This is not a substitute for legal advice. An attorney must be consulted. "This work is protected under the copyright laws of the United States. No reproduction, use, or disclosure of this work shall be permitted without the prior express written authorization of the copyright owner. Copyright © 1994 - 2024 by LAWCHEK, LTD." |
SAMPLE
FORM LICENSE OF
U.S. PATENT 1 1
This agreement, entered into as of this
21st
day of April
, 20052, by and between Recitals WHEREAS,
LICENSOR is the owner of certain PATENT RIGHTS (hereinafter
defined) covering DEVICES (hereinafter defined). WHEREAS,
LICENSEE is a manufacturer of various equipment and desires to
manufacture and sell DEVICES. WHEREAS,
LICENSEE would like to receive and LICENSOR is willing to grant
a non‑exclusive license under the PATENT RIGHTS. NOW,
THEREFORE, in consideration of the promises and mutual covenants
hereinafter contained, the parties hereto agree as follows:
ARTICLE I
DEFINITIONS 1.1 PATENT RIGHTS shall mean
U.S. Patent No. 1 9
(hereinafter referred to as the "SUBJECT
PATENT"), any corresponding patents or patent applications
filed in other countries, any reissue applications, continuation
application, and continuation-in-part applications filed thereon
in the United States or any foreign country and any patents
issuing thereon. 1.2 DEVICES shall mean any
apparatus sold by LICENSEE that is covered by any of the claims
of the PATENT RIGHTS. This
is not a substitute for legal advice. An
attorney must be consulted. |
1.3
NET SALES PRICE shall mean the price at which a DEVICE is
invoiced in an arms length transaction, less any royalties
hereunder, discounts, sales taxes, excise taxes, or freight
charges which are included in such invoice price. 1.4 EFFECTIVE DATE shall mean
the date upon which the last of the parties hereto signs this
LICENSE. 1.5 TERM shall mean the period
from the EFFECTIVE DATE to either the date of cancellation by
one of the parties under ARTICLE V hereof or the latest
expiration date of the SUBJECT PATENT or any reissue,
continuation, or continuation-in-part thereof, whichever occurs
first. 1.6
AFFILIATE shall mean any entity that is controlled by
LICENSEE through ownership of at least 50% of the voting stock
of such entity.
ARTICLE II
GRANT 2.1 LICENSOR hereby grants to
LICENSEE and its AFFILIATES an irrevocable, worldwide,
non-exclusive license during the TERM to make, have made, use,
lease and sell DEVICES, and components and parts therefor, under
the PATENT RIGHTS. 2.2 LICENSOR and LICENSEE
understand and agree that LICENSEE receives no licenses or
rights whatsoever, by implication or otherwise, under any other
patents or applications owned or controlled by LICENSOR, except
those specifically granted to LICENSEE by the terms of this
LICENSE. 2.3 This LICENSE shall be
binding upon and shall inure to the benefit of any corporation,
company or entity into which either LICENSOR or LICENSEE may be
merged or consolidated and the rights and obligations of the
parties shall be assignable to any purchaser of that part of the
assets of such party to which this LICENSE relates. 2.4 In the event LICENSOR
grants another license under the PATENT RIGHTS on more favorable
terms than those set forth in this LICENSE, LICENSEE may elect
to include such more favorable terms herein, provided that
LICENSEE also includes any terms from such other license that
are less favorable than those herein. 2.5 LICENSEE agrees for itself
and its AFFILIATES that no sublicenses shall be granted to any
third party under the PATENT RIGHTS, except to the extent that
licenses are implied with the sale of DEVICES under the Uniform
Commercial Code.
ARTICLE III
CONSIDERATION 3.1 Within
thirty
( 30
)10 days after the EFFECTIVE DATE,
LICENSEE shall pay to
LICENSOR the sum of
two thousand
dollars ($2000)11. This
is not a substitute for legal advice. An
attorney must be consulted. |
3.2 During the TERM, LICENSEE
shall pay to LICENSOR a royalty of
50 12 percent (
50 %)13
of the NET SALES PRICE of all DEVICES sold by LICENSEE. 3.3 Each calendar quarter after
the EFFECTIVE DATE there shall be an accounting period (a
fractional initial or terminal period to be regarded as an
accounting period) and LICENSEE
shall within thirty
( 30
)14 days after the end of each and every
such accounting period, report in writing to LICENSOR the total
number of DEVICES sold by LICENSEE during such accounting
period. Each such
report shall also include the total NET SELLING PRICE of the
DEVICES. LICENSEE shall send to LICENSOR with each such report a check
to the order of LICENSOR in U.S. Dollars in payment of the
amount, if any, due to LICENSOR under this LICENSE, for said
accounting period. 3.4 LICENSOR hereby releases LICENSEE
for any infringement of the PATENT RIGHTS that may have arisen
before the EFFECTIVE DATE of this LICENSE.
ARTICLE IV
WARRANTIES 4.1 LICENSOR warrants that it
is the owner of the entire right, title and interest in the
PATENT RIGHTS. 4.2 LICENSOR warrants that it
has the sole right to grant licenses under the PATENT RIGHTS and
has not heretofore granted any rights thereunder which would
interfere with any rights granted LICENSEE under this LICENSE. 4.3 LICENSOR warrants that it
agrees to prosecute all substantial claims of infringement of
the PATENT RIGHTS at its own expense.
ARTICLE V
RIGHTS
OF CANCELLATION 5.1 In the event LICENSEE
defaults in making a payment or report hereunder, or shall
commit any other breach of covenant herein contained,
LICENSOR may, at its option, cancel and terminate LICENSE
and rights under PATENT RIGHTS, by giving
LICENSEE sixty ( 60 )15 days written notice.
