Patent Licence Agreement (England and Wales)

This Patent Licence Agreement is designed for use in England and Wales. A patent owner holds exclusive rights to market his or her invention but is also entitled to transfer those rights to another party. This form will assist in drafting this type of licensing agreement and is available for immediate download.

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A patent is a legal device that protects inventors and prohibits other persons from producing or profiting from their inventions for a defined period of time. While the patent owner holds certain exclusive rights to make and market the invention, an owner is entitled to transfer those rights to another party either completely, by way of an assignment, or for a limited time, duration or scope, by way of a licence.

Among others, this form includes the following provisions:
  • Grant of Licence
  • Term and Payments
  • Licensor’s Representations and Warranties
  • Assignment and General Provisions
This lawyer-prepared packet contains:
  1. General Instructions
  2. General Information
  3. Step-by-Step Instructions
  4. Patent Licence Agreement for England and Wales
Law Compliance: This form complies with the laws of England and Wales
This is the content of the form and is provided for your convenience. It is not necessarily what the actual form looks like and does not include the information, instructions and other materials that come with the form you would purchase. An actual sample can also be viewed by clicking on the "Sample Form" near the top left of this page.












Patent Licence Agreement
(England and Wales)









This Packet Includes:
   1. General Instructions
   2. General Information
   3. Step-by-Step Instructions
   4. Patent Licence Agreement






General Instructions
 Patent Licence Agreement


   This kit includes information and tools that will assist you in drafting a patent licence agreement, licensing the use of a UNITED KINGDOM patent.

   A patent is a legal device that protects inventors, prohibiting other persons from producing or profiting from their inventions for a defined period of time.  While the patent owner holds certain exclusive rights to make and market the invention, the owner is entitled to transfer those rights to another party either completely, by way of an assignment, or for a limited time, duration or scope, by way of a licence.

   Included in this kit is a sample form for drafting a patent licence agreement, along with general instructions explaining the significance and operation of each provision in the agreement.

   NOTE:  This kit is designed to be used as a guide for drafting your own agreement.  You are advised to have a competent patent solicitor review any patent licence agreement before you sign it.







General Information
Patent Licence Agreement

A patent is a legal device that protects an inventor and his invention.  The patent prohibits other persons from using or profiting from that invention for a specific period of time, during which the inventor has the exclusive right to exploit the invention.

In order to qualify for a patent, the invention must be new, it must involve an inventive step and it should be capable of industrial application. Further, the material to be patented must be novel and non-obvious.

The owner or registrant of a patent has the right under U.K. Patents Act 1977 to licence the use of the patent to other persons.  Patent licences are not assignments, and they do not transfer ownership of the patent.  Instead, they act as agreements on the part of the owner not to prevent the licensee from exploiting the patent.

Patent assignments may be registered with the U.K. Intellectual Property Office the patent will be issued to the assignee upon approval of the application.  However, whereas patent assignments enjoy a host of benefits and protections by virtue of being recorded, patent licences enjoy only limited benefits.  The primary benefit of recording your patent licence in the U.K. Intellectual Property Office is that it creates a public record, giving subsequent purchasers of the patent constructive knowledge of the existence of an outstanding licensee.

It is worth noting that recordation also renders the patent licence agreement becomes a public document. It may therefore not be in your interests to record such a licence if the agreement granting the licence contains confidential information you would not want to become available for public consumption.

If you do choose to record your patent licence with the U.K. Intellectual Property Office, you should complete and submit form 21/77 to the patent office (Form available on the U.K. Patent office website www.patent.gov.uk). This form 21/77 can be used for registering both patent assignments and licences. No fee is payable for registration of licences.

For more information about recording your patent licence agreement or general information about U.K. patent law, visit the U.K. Patent office website www.patent.gov.uk.





Step-by-Step Instructions
Patent Licence Agreement

   Patent licence Agreements can be extremely complex.  The sample agreement included in this kit is a basic agreement, addressing the key elements of licensing a patent, and receiving royalty payments in return for that licence.  If your situation requires treatment of more complex issues, you should consult a competent solicitor who can assist you in drafting a suitable agreement.

