Template for Simple Non-Exclusive License

                          

Simple Nonexclusive License Agreement Template

__________, a corporation of __________ (“ABC”), having a principal place of business at _____________, and __________ Company, a corporation of __________ (“XYZ”), having a principal place of business at ______________, agree as follows:[1]

 

1. ABC owns numerous patents, plant breeder rights and proprietary technology as listed in Appendix 1 (“IP Assets”)[2] that are directed to production and sale of _______________ (“Product”).[3]
2. ABC wants to promote the worldwide distribution of Products by broadly licensing the IP Assets to all qualified entities.
3. XYZ manufacture and sells products worldwide and wishes to obtain a license under the IP Assets.
4. Effective as of the date of signature of the last party to sign this agreement (“Effective Date”),[4] ABC grants to XYZ a worldwide, nonexclusive license under the IP Assets to make, use, sell, offer for sale, import, propagate, plant, grow, reproduce, harvest, store and distribute
5. ABC will deliver to XYZ the proprietary technology listed in Appendix 1 within 30 days after the Effective Date. All such proprietary technology will be confidential information and ABC agrees, for itself and its officers and employees, to hold the proprietary technology in confidence and not to use it except for purposes licensed under this agreement.
   1. The confidentiality obligations under this agreement
      1. Will expire as to any part of the technology that XYZ can show was known to it as of the Effective Date, has become available to the public through no fault of XYZ, or is obtained by XYZ from a third party that had the right to disclose it.
      2. Will expire completely on the 10^th anniversary of the Effective Date.[5]
   2. ABC also grants XYZ a right to grant sublicenses to third parties on terms and conditions that are consistent with the terms of this agreement.
      1. Each sublicense will be in writing and a copy thereof will be delivered to ABC within 30 days after its execution.
      2. Each sublicense will permit ABC to audit the records of the sublicensee as to revenue received and royalties paid.
      3. Each sublicense will provide for termination upon expiration or termination of this Agreement.
      4. XYZ may grant sublicenses without a requirement to pay an up front amount as in paragraph 6.
   3. In consideration for the license granted in paragraph 4, XYZ will pay to ABC __________ Euros (€_________) not later than 10 days after the Effective Date.
   4. In further consideration for the license granted, XYZ will pay to ABC, within 30 days after the end of each calendar year, a royalty of _____ % of the total annual revenue of XYZ for its sale, distribution, export or use of Products in such calendar year and _____ % of the total annual revenue received by XYZ for sublicenses granted under paragraph 5.
      6. For the first calendar year, royalties will be payable on revenue from sale, distribution, export or use of Products by XYZ and revenue received from sublicenses after the Effective Date, provide, however, that XYZ may credit against such royalties accruing in the first calendar year the amount paid to ABC under paragraph 6.
      7. With each royalty payment, XYZ will deliver to ABC a written report of all sales, distributions, exports or uses of Products by XYZ and of all revenue from sublicensees in the preceding calendar year or part thereof.
      8. XYZ will keep all records relating to each report and royalty payment.
      9. On reasonable advance written notice to XYZ, ABC may audit the records of XYZ.
   5. Each party may assign this agreement to a successor to the business associated with this Agreement which assignment will be effective on the date the party delivers to the other party a written agreement by such successor to comply with the terms of this agreement.
   6. This agreement will be in effect from the Effective Date until the later of expiration of the last to expire patent in the IP Assets or the 10^th anniversary of the Effective Date.
      1. XYZ may terminate this Agreement at any time without cause upon 90 days advance written notice.
      2. ABC may terminate this Agreement for material breach of any provision of this agreement, such termination to be effective 60 days after written notice to XYZ of the breach unless XYZ will have cured the identified breach within such 60-day period.
   7. Any notice required or permitted under this agreement will be effective if received in writing or electronically by the parties at their respective addresses at the beginning of this agreement. The party sending the notice will have the burden to prove receipt.
   8. This agreement will be construed and applied under the laws of ____________.
   9. The parties agree to jurisdiction of the courts of ____________ for any disputes between the parties relating to this agreement or performance hereunder.

 

IN WITNESS WHEREOF, each of the parties has caused this Agreement to be executed and duly sealed in duplicate originals by its duly authorized representative.

                        ABC Company

                        by: ___________________________

                       

Attest:

______________________________

Secretary

                        XYZ Company

                        by: ___________________________

                       

Attest:

______________________________

Secretary

[1] Fill in the blanks with name of parties, their places of legal incorporation and their addresses.  Use an abbreviation for the name of each party rather than licensee or licensor to avoid confusion in the agreement. 

[2] Appendix 1 should include detailed identification of IP Assets, particularly of proprietary technology which cannot be identified by reference to filing or issue number.

[3] Product must be carefully defined since it serves as the basis for rights and obligations.  It can be defined as anything otherwise infringing or using IP Assets but that is imprecise and an invitation for future dispute between the parties.  It is preferred to identify the Product with particularity (e.g., a crop, a DNA construct, etc.) that uses or infringes the IP Assets.

[4] It is important to specify the effective date.  Any date can be selected; if no date is specified, it will be the date of signature of the last party to sign.

[5] If the technology will become public or obsolete over time, selecting a specific period for expiration of confidentiality obligations is preferred, but if the technology is likely to have long term value without risk for public disclosure, an indefinite term expiring as provided in paragraph 5(a)(i).