The License To Use Intellectual Property agreement is essential for businesses and individuals seeking to legally utilize intellectual property owned by others in the Philippines. This document is commonly used when a rights holder wishes to grant permission to another party to use their intellectual property while maintaining ownership. It must comply with the Philippine Intellectual Property Code and related regulations, addressing key aspects such as license scope, territorial restrictions, duration, and compensation. The agreement is particularly important in protecting both the licensor's IP rights and the licensee's interests, establishing clear guidelines for usage, quality control, and dispute resolution. It includes specific provisions required under Philippine law and can be customized based on the type of intellectual property involved (patents, trademarks, copyrights, or trade secrets) and the intended use.
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1. Parties: Identifies and provides full details of the licensor and licensee, including their legal status and principal places of business
2. Background: Establishes the context of the agreement, including the ownership of the intellectual property and the parties' intentions
3. Definitions: Defines key terms used throughout the agreement to ensure clarity and prevent misinterpretation
4. Grant of License: Specifies the exact nature and scope of the license being granted, including whether it is exclusive or non-exclusive
5. Territory: Defines the geographical area where the license can be exercised
6. Term and Termination: Specifies the duration of the license and circumstances under which it can be terminated
7. Payment Terms: Details the licensing fees, royalties, and payment schedule
8. IP Protection and Ownership: Confirms the licensor's ownership of the IP and obligations regarding IP protection
9. Licensee Obligations: Sets out the licensee's responsibilities in using the licensed IP
10. Quality Control: Establishes standards for the use of the IP and quality maintenance requirements
11. Representations and Warranties: Contains assertions about IP ownership, right to license, and other material facts
12. Confidentiality: Protects confidential information exchanged during the license relationship
13. Governing Law and Jurisdiction: Specifies Philippine law as governing law and defines jurisdiction for dispute resolution
14. General Provisions: Includes standard boilerplate clauses such as force majeure, notices, and amendment procedures
1. Sub-licensing Rights: Include when the licensee is permitted to sub-license the IP to third parties
2. Improvements: Include when parties anticipate modifications or improvements to the IP and need to establish ownership
3. Source Code Escrow: Include for software licenses where source code access may be needed under specific circumstances
4. Training and Support: Include when the licensor will provide technical support or training
5. Export Control: Include when the IP may be subject to international trade restrictions
6. Insurance: Include when specific insurance coverage is required for the licensed IP use
7. Data Protection: Include when personal data processing is involved in the IP usage
8. Minimum Performance Requirements: Include when the license is contingent on achieving certain performance metrics
1. Schedule 1 - Licensed Intellectual Property: Detailed description of the IP being licensed, including registration numbers and specifications
2. Schedule 2 - License Fees and Royalties: Detailed breakdown of all financial terms, including calculation methods
3. Schedule 3 - Technical Specifications: Technical details and requirements for the proper use of the IP
4. Schedule 4 - Quality Control Standards: Specific quality standards and testing procedures
5. Schedule 5 - Approved Use Cases: Specific approved applications and use cases for the licensed IP
6. Appendix A - Form of Reports: Templates for required reporting on IP usage and royalty calculations
7. Appendix B - Support and Maintenance Terms: Detailed terms for any technical support or maintenance services
8. Appendix C - Trademark Usage Guidelines: Specific guidelines for proper use of any licensed trademarks
Relevant legal definitions
Clauses
Relevant Industries
Technology
Software Development
Manufacturing
Research and Development
Entertainment
Education
Pharmaceuticals
Biotechnology
Consumer Goods
Media and Publishing
Telecommunications
Fashion and Retail
Automotive
Electronics
Relevant Teams
Legal
Intellectual Property
Research and Development
Business Development
Commercial
Compliance
Technology Transfer
Product Development
Innovation
Strategy
Operations
Relevant Roles
Intellectual Property Counsel
Legal Director
Chief Legal Officer
Licensing Manager
IP Portfolio Manager
Business Development Director
Technology Transfer Officer
Research Director
Chief Technology Officer
Commercial Director
General Counsel
Contract Manager
Innovation Manager
Product Development Manager
Compliance Officer
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