Grant of licence

   The licence granted in this type of agreement spells out the kinds of rights that the licensee will be able to enjoy.  You may grant the licensee the right to use the patent for any purpose whatsoever.  Or you may place limitations upon the licensees use of the patent, i.e., restricting the exploitation of the patent to certain particular commercial uses, or to specific geographic areas.  Make sure you describe any limitations upon licensees permitted uses in detail, thus clearly establishing the scope and boundaries of the licence.

Term

   The term of the licence agreement, and of the licence granted therein, is generally either for a fixed period of years or for the full life of the licensors patent.  Patents generally have a life of 20 years, provided you must renew it every year after the 5th year.

Payments

   There are a number of different ways of calculating royalty payments.  In some cases, a royalty is a flat amount paid based on the number of units sold by the licensee.  In other cases, a royalty is computed as a percentage of the sales revenue received by the licensee in the sale of licensed products.

   The simplest method of calculating the royalty as a percentage of total sales is to select a percentage of gross sales revenues from all sales of the licensed products.  However, in many instances, a licensee will be given the right to deduct certain expenses from gross sales revenue before a royalty percentage is applied.  For example, will the royalty be a percentage of the total gross sales received by licensee?  Or will certain expenses be deducted from gross sales before the percentage is taken, i.e., the amount of products returned by customers, expenses incurred in advertising the product, etc.  It is important in

this provision to define clearly the method by which royalty payments will be calculated.



Licensors Representations and Warranties

   The most basic representation that a licensor will generally be expected to make is that it has the ownership interest in the patent that it claims to have, and that it therefore has the right to grant the licence in the first place.  The terms of the sample agreement below state that the licensor will guarantee theses basic representations by indemnifying the licensee against any damages that the licensee might suffer due to the failure of the licensor to live up to those representations.










DISCLAIMER:

FindLegalForms, Inc. (“FLF”) is not a law firm and does not provide legal advice.  The use of these materials is not a substitute for legal advice. Only a solicitor can provide legal advice.  A solicitor should be consulted for all serious legal matters.  No Solicitor-Client relationship is created by use of these materials.  

THESE MATERIALS ARE PROVIDED “AS-IS.  FLF DOES NOT GIVE ANY EXPRESS OR IMPLIED WARRANTIES OF MERCHANTABILITY, SUITABILITY OR COMPLETENESS FOR ANY OF THE MATERIALS FOR YOUR PARTICULAR NEEDS.  THE MATERIALS ARE USED AT YOUR OWN RISK.  IN NO EVENT WILL:  I) FLF, ITS AGENTS, PARTNERS, OR AFFILIATES; OR II) THE PROVIDERS, AUTHORS OR PUBLISHERS OF ITS MATERIALS, BE RESPONSIBLE OR LIABLE FOR ANY DIRECT, INDIRECT, INCIDENTAL, SPECIAL, EXEMPLARY, OR CONSEQUENTIAL DAMAGES (INCLUDING, BUT NOT LIMITED TO, PROCUREMENT OF SUBSTITUTE GOODS OR SERVICES; LOSS OF USE, DATE OR PROFITS; OR BUSINESS INTERRUPTION) HOWEVER USED AND ON ANY THEORY OF LIABILITY, WHETHER IN CONTRACT, STRICT LIABILITY, OR TORT (INCLUDING NEGLIGENCE OR OTHERWISE) ARISING IN ANY WAY OUT OF THE USE OF THESE MATERIALS. 



Patent licence Agreement

THIS AGREEMENT is made this        day of       , 20   , by and between                       (“Licensor”) and                             (“Licensee”, and collectively, the “Parties”).

WHEREAS, Licensor has invented    (Brief description of invention)    (the “Invention”), and has been granted United Kingdom Patent for said invention, Patent No.              (the “Patent”), granted on the patent application filed with the U.K. Intellectual Property Office, Patent Application Number               (the “Patent Application”).

AND WHEREAS, Licensor wishes to permit Licensee to use the Patent in the preparation of          (Brief description of Licensees intended use of Patent)                                          (the “Work”), under the terms set forth in this Agreement;

NOW THEREFORE, in consideration of the mutual promises, covenants, warranties, and other good and valuable consideration set forth herein, the Parties agree as follows:

1.   Grant of Licence.  Licensor hereby grants to Licensee a Licence to use the Patent in the following manner (the Licence”):                                                                                                                                                                                                                                  

The Licence shall be [ ] exclusive [ ] nonexclusive.