Provided, however, that if LICENSEE
shall correct the default within
thirty
( 30 )16
days after such notice, then said notice shall cease to be operative and this LICENSE shall
continue in full force and effect as if such default had not
occurred. Cancellation
of this LICENSE under this Article shall not prejudice the right
of LICENSOR to recover any sum due it at the time such
cancellation becomes effective and shall not prejudice any cause
of action or claim of LICENSOR accrued or to accrue on account
of any breach or default by LICENSEE. This
is not a substitute for legal advice. An
attorney must be consulted. |
5.2 LICENSOR shall have the
right to cancel this LICENSE at any time, effective at the
conclusion of thirty ( 30 )17 days’ written notice to LICENSEE.
Such cancellation shall not relieve LICENSEE of its
obligation to pay LICENSOR any sums then due it under this
LICENSE. LICENSEE may elect in its notice of cancellation to
have the right to sell those DEVICES it has on hand and that
would have been subject to the terms of this LICENSE had this
LICENSE remained in force, by agreeing to pay the royalties as
set forth herein, provided that such right on the part of
LICENSEE shall terminate upon the expiration of one year from
the effective date of such cancellation. 5.3 Any and all disputes
arising in connection with this LICENSE that cannot be settled
by negotiation between the parties hereto, shall, at the request
of either or both parties, be referred to and finally settled
under the then prevailing Rules of the American Arbitration
Association by one or more arbitrators appointed in accordance
with said Rules. Notwithstanding any provisions of the Rules of the American
Arbitration Association or any applicable state or federal law,
the parties agree that the Arbitration cannot award exemplary or
punitive damages. Judgment
upon the award rendered may be entered in any court having
jurisdiction, or application may be made to the court for
judicial acceptance of the award and an order of enforcement, as
the case may be. All
arbitration proceedings shall take place in
St.
Louis (city),
Missouri
(state)18.
ARTICLE VI
RECORDS
AND AUDIT 6.1 LICENSEE shall keep and
cause its AFFILIATES to keep true and accurate records relating
to DEVICES sold under this LICENSE to the extent necessary for
making the reports and payments provided for herein.
Such records shall be open for inspection by LICENSOR
through an independent Certified Public Accountant appointed by
it, or for inspection by any other person to whom LICENSEE has
no objection, in order to permit LICENSOR to determine the
accuracy of reports and payments hereunder.
It is the intent of the parties that the person making
such inspection shall not disclose to LICENSOR or others any
business details that may be found in LICENSEE's records which
are not necessary in determining the accuracy of the reports and
payments. The
inspection provided for herein shall be made during business
hours and not more often than once each calendar year. ARTICLE
VII
CHANGES
IN STATUS OF CLAIMS 7.1 If, during the life of this
LICENSE, any claim included in the PATENT RIGHTS is disclaimed
or becomes canceled or of no force or effect by operation of law
(as through an adverse interference judgment or otherwise), then
such claims shall be considered as no longer included in said
PATENT RIGHTS unless and until it becomes reinstated, beginning
with the date of such disclaimer or cancellation or the date it
becomes of no force or effect. 7.2 If, during the TERM, a
claim of the PATENT RIGHTS shall be construed or held invalid by
a court of competent jurisdiction from whose decision no appeal
is taken, then for the purpose of this LICENSE the construction
placed upon such claim shall thereafter be followed and any
claims so held invalid shall be ignored.
IN WITNESS THEREOF, the parties have caused this
agreement to be executed by their respective officers thereunto
duly authorized as of the dates respectively indicated.
LICENSOR
LICENSEE Tony Carter 19 Timothy Walters
23
(Signature)
(Signature)
By
Tony Carter 20
By
Timothy Walters
24
Title
President 21
Title
President
25
Dated
04/21/2005 22
Dated
04-21-2005
26 This
is not a substitute for legal advice. An
attorney must be consulted. |
The
above is an example of how a typical U.S. Patent License form may be
completed.
1.
The patent number is assigned by the US Patent Office.
2.
The date on which the document is signed.
3.
The full name of the licensor.
4.
The state in which the licensor is located.
5.
The full address of the licensor.
6.
The full name of the licensee.
7.
The state in which the licensee is located.
8.
The full address of the licensee.
9.
This number is assigned by the US Patent Office.
10.
The amount of time given for the licensee to pay for the patent
license.
11.
The amount paid by the licensee for the patent license.
12.
The amount of royalty to be paid by the licensee to the licensor
upon sale of product.
13.
The numerical percentage of royalty payment.
14.
The number of days following each accounting period within which
a written report must be
presented
to licensor by licensee regarding the number of devices sold during this
accounting period.
15.
The written
amount and numerical
amount of days required for licensor’s
written notice of termination of license to
licensee
in the event of
licensee’s default in making payment or report to licensor.
16.
The written amount and numerical amount of days within which
licensee may correct the default and keep the product license.
17.
The written amount and numerical amount of days of
written notice required before the licensor may cancel the
license.
18.
The city and state in which the document is signed.
19.
The signature of the licensor.
20.
The printed name of the licensor.
21.
The title of the licensor.
22.
The date on which the document is signed by the licensor.
23.
the signature of the licensee.
24.
The printed name of the licensee.
25.
The title of the licensee.
26. The date on which the document is signed by the licensee.
This is not a substitute for legal
advice. An
attorney must be consulted.
Copyright ©1994 - 2024 by LAWCHEK, LTD.
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