The License Back Agreement is essential in situations where a party has transferred ownership of intellectual property but requires continued access to or use of that IP for their operations. This document type is commonly used in corporate restructuring, technology transfers, or research commercialization under Austrian jurisdiction. The agreement carefully balances the interests of both parties by defining the scope of licensed rights, territorial limitations, and commercial terms while ensuring compliance with Austrian legal requirements, particularly the ABGB and intellectual property laws. It's particularly relevant in technology transfers, joint venture arrangements, or when spinning off divisions of companies where ongoing access to the transferred IP is crucial for business continuity.
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1. Parties: Identification and details of the contracting parties
2. Background: Context of the original IP rights transfer and reason for the license back arrangement
3. Definitions: Key terms used throughout the agreement, including technical terms and defined concepts
4. Grant of License: Specific rights being licensed back, including scope, territory, and field of use
5. Term and Termination: Duration of the license and circumstances under which it can be terminated
6. Payment Terms: Financial arrangements, including any royalties, fees, or other compensation
7. IP Ownership and Protection: Confirmation of underlying IP ownership and obligations to protect IP rights
8. Confidentiality: Obligations regarding confidential information exchanged under the agreement
9. Warranties and Representations: Standard warranties regarding IP ownership, right to license, and non-infringement
10. Liability and Indemnification: Allocation of risks and responsibilities between parties
11. Governing Law and Jurisdiction: Specification of Austrian law and jurisdiction for dispute resolution
1. Sublicensing Rights: Include when the licensee needs the right to sublicense to third parties
2. Quality Control: Include when the licensed IP requires maintaining certain quality standards
3. Improvements: Include when parties need to address ownership and licensing of improvements to the licensed IP
4. Export Control: Include when the licensed technology is subject to export control regulations
5. Source Code Escrow: Include when software is involved and source code access needs to be secured
6. Data Protection: Include when personal data processing is involved in the licensed technology
7. Competition Law Compliance: Include specific provisions when the agreement might raise competition law concerns
8. Insurance: Include when specific insurance coverage is required for the licensed activities
1. Schedule 1: Licensed IP: Detailed description of the intellectual property being licensed back
2. Schedule 2: Technical Specifications: Technical details and requirements for the licensed technology
3. Schedule 3: Royalty Calculations: Detailed methodology for calculating royalties if applicable
4. Schedule 4: Quality Standards: Specific quality requirements and testing procedures if applicable
5. Schedule 5: Support Services: Details of any technical support or maintenance services included
6. Appendix A: Form of Reports: Templates for required reporting under the agreement
7. Appendix B: Contact Details: Key contacts for various aspects of the agreement implementation
Relevant legal definitions
Clauses
Relevant Industries
Technology
Software Development
Biotechnology
Pharmaceuticals
Manufacturing
Research and Development
Electronics
Telecommunications
Automotive
Aerospace
Medical Devices
Clean Technology
Industrial Automation
Relevant Teams
Legal
Intellectual Property
Research and Development
Technology Transfer
Innovation
Business Development
Compliance
Technical Operations
Product Development
Corporate Strategy
Relevant Roles
Legal Counsel
Intellectual Property Manager
Technology Transfer Officer
Research Director
Chief Technology Officer
Innovation Manager
Licensing Manager
Contract Manager
Patent Attorney
Research and Development Director
Business Development Manager
Chief Legal Officer
Compliance Officer
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