Licensor shall remain the sole owner of the Patent.  Licensee shall enjoy only the rights set forth above, and nothing in this Agreement shall entitle Licensee to make any claim to ownership of the Patent.  Licensee may not make any other use of the Patent nor practice under the Patent in any manner other than those authorised above without prior written approval from Licensor.

2.  Term.  

a.   The term of this Agreement shall begin on the date written above and shall continue in full force and effect for a period of               years (the “Term”), unless terminated earlier pursuant to this the terms of this Section 2.

b.   Should any one or more of the following enumerated events occur, Licensor shall have the right to terminate this Agreement:
i.   Licensee does not sell     units of a product based upon or comprising the Patent (a “Licensed Product”) within 12 months of the date of this Agreement.
ii.   Licensee ceases to sell any Licensed Product for any period of 12 consecutive months.
iii.   Licensee materially breaches a material provision, term, or condition under this Agreement.
iv.   Licensee sells all or substantially all of its assets, or experiences a Change in Control.  For the purposes of this Agreement, Change in Control shall mean a sale or other transfer of equity in the Licensee, resulting in a new person or entity becoming the controlling equity holder of the Licensee.

c.   In order to terminate this Agreement pursuant to Subsection (b) above, Licensor must provide written notice to Licensee or to Licensees successor in interest within 30 days of the date of termination stating Licensors intent to terminate and the intended date of termination.

d.   In the event that this Agreement is terminated pursuant to this Section 3, Licensee shall cease using the Patent in the course of Licensees business as soon as is commercially feasible.  Licensee may sell any units of the Work that are on hand after termination of this Agreement, but shall not produce any further units.  

e.   At the end of the Term, or upon any termination of this Agreement, all rights and privileges granted in the Patent pursuant to the Licence shall revert to Licensor, and shall be the sole property of Licensor.

3.  Payments.  

a.   Licensee shall pay to Licensor a royalty of:
        [ ]            per unit of the Licensed Product sold.
[ ] __        % of the gross sales of all Licensed Products sold.
[ ]  Additional details:                                                                                                                                                                  
(Include any considerations, deductions, or other formulae that will be used to determine the definition of “gross sales” for the purposes of this section.)
 
b.   Licensee shall pay to Licensor an advance against the royalties discussed in Subsection (a) above, in the amount of        Sterling Pounds (£).  This advance shall be paid in full to Licensor within 7 days of the execution of this Agreement.

c.   Licensee shall submit to Licensor written quarterly reports (the “Quarterly Reports”) at the end of each quarter of the calendar year (March 31; June 30; September 30; December 31) stating the number of units of the Licensed Product sold for the then-ending quarter, and the corresponding amount owed to Licensor as royalty payments for that quarter (the “Quarterly Royalty Payment”).  Quarterly Reports must be received by Licensor no more than 7 days after the end of each quarter.  Payment of each Quarterly Royalty Payment must be paid to Licensor in full within 30 days of the end of each quarter.  Failure to submit Quarterly Reports or to make Quarterly Royalty Payments within the time allotted above shall be considered to be a material breach of this Agreement.
d.   Licensor shall be given access by Licensee to Licensees records, wherever and whenever commercially reasonable, in order to audit Licensees stated sales records, and to confirm that all royalty payments are properly stated and accounted for.  If it is determined that any Quarterly Royalty Payment has been deficient, Licensee shall have 14 days to pay Licensor the deficient amount.  Failure to pay deficient royalty amounts within the time allotted above shall be considered to be a material breach of this Agreement.
e.   In the event that this Agreement expires or is terminated pursuant to the terms and conditions under Section 2 above, Licensee shall remain obligated to pay to Licensor any royalties due to Licensor for each unit of the Work sold, whether those units were sold before or after the termination of this Agreement.

