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Out Licensing Agreement
"I need an Out Licensing Agreement for licensing our proprietary software technology to manufacturers in the automotive industry across the EU, with specific provisions for quality control and the right to sublicense to approved third-party developers."
1. Parties: Identification and details of the licensor and licensee
2. Background: Context of the agreement, including brief description of the intellectual property and business rationale
3. Definitions: Defined terms used throughout the agreement
4. Grant of License: Scope of the license, including territory, field of use, and exclusivity provisions
5. License Fees and Royalties: Financial terms, including upfront payments, royalty rates, and payment terms
6. Records and Audit Rights: Licensee's obligations regarding financial records and licensor's audit rights
7. Intellectual Property Rights: Ownership of IP, improvements, and new developments
8. Quality Control: Standards for licensed products/services and licensor's inspection rights
9. Confidentiality: Protection of confidential information exchanged between parties
10. Representations and Warranties: Parties' assurances regarding IP ownership, right to contract, and other matters
11. Term and Termination: Duration of agreement and circumstances for termination
12. Post-Termination Obligations: Parties' obligations after agreement ends
13. Governing Law and Jurisdiction: Applicable law and dispute resolution mechanisms
14. General Provisions: Standard boilerplate clauses including assignment, notices, and entire agreement
1. Development Obligations: Used when licensee must develop products using the licensed IP, including milestones and timelines
2. Technical Support and Training: Include when licensor provides technical assistance or training to licensee
3. Regulatory Compliance: Required for regulated industries like pharmaceuticals or medical devices
4. Sub-licensing Rights: Include when licensee is permitted to sub-license the IP to third parties
5. Marketing and Promotion: Used when specific marketing requirements or restrictions apply
6. Export Control: Required when licensed products/technology are subject to export regulations
7. Insurance Requirements: Include when specific insurance coverage is required for licensed activities
8. Source Code Escrow: Used in software licensing when source code needs to be held in escrow
9. Performance Obligations: Include when licensee must meet specific performance targets or minimums
10. Change Control: Used when formal processes for changes to licensed products/technology are needed
1. Schedule 1: Licensed Intellectual Property: Detailed description of all IP being licensed, including patent numbers, trademarks, etc.
2. Schedule 2: Territory and Field of Use: Detailed specification of geographic territories and permitted applications
3. Schedule 3: Royalty Rates and Payments: Detailed financial terms, including royalty calculations and payment schedules
4. Schedule 4: Technical Specifications: Technical details of licensed technology or quality standards for licensed products
5. Schedule 5: Development Milestones: If applicable, detailed development targets and timelines
6. Schedule 6: Support Services: Details of technical support or training to be provided
7. Schedule 7: Approved Sub-licensees: If applicable, list of pre-approved sub-licensees
8. Schedule 8: Brand Guidelines: Requirements for use of licensed trademarks or branding
9. Appendix A: Form of Royalty Report: Template for required royalty reporting
10. Appendix B: Quality Control Procedures: Detailed quality control and testing requirements
Authors
Technology
Pharmaceuticals
Biotechnology
Manufacturing
Software Development
Media and Entertainment
Telecommunications
Consumer Goods
Industrial Equipment
Medical Devices
Automotive
Chemical Industry
Research and Development
Electronics
Legal
Intellectual Property
Business Development
Research and Development
Finance
Commercial Operations
Compliance
Technology Transfer
Innovation
Product Development
Strategy
Corporate Development
Licensing Operations
Chief Legal Officer
Intellectual Property Counsel
Licensing Manager
Business Development Director
Chief Technology Officer
Commercial Director
Contract Manager
IP Portfolio Manager
Technology Transfer Officer
General Counsel
Patent Attorney
Research and Development Director
Chief Financial Officer
Compliance Officer
Innovation Manager
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