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What is Licensing and Assignment of Invention Agreement?
Licensing and Assignment of Invention Agreement A Licensing and Assignment of Invention Agreement grants a licensee rights to use and assign inventions, specifying licensing terms, assignment conditions, and royalties.
Sample template:
Licensing and Assignment of Invention Agreement
This Licensing and Assignment of Invention Agreement (the "Agreement") is entered into as of ___[Date]___ (the "Effective Date") by and between, Sarah Anderson Company, a ___[State]___ corporation with its principal place of business at ___[Address]___ (hereinafter referred to as the "Licensor"), and Innovate Tech Solutions LLC, a ___[State]___ limited liability company, with its principal place of business at ___[Address]___, (hereinafter referred to as the "Licensee").
1. Definitions
1.1. "Invention" means the inventions described in Schedule A attached hereto and incorporated herein by reference, including all patents, patent applications, utility models, designs, know-how, trade secrets, and technical information related to the Invention.
1.2. "Net Sales" means the gross revenue received by Licensee from the sale, lease, license, or other disposition of products or services incorporating the Invention, less applicable taxes, discounts, returns, rebates, and allowances.
1.3. "Territory", means the geographic area of the United States, in which the Licensee has the right to exploit the Invention.
2. Grant of License
2.1. License Grant, Licensor hereby grants to Licensee, and Licensee accepts, a non-exclusive, non-transferable, royalty-bearing license to use, sublicense, make, have made, sell, offer for sale, import, and export products and services incorporating the Invention in the Territory, subject to the terms and conditions set forth in this Agreement.
2.2. Reservation of Rights, Licensor reserves all other rights not expressly granted to Licensee under this Agreement.
3. Assignment of Invention
3.1. Assignment, Upon Licensee's written request and subject to the terms and conditions of this Agreement, Licensor shall assign to Licensee all of its right, title, and interest in and to the Invention.
3.2. Conditions, This assignment shall be subject to (a) Licensee paying all fees and expenses associated with the assignment and recording of the Invention to Licensee, (b) Licensee's full and complete performance of all of its obligations under this Agreement, and (c) Licensee's payment of the Assignment Fee to Licensor as specified in Section 5.2.
4. Royalties and Payments
4.1. Royalties, In consideration for the grant of the license herein, Licensee shall pay to Licensor a royalty of ___% of Licensee's Net Sales of Licensed Products and Services. Royalties shall be payable within thirty (30) days after the end of each calendar quarter in which sales of Licensed Products and Services occur.
4.2. Minimum Annual Royalties, Licensee shall pay to Licensor a minimum annual royalty ("MAR") of US$___, payable in equal quarterly installments, beginning on the first anniversary of the Effective Date and continuing for the duration of this Agreement. The MAR shall be creditable against any royalty payments due under Section 4.1 hereof.
4.3. Recordkeeping, Licensee shall maintain accurate books and records relating to the calculation of Net Sales and royalty payments. Licensee shall permit Licensor or its representatives to audit these books and records once a calendar year upon reasonable notice and during normal business hours.
5. Assignment Fee
5.1. Assignment Fee, In consideration for the assignment of the Invention pursuant to Section 3.1, Licensee shall pay to Licensor a non-refundable assignment fee of US$___ ("Assignment Fee"), payable within thirty (30) days upon receipt of Licensor's invoice, after the assignment has been completed and recorded.
5.2. Effect of Payment, Upon Licensee's payment of the Assignment Fee in accordance with Section 5.1, the royalty obligations in Section 4.1 and the minimum annual royalty obligations in Section 4.2 shall cease, and this Agreement shall be deemed terminated except for any surviving provisions.
6. Representations and Warranties
6.1. Mutual Representations and Warranties, Each Party represents and warrants that: (a) it has full power and authority to enter into and perform this Agreement; (b) this Agreement constitutes a valid and binding obligation of such Party; (c) it shall comply with all applicable laws and regulations in its performance of this Agreement.
6.2. Licensor Representations and Warranties, Licensor represents and warrants that: (a) it is the sole owner of the Invention and has full power and authority to grant the license and assign the Invention as contemplated herein; (b) it has not granted any licenses, assignments, or other rights in the Invention that would conflict with the rights and license granted hereunder; (c) to its knowledge, the Invention does not infringe the intellectual property rights of any third party.