4.  Licensors Representations and Warranties.  

a.   Licensor represents and warrants that it is the sole and exclusive owner of the Patent, and owns all right, title and interest in the Patent.
b.   Licensor represents and warrants that it has the legal authority to grant Licensee the Licence, and that no other person or entity is required to give its consent for the Licence to be valid.
c.   (if Licence is exclusive) Licensor represents and warrants that Licensor has not licensed the Patent to any person or entity other than Licensee, nor will it licence the Patent to any person or entity other than Licensee for the duration of this Agreement.

5.   Licensors Indemnification.  Licensor agrees to indemnify and hold harmless Licensee for any claims, suits, damages, actions, or other costs arising out any breach of Licensors warranties set forth in Section 4 above.

6.     Licensees Obligations. Licensee shall not take any action, nor omit to take any action, that it has reason to believe will adversely affect the value or integrity of the Patent.  This shall include producing Licensed Products of a poor or dangerous quality.

7.   Licensees Indemnification.  Licensee agrees to indemnify and hold harmless Licensor for any claims, suits, damages, actions, or other costs (including reasonable solicitors fees) arising out of any claimed infringement by Licensee of any patent, copyright, trademark, or other intellectual property of any third party, where such claimed infringement arises out of Licensees use, development, or other exploitation of the Patent.

8.     Infringement.   Licensee shall be responsible, at its sole expense, to defend the Patent against infringement by any third party.  Any recovery made as a result of such a defence may be retained by Licensee.  If Licensee has knowledge of an infringement of the Patent, Licensee shall have 6 months in which to file a suit to defend the Patent.  If Licensee fails to file a suit in that time period, than Licensor shall have the right to defend the Patent at its own expense.  If Licensor defends the Patent due to Licensees failure to file suit as set forth above, Licensor shall have the right to retain any recovery made against a third party for infringement.  Regardless of which Party defends the Patent, both Parties hereby agree to cooperate in any such defence, and to grant the Party defending the Patent access to any records, materials, personnel, or other resources relevant to the defence of the Patent, unless such access would not be commercially feasible.

9.  Sublicense.  (mark the applicable provision)

   [ ]   Licensee shall have the right to sublicense this Agreement.  Licensee shall be responsible for all operations and obligations of any sublicensee of this Agreement.  Licensee must submit written notification of the execution of any new sublicense agreement, or of any material alteration of an existing sublicense agreement, to Licensor within 30 days of such execution or alteration.

   [ ]   Licensee may not sublicense this Agreement without prior written approval of Licensor.

10.   Assignment.   Licensee may not assign its rights, duties or obligations under this Agreement without the prior written approval of Licensor.  Licensee may, however, assign this Agreement without Licensors prior written approval if such transfer is to a purchaser of all or substantially all of Licensees assets, or to a purchaser or other transferee of a controlling equity interest in Licensee.  Licensor shall have the right to transfer its interest in this Agreement and in the Patent without the consent of Licensee.  Licensor must notify Licensee in writing in the event of that Licensor assigns all or a material part of this Agreement (the “Licensors Notice of Assignment”).  The Licensors Notice of Assignment must be sent to Licensee within 30 days of such assignment.

11.   Governing Law.  This Agreement shall be construed in accordance with, and governed in all respects by, the laws of England & Wales, without regard to conflicts of law principles.

12.   Counterparts.   This Agreement may be executed in several counterparts, each of which shall constitute an original and all of which, when taken together, shall constitute one agreement.

13.   Severability.   If any part or parts of this Agreement shall be held unenforceable for any reason, the remainder of this Agreement shall continue in full force and effect. If any provision of this Agreement is deemed invalid or unenforceable by any court of competent jurisdiction, and if limiting such provision would make the provision valid, then such provision shall be deemed to be construed as so limited.

14.   Notice.   Any notice required or otherwise given pursuant to this Agreement shall be in writing and mailed certified return receipt requested, postage prepaid, or delivered by overnight delivery service, addressed as follows:

   If to Licensor:      
      
      
      

   If to Licensee:         
         
      
      

15.   Headings.   The headings for section herein are for convenience only and shall not affect the meaning of the provisions of this Agreement.

