Agreement exceed the purchase price. The Parties acknowledge that these limitations on
potential liabilities were an essential element in setting consideration under this Agreement.


XI.      COMPLIANCE WITH LAWS

11.1 Notwithstanding anything contained in this Agreement to the contrary, the obligations of
the Parties shall be subject to all laws, present and future, of any government having jurisdiction
over the Parties and this transaction, and to orders, regulations, directions or requests of any such
government.


XII.     CONFIDENTIALITY OF TERMS

12.1 The Parties hereto shall keep the terms and existence of this Agreement and the identities
of the Parties hereto confidential and shall not now or hereafter divulge any of this information to
any third party except: (a) with the prior written consent of the other party, such consent shall not
be unreasonably withheld; (b) as otherwise may be required by law or legal process, including in
confidence to financial advisors in their capacity of advising a party in such matters, or any court
order; (c) during the course of litigation, so long as the disclosure of such terms and conditions
are restricted in the same manner as is the confidential information of other litigating parties; or
(d) in confidence to its legal counsel, accountants, banks and financing sources and their advisors
solely in connection with complying with financial transactions; provided that, (i) the disclosing
party shall use all legitimate and legal means available to minimize the disclosure to third parties
and (ii) the disclosing party shall provide the other party with at least ten (10) days prior written
notice of such disclosure.



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12.2 On or after the Effective Date, Seller shall make one or more public announcements in
order to fulfill its requirements as a public company with respect to the disclosure of this
Agreement. Seller agrees that it will submit any such announcements to Purchaser at least two
(2) days prior to its making those announcements for Purchaser' s approval, which approval shall
not be unreasonably withheld. (optional provision)


XIII. GOVERNING LAW

Any claim arising under or relating to this Agreement shall be governed by the internal
substantive laws of the State of __________________ without regard to principles of conflict of
laws.


XIV. JURISDICTION

 Each of the Parties in any suit, action or proceeding arising out of or relating to this Agreement,
irrevocably (i) submits to the jurisdiction of the State or Federal Courts of the State of
_______________ over any suit, action or proceeding arising out of or relating to this
Agreement, (ii) waives to the fullest extent enforceable under applicable law any objection which
it may now or hereafter have to the above venue of any such suit, action or proceeding and any
claim that any such suit, action or proceeding brought in such Court has been brought in an
inconvenient forum, (iii) waives to the fullest extent enforceable under applicable law any
objection which it may now or hereafter have to the above mentioned Court having jurisdiction
of the Parties hereto and to the subject matter of this Agreement, and (iv) acknowledges that a
final judgment in any such suit, action or proceeding brought in such Court, after all appropriate
appeals, shall be conclusive and binding upon it. In any suit regarding the Agreement, the
prevailing party shall be entitled to reasonable attorneys’ fees and costs.


XV.      MISCELLANEOUS

15.1 Entire Agreement. This Agreement constitutes the entire agreement between the Parties
with respect to the subject matter hereof, and merges and supersedes all prior and
contemporaneous oral agreements, understandings, negotiations and discussions. None of the
Parties shall be bound by any conditions, definitions, warranties, understandings, or
representations with respect to the subject matter hereof other than as expressly provided herein.

15.2 Captions. The section headings contained in this Agreement are for reference purposes
only and shall not affect in any way the meaning or interpretation of this Agreement.

15.3 Amendments. No amendments or modifications shall be effective unless in writing
signed by authorized representatives of all of the Parties.



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15.4 Counterparts. This Agreement may be executed in two (2) or more counterparts, all of
which, taken together, shall be regarded as one and the same instrument.

15.5 Notices. All notices required or permitted to be given hereunder shall be in writing, shall
make reference to this Agreement, and shall be delivered by hand, or dispatched by prepaid air
courier or by registered or certified airmail, postage prepaid, addressed as follows:

If to Purchaser:
_____________________________
_____________________________
_____________________________

If to Seller
_____________________________
_____________________________
_____________________________

Such notices shall be deemed served when received by addressee or, if delivery is not
accomplished by reason of some fault of the addressee, when tendered for delivery. Either Party
may give written notice of a change of address and, after notice of such change has been
received, any notice or request shall thereafter be given to such Party at such changed address.

15.6 Relationship of Parties. The Parties hereto are independent contractors. None of the
Parties have any express or implied right or authority to assume or create any obligations on
behalf of the others or to bind the other to any contract, agreement or undertaking with any third
party. Nothing in this Agreement shall be construed to create a partnership, joint venture,
employment or agency relationship between Seller and Purchaser.

15.7 Severability. The terms and conditions stated herein are declared to be severable. If any
paragraph, provision, or clause in this Agreement shall be found or be held to be invalid or
unenforceable in any jurisdiction in which this Agreement is being performed, the remainder of
this Agreement shall be valid and enforceable and the Parties shall use good faith to negotiate a
substitute, valid and enforceable provision which most nearly effects the Parties' intent in
entering into this Agreement.

15.8 Waiver. Failure by any Party to enforce any term of this Agreement shall not be deemed
a waiver of future enforcement of that or any other term in this Agreement.

15.9 Assignment of Agreement. The terms and conditions of this Agreement shall inure to the
benefit of and be binding upon any successors, assigns and other legal representatives of the
Parties.

In witness whereof, the Parties have executed this Patent Purchase Agreement as of the Effective
Date:

[PURCHASER]


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By: _______________________________

Name: _____________________________

Title: ______________________________


[SELLER]

By: _______________________________

Name: _____________________________

Title: ______________________________




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                                                       EXHIBIT A

                                                        PATENTS




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                                                       EXHIBIT B

                                                     ASSIGNMENT




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