7. Term and Termination
7.1. Term, This Agreement shall commence on the Effective Date and continue in force for a period of ___ years, unless earlier terminated pursuant to the provisions of this Section 7.
7.2. Termination for Breach, Either Party may terminate this Agreement: (a) upon thirty (30) days written notice if the other Party materially breaches this Agreement and fails to cure such breach within the notice period, or (b) immediately upon the other Party's insolvency, bankruptcy, or dissolution.
7.3. Effect of Termination, Upon termination of this Agreement, all rights and licenses granted hereunder shall cease, except for any rights and obligations which expressly survive termination.
8. Governing Law and Jurisdiction
This Agreement shall be governed by and construed in accordance with the laws of the United States and the State of ___, without regard to conflicts of laws principles. Any disputes arising out of or in connection with this Agreement shall be subject to the exclusive jurisdiction and venue of the state and federal courts located in ___[County and State]___.
9. Miscellaneous
9.1. Entire Agreement, This Agreement constitutes the entire understanding of the Parties concerning the subject matter hereof and supersedes all prior and contemporaneous agreements, whether oral or written, between the Parties relating thereto.
9.2. Amendment, This Agreement may only be amended in writing signed by both Parties.
9.3. Waiver, Any waiver of any provision of this Agreement must be in writing and signed by the Party waiving such provision. No waiver by either Party of any breach of this Agreement shall be deemed a waiver of any prior or subsequent breach.
9.4. Severability, If any provision of this Agreement is held invalid or unenforceable, the remainder of this Agreement shall continue in full force and effect, and the invalid or unenforceable provision shall be replaced by a valid and enforceable provision that reflects the intent of the Parties.
IN WITNESS WHEREOF, the Parties have executed this Licensing and Assignment of Invention Agreement by their duly authorized representatives as of the Effective Date.
Sarah Anderson Company Innovate Tech Solutions LLC
By: ___________________________ By: _______________________________
Name: _________________________ Name: _____________________________
Title: ________________________ Title: ____________________________
Date: _________________________ Date: _____________________________
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Sections of a Licensing and Assignment of Invention Agreement
In this Licensing and Assignment of Invention Agreement, you will see the following sections:
- Definitions
- Grant of License
- Assignment of Invention
- Royalties and Payments
- Assignment Fee
- Representations and Warranties
- Term and Termination
- Governing Law and Jurisdiction
- Miscellaneous
Summary of the sections:
- Definitions : This section explains the key terms used in the agreement, such as "Invention," "Net Sales," and "Territory." Think of it as a glossary for the rest of the document.
- Grant of License : This section outlines the rights given to the Licensee (Innovate Tech Solutions) to use, sell, and sublicense the Invention within a specific geographic area (the Territory). It also states that the Licensor (Sarah Anderson Company) retains all other rights not explicitly granted in the agreement.
- Assignment of Invention : This section explains the conditions under which the Licensor will transfer ownership of the Invention to the Licensee. It's like selling a car – the owner transfers the title to the buyer, but certain conditions must be met first.
- Royalties and Payments : This section details the financial aspects of the agreement, including the percentage of Net Sales the Licensee must pay to the Licensor as royalties, the minimum annual royalty payments, and the requirement for the Licensee to keep accurate records of sales and royalty calculations.
- Assignment Fee : This section specifies the one-time fee the Licensee must pay to the Licensor for the assignment (transfer) of the Invention. Once this fee is paid, the royalty obligations cease, and the agreement is considered terminated, except for any surviving provisions.
- Representations and Warranties : This section contains promises made by both parties, such as their authority to enter into the agreement and their compliance with applicable laws. The Licensor also promises that they own the Invention and that it doesn't infringe on any third-party intellectual property rights.
- Term and Termination : This section establishes the duration of the agreement and the conditions under which either party can terminate it. It also explains what happens when the agreement ends, such as the cessation of rights and licenses granted under the agreement.
- Governing Law and Jurisdiction : This section states that the agreement is governed by the laws of a specific state and country, and any disputes will be resolved in a particular court system. It's like choosing the "rules of the game" and the "referee" for any disagreements that may arise.
- Miscellaneous : This section covers various general provisions, such as the entire agreement between the parties, the requirement for amendments to be in writing, the concept of waiver, and the severability of any invalid provisions. These are like the "fine print" details that help ensure the agreement is clear and enforceable.
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