16.   Entire Agreement.   This Agreement constitutes the entire agreement between Licensor and Licensee, and supersedes any prior understanding or representation of any kind preceding the date of this Agreement. There are no other promises, conditions, understandings or other agreements, whether oral or written, relating to the subject matter of this Agreement.

IN WITNESS WHEREOF, the parties have caused this Agreement to be executed the day and year first above written.


LICENSOR

                                               
Signature
                                                     
Print Name
LICENSEE

                                                
Signature
                                                 
Print Name


Number of Pages11
DimensionsDesigned for Letter Size (8.5" x 11")
EditableYes (.doc, .wpd and .rtf)
UsageUnlimited number of prints
Product number#33746
This is the content of the form and is provided for your convenience. It is not necessarily what the actual form looks like and does not include the information, instructions and other materials that come with the form you would purchase. An actual sample can also be viewed by clicking on the "Sample Form" near the top left of this page.












Patent Licence Agreement
(England and Wales)









This Packet Includes:
   1. General Instructions
   2. General Information
   3. Step-by-Step Instructions
   4. Patent Licence Agreement






General Instructions
 Patent Licence Agreement


   This kit includes information and tools that will assist you in drafting a patent licence agreement, licensing the use of a UNITED KINGDOM patent.

   A patent is a legal device that protects inventors, prohibiting other persons from producing or profiting from their inventions for a defined period of time.  While the patent owner holds certain exclusive rights to make and market the invention, the owner is entitled to transfer those rights to another party either completely, by way of an assignment, or for a limited time, duration or scope, by way of a licence.

   Included in this kit is a sample form for drafting a patent licence agreement, along with general instructions explaining the significance and operation of each provision in the agreement.

   NOTE:  This kit is designed to be used as a guide for drafting your own agreement.  You are advised to have a competent patent solicitor review any patent licence agreement before you sign it.







General Information
Patent Licence Agreement

A patent is a legal device that protects an inventor and his invention.  The patent prohibits other persons from using or profiting from that invention for a specific period of time, during which the inventor has the exclusive right to exploit the invention.

In order to qualify for a patent, the invention must be new, it must involve an inventive step and it should be capable of industrial application. Further, the material to be patented must be novel and non-obvious.

The owner or registrant of a patent has the right under U.K. Patents Act 1977 to licence the use of the patent to other persons.  Patent licences are not assignments, and they do not transfer ownership of the patent.  Instead, they act as agreements on the part of the owner not to prevent the licensee from exploiting the patent.

Patent assignments may be registered with the U.K. Intellectual Property Office the patent will be issued to the assignee upon approval of the application.  However, whereas patent assignments enjoy a host of benefits and protections by virtue of being recorded, patent licences enjoy only limited benefits.  The primary benefit of recording your patent licence in the U.K. Intellectual Property Office is that it creates a public record, giving subsequent purchasers of the patent constructive knowledge of the existence of an outstanding licensee.

It is worth noting that recordation also renders the patent licence agreement becomes a public document. It may therefore not be in your interests to record such a licence if the agreement granting the licence contains confidential information you would not want to become available for public consumption.

If you do choose to record your patent licence with the U.K. Intellectual Property Office, you should complete and submit form 21/77 to the patent office (Form available on the U.K. Patent office website www.patent.gov.uk). This form 21/77 can be used for registering both patent assignments and licences. No fee is payable for registration of licences.

For more information about recording your patent licence agreement or general information about U.K. patent law, visit the U.K. Patent office website www.patent.gov.uk.





Step-by-Step Instructions
Patent Licence Agreement

   Patent licence Agreements can be extremely complex.  The sample agreement included in this kit is a basic agreement, addressing the key elements of licensing a patent, and receiving royalty payments in return for that licence.  If your situation requires treatment of more complex issues, you should consult a competent solicitor who can assist you in drafting a suitable agreement.

Grant of licence

   The licence granted in this type of agreement spells out the kinds of rights that the licensee will be able to enjoy.  You may grant the licensee the right to use the patent for any purpose whatsoever.  Or you may place limitations upon the licensees use of the patent, i.e., restricting the exploitation of the patent to certain particular commercial uses, or to specific geographic areas.  Make sure you describe any limitations upon licensees permitted uses in detail, thus clearly establishing the scope and boundaries of the licence.

