CHAPTER 21
Transferring IP Rights # 1 L I C E N S E A G R E E ME N T
BY MEANS OF A LICENSE AGREEMENT,
the owner of IP rights may transfer some but not all of the rights in the IP to another party. For example, the owner can retain ownership of the IP while allowing others to use the IP for a fee paid to the owner. A license may cover one or more of the IP owner’s rights. For example, a license may be limited to use of the IP as a consumer, to translations of the IP, or to use of the IP in relation to a specific product or service only. A license is always either exclusive or nonexclusive. If it is exclusive, the license grants the IP rights to a single person within a certain scope of operation, such a particular industry, region, country, or city. If the license is nonexclusive, the owner of the IP rights is free to grant the same rights to other persons at the same time.
License Agreement THIS AGREEMENT IS MADE ON [ date ] BETWEEN [ name and address ] (“THE OWNER”) AND [ name and address ] (“THE USER”). THE PARTIES ACKNOWLEDGE THE FOLLOWING: A. THE OWNER IS THE PROPRIETOR OF THE INTELLECTUAL PROPERTY, WHICH CONSISTS OF THE FOLLOWING: [ list identifying information, SUCH AS THE NAME OR TITLE AND REGISTRATION NUMBERS OF ALL IP BEING LICENSED]. B. THE USER DESIRES TO USE THE INTELLECTUAL PROPERTY IN RELATION TO [ describe briefly and generally intended use ]. THE PARTIES NOW AGREE AS FOLLOWS: 1 . THE OWNER PERMITS AND THE USER AGREES AND UNDERTAKES TO USE THE INTELLECTUAL PROPERTY IN ACCORDANCE WITH THE INSTRUCTIONS AND DIRECTIONS OF THE OWNER AND IN CONFORMITY WITH THE REQUIREMENTS PROVIDED BY THE OWNER TO THE USER, SO THAT SUCH USE SHALL BE IN COMPLIANCE WITH THE STANDARDS ESTABLISHED BY THE OWNER. 2 . THIS AGREEMENT SHALL APPLY TO THE FOLLOWING USES OF THE INTELLECTUAL PROPERTY: [ describe each specific use ]. 3 . THIS AGREEMENT SHALL APPLY [ worldwide, or specify a geographical area ]. 4 . THE PARTIES [ do/do not ] INTEND THAT THE USER SHALL ENJOY THE EXCLUSIVE RIGHT OF PERMITTED USE OF THE INTELLECTUAL PROPERTY. THE OWNER [ expressly reserves the/shall have no ] RIGHT TO ESTABLISH OR MAINTAIN EXISTING ARRANGEMENTS FOR THE PERMITTED USE OF THE INTELLECTUAL PROPERTY BY OTHER PARTIES. 5 . THE OWNER SHALL BE ENTITLED TO ALL OF THE FOLLOWING RIGHTS:
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