Chapter 21:TRANSFERRING IP RIGHTS: LICENSE AGREEMENT

CHAPTER 21

Transferring IP Rights # 1

LICENSE AGREEMENT

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:

a.To inspect at any time during business hours the User’s premises or other location where use of this Intellectual Property by the User or its authorized representatives is occurring. b.To reject any use of the Intellectual Property that the Owner believes is not equal to the quality and standards established by the Owner. c.To demand from time to time for purposes of inspection and analysis to be supplied with materials, information, samples, test results, and other similar items used or produced by the User in connection with the Intellectual Property.

6. THE USER RECOGNIZES AND ADMITS THAT THE OWNER HOLDS RIGHTS OF OWNERSHIP AND TITLE TO THE INTELLECTUAL PROPERTY, AND THE USER FURTHER UNDERTAKES AS FOLLOWS:

a. Never to do or cause to be done any act, deed, or thing that will in any way impair or put in issue the validity of the Intellectual Property or that will otherwise set up any adverse claim against the Owner’s rights in the Intellectual Property. b. At all times use the Intellectual Property in accordance with the laws that govern such use.

c.Never to take any steps or institute any action whatsoever to suppress any infringement of the Intellectual Property or to apply to cancel any conflicting or infringing registrations of other intellectual property, without the prior consent of the Owner.

7. THIS AGREEMENT SHALL CONTINUE IN FORCE UNTIL TERMINATED ON OCCURRENCE OF ANY OF THE FOLLOWING EVENTS:

a. By either Party giving advance written notice to the other Party, which notice must be received at least [number] months prior to the stated termination date. b.By the Owner giving advance written notice of breach of this Agreement by the User, provided such notice is received by the User at least [number] months prior to the stated termination date and provided that, within [number] months of the notice of breach, the User fails to remedy or take steps approved by the Owner to remedy the breach.

c.If either Party makes any composition with its creditors, a receiver is appointed for the whole or any part of its assets, an order is made or resolution passed for winding up or otherwise liquidating its business, or a substantial part of its assets becomes subject to seizure.

8. ON TERMINATION OF THIS AGREEMENT, THE RIGHTS OF THE PARTIES SHALL BE AS FOLLOWS:

a.The User shall immediately discontinue all use of the Intellectual Property. b.Except with the Owner’s written approval, the User shall remove all representations of the Intellectual Property from all materials, inventory, advertising and directory listings, computers, manuals, and any other items that are in the User’s possession. c. The Owner may apply to cancel the entry of the User as a Registered User against the registration of the Intellectual Property, and the User agrees to execute all necessary documents to effect such cancellation.

d.After termination of this Agreement, the User shall continue to be bound the duties required in Clause 5 of this Agreement.

ACCORDINGLY, THE PARTIES HAVE EXECUTED THIS AGREEMENT BELOW. ASSIGNOR: [Company Name] BY [signature] [typed name] [title]

ASSIGNEE: [Company Name] BY [signature] [typed name] [title]