Term

   The term of the licence agreement, and of the licence granted therein, is generally either for a fixed period of years or for the full life of the licensors patent.  Patents generally have a life of 20 years, provided you must renew it every year after the 5th year.

Payments

   There are a number of different ways of calculating royalty payments.  In some cases, a royalty is a flat amount paid based on the number of units sold by the licensee.  In other cases, a royalty is computed as a percentage of the sales revenue received by the licensee in the sale of licensed products.

   The simplest method of calculating the royalty as a percentage of total sales is to select a percentage of gross sales revenues from all sales of the licensed products.  However, in many instances, a licensee will be given the right to deduct certain expenses from gross sales revenue before a royalty percentage is applied.  For example, will the royalty be a percentage of the total gross sales received by licensee?  Or will certain expenses be deducted from gross sales before the percentage is taken, i.e., the amount of products returned by customers, expenses incurred in advertising the product, etc.  It is important in

this provision to define clearly the method by which royalty payments will be calculated.



Licensors Representations and Warranties

   The most basic representation that a licensor will generally be expected to make is that it has the ownership interest in the patent that it claims to have, and that it therefore has the right to grant the licence in the first place.  The terms of the sample agreement below state that the licensor will guarantee theses basic representations by indemnifying the licensee against any damages that the licensee might suffer due to the failure of the licensor to live up to those representations.










DISCLAIMER:

FindLegalForms, Inc. (“FLF”) is not a law firm and does not provide legal advice.  The use of these materials is not a substitute for legal advice. Only a solicitor can provide legal advice.  A solicitor should be consulted for all serious legal matters.  No Solicitor-Client relationship is created by use of these materials.  

THESE MATERIALS ARE PROVIDED “AS-IS.  FLF DOES NOT GIVE ANY EXPRESS OR IMPLIED WARRANTIES OF MERCHANTABILITY, SUITABILITY OR COMPLETENESS FOR ANY OF THE MATERIALS FOR YOUR PARTICULAR NEEDS.  THE MATERIALS ARE USED AT YOUR OWN RISK.  IN NO EVENT WILL:  I) FLF, ITS AGENTS, PARTNERS, OR AFFILIATES; OR II) THE PROVIDERS, AUTHORS OR PUBLISHERS OF ITS MATERIALS, BE RESPONSIBLE OR LIABLE FOR ANY DIRECT, INDIRECT, INCIDENTAL, SPECIAL, EXEMPLARY, OR CONSEQUENTIAL DAMAGES (INCLUDING, BUT NOT LIMITED TO, PROCUREMENT OF SUBSTITUTE GOODS OR SERVICES; LOSS OF USE, DATE OR PROFITS; OR BUSINESS INTERRUPTION) HOWEVER USED AND ON ANY THEORY OF LIABILITY, WHETHER IN CONTRACT, STRICT LIABILITY, OR TORT (INCLUDING NEGLIGENCE OR OTHERWISE) ARISING IN ANY WAY OUT OF THE USE OF THESE MATERIALS. 



Patent licence Agreement

THIS AGREEMENT is made this        day of       , 20   , by and between                       (“Licensor”) and                             (“Licensee”, and collectively, the “Parties”).

WHEREAS, Licensor has invented    (Brief description of invention)    (the “Invention”), and has been granted United Kingdom Patent for said invention, Patent No.              (the “Patent”), granted on the patent application filed with the U.K. Intellectual Property Office, Patent Application Number               (the “Patent Application”).

AND WHEREAS, Licensor wishes to permit Licensee to use the Patent in the preparation of          (Brief description of Licensees intended use of Patent)                                          (the “Work”), under the terms set forth in this Agreement;

NOW THEREFORE, in consideration of the mutual promises, covenants, warranties, and other good and valuable consideration set forth herein, the Parties agree as follows:

1.   Grant of Licence.  Licensor hereby grants to Licensee a Licence to use the Patent in the following manner (the Licence”):                                                                                                                                                                                                                                  

The Licence shall be [ ] exclusive [ ] nonexclusive.

Licensor shall remain the sole owner of the Patent.  Licensee shall enjoy only the rights set forth above, and nothing in this Agreement shall entitle Licensee to make any claim to ownership of the Patent.  Licensee may not make any other use of the Patent nor practice under the Patent in any manner other than those authorised above without prior written approval from Licensor.

2.  Term.  

a.   The term of this Agreement shall begin on the date written above and shall continue in full force and effect for a period of               years (the “Term”), unless terminated earlier pursuant to this the terms of this Section 2.

b.   Should any one or more of the following enumerated events occur, Licensor shall have the right to terminate this Agreement:
i.   Licensee does not sell     units of a product based upon or comprising the Patent (a “Licensed Product”) within 12 months of the date of this Agreement.
ii.   Licensee ceases to sell any Licensed Product for any period of 12 consecutive months.
iii.   Licensee materially breaches a material provision, term, or condition under this Agreement.
iv.   Licensee sells all or substantially all of its assets, or experiences a Change in Control.  For the purposes of this Agreement, Change in Control shall mean a sale or other transfer of equity in the Licensee, resulting in a new person or entity becoming the controlling equity holder of the Licensee.

c.   In order to terminate this Agreement pursuant to Subsection (b) above, Licensor must provide written notice to Licensee or to Licensees successor in interest within 30 days of the date of termination stating Licensors intent to terminate and the intended date of termination.

d.   In the event that this Agreement is terminated pursuant to this Section 3, Licensee shall cease using the Patent in the course of Licensees business as soon as is commercially feasible.  Licensee may sell any units of the Work that are on hand after termination of this Agreement, but shall not produce any further units.  

e.   At the end of the Term, or upon any termination of this Agreement, all rights and privileges granted in the Patent pursuant to the Licence shall revert to Licensor, and shall be the sole property of Licensor.

3.  Payments.  

a.   Licensee shall pay to Licensor a royalty of:
        [ ]            per unit of the Licensed Product sold.
[ ] __        % of the gross sales of all Licensed Products sold.
[ ]  Additional details:                                                                                                                                                                  
(Include any considerations, deductions, or other formulae that will be used to determine the definition of “gross sales” for the purposes of this section.)
 
b.   Licensee shall pay to Licensor an advance against the royalties discussed in Subsection (a) above, in the amount of        Sterling Pounds (£).  This advance shall be paid in full to Licensor within 7 days of the execution of this Agreement.

c.   Licensee shall submit to Licensor written quarterly reports (the “Quarterly Reports”) at the end of each quarter of the calendar year (March 31; June 30; September 30; December 31) stating the number of units of the Licensed Product sold for the then-ending quarter, and the corresponding amount owed to Licensor as royalty payments for that quarter (the “Quarterly Royalty Payment”).  Quarterly Reports must be received by Licensor no more than 7 days after the end of each quarter.  Payment of each Quarterly Royalty Payment must be paid to Licensor in full within 30 days of the end of each quarter.  Failure to submit Quarterly Reports or to make Quarterly Royalty Payments within the time allotted above shall be considered to be a material breach of this Agreement.
d.   Licensor shall be given access by Licensee to Licensees records, wherever and whenever commercially reasonable, in order to audit Licensees stated sales records, and to confirm that all royalty payments are properly stated and accounted for.  If it is determined that any Quarterly Royalty Payment has been deficient, Licensee shall have 14 days to pay Licensor the deficient amount.  Failure to pay deficient royalty amounts within the time allotted above shall be considered to be a material breach of this Agreement.
e.   In the event that this Agreement expires or is terminated pursuant to the terms and conditions under Section 2 above, Licensee shall remain obligated to pay to Licensor any royalties due to Licensor for each unit of the Work sold, whether those units were sold before or after the termination of this Agreement.

4.  Licensors Representations and Warranties.  

a.   Licensor represents and warrants that it is the sole and exclusive owner of the Patent, and owns all right, title and interest in the Patent.
b.   Licensor represents and warrants that it has the legal authority to grant Licensee the Licence, and that no other person or entity is required to give its consent for the Licence to be valid.
c.   (if Licence is exclusive) Licensor represents and warrants that Licensor has not licensed the Patent to any person or entity other than Licensee, nor will it licence the Patent to any person or entity other than Licensee for the duration of this Agreement.

5.   Licensors Indemnification.  Licensor agrees to indemnify and hold harmless Licensee for any claims, suits, damages, actions, or other costs arising out any breach of Licensors warranties set forth in Section 4 above.

6.     Licensees Obligations. Licensee shall not take any action, nor omit to take any action, that it has reason to believe will adversely affect the value or integrity of the Patent.  This shall include producing Licensed Products of a poor or dangerous quality.

7.   Licensees Indemnification.  Licensee agrees to indemnify and hold harmless Licensor for any claims, suits, damages, actions, or other costs (including reasonable solicitors fees) arising out of any claimed infringement by Licensee of any patent, copyright, trademark, or other intellectual property of any third party, where such claimed infringement arises out of Licensees use, development, or other exploitation of the Patent.

8.     Infringement.   Licensee shall be responsible, at its sole expense, to defend the Patent against infringement by any third party.  Any recovery made as a result of such a defence may be retained by Licensee.  If Licensee has knowledge of an infringement of the Patent, Licensee shall have 6 months in which to file a suit to defend the Patent.  If Licensee fails to file a suit in that time period, than Licensor shall have the right to defend the Patent at its own expense.  If Licensor defends the Patent due to Licensees failure to file suit as set forth above, Licensor shall have the right to retain any recovery made against a third party for infringement.  Regardless of which Party defends the Patent, both Parties hereby agree to cooperate in any such defence, and to grant the Party defending the Patent access to any records, materials, personnel, or other resources relevant to the defence of the Patent, unless such access would not be commercially feasible.

9.  Sublicense.  (mark the applicable provision)

   [ ]   Licensee shall have the right to sublicense this Agreement.  Licensee shall be responsible for all operations and obligations of any sublicensee of this Agreement.  Licensee must submit written notification of the execution of any new sublicense agreement, or of any material alteration of an existing sublicense agreement, to Licensor within 30 days of such execution or alteration.

   [ ]   Licensee may not sublicense this Agreement without prior written approval of Licensor.

10.   Assignment.   Licensee may not assign its rights, duties or obligations under this Agreement without the prior written approval of Licensor.  Licensee may, however, assign this Agreement without Licensors prior written approval if such transfer is to a purchaser of all or substantially all of Licensees assets, or to a purchaser or other transferee of a controlling equity interest in Licensee.  Licensor shall have the right to transfer its interest in this Agreement and in the Patent without the consent of Licensee.  Licensor must notify Licensee in writing in the event of that Licensor assigns all or a material part of this Agreement (the “Licensors Notice of Assignment”).  The Licensors Notice of Assignment must be sent to Licensee within 30 days of such assignment.

11.   Governing Law.  This Agreement shall be construed in accordance with, and governed in all respects by, the laws of England & Wales, without regard to conflicts of law principles.

12.   Counterparts.   This Agreement may be executed in several counterparts, each of which shall constitute an original and all of which, when taken together, shall constitute one agreement.

13.   Severability.   If any part or parts of this Agreement shall be held unenforceable for any reason, the remainder of this Agreement shall continue in full force and effect. If any provision of this Agreement is deemed invalid or unenforceable by any court of competent jurisdiction, and if limiting such provision would make the provision valid, then such provision shall be deemed to be construed as so limited.

14.   Notice.   Any notice required or otherwise given pursuant to this Agreement shall be in writing and mailed certified return receipt requested, postage prepaid, or delivered by overnight delivery service, addressed as follows:

   If to Licensor:      
      
      
      

   If to Licensee:         
         
      
      

15.   Headings.   The headings for section herein are for convenience only and shall not affect the meaning of the provisions of this Agreement.

16.   Entire Agreement.   This Agreement constitutes the entire agreement between Licensor and Licensee, and supersedes any prior understanding or representation of any kind preceding the date of this Agreement. There are no other promises, conditions, understandings or other agreements, whether oral or written, relating to the subject matter of this Agreement.

IN WITNESS WHEREOF, the parties have caused this Agreement to be executed the day and year first above written.


LICENSOR

                                               
Signature
                                                     
Print Name
LICENSEE

                                                
Signature
                                                 
Print Name


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