(In text and on CD-ROM) 1 Some Premises and Commentary... 1 Form 1.01 Construction... 13

Transcription

1 Contents of Forms (In text and on CD-ROM) 1 Some Premises and Commentary... 1 Form 1.01 Construction Legal Principles Form 2.01 Definition of Licensed Information Form 2.02 Assignment of Patent and Right to Sue for Past Infringement Form 2.03 Assignment of Future Inventions Form 2.04A Joint Ownership of Patents Form 2.04B Joint Ownership of Patents Sharing Form 2.04C Worldwide Rights to Exploit Jointly-Owned Patents Enforcement of Licensed Patents Form 3.03 Examples of Allocation of Rights to Sue for Infringement in an Exclusive License Form 3.03A Form 3.03B Form 3.03C Form 3.03D Form 3.03E Express Agreements: Nonexclusive Licenses, Nonassertion Agreements, and Exclusive Licenses Form 4.01 Nonexclusive License Grant Form 4.02A Covenant Not to Sue Form 4.02B Nonassertion Clause in License Agreement xxiii

2 xxiv Drafting Patent License Agreements Form 4.02C Limit on Scope of Nonassertion Agreement Form 4.02D Assignment of Covenant Not to Sue Form 4.02E Extend Nonassertion to Customers Form 4.03A Representation of No Prior Licenses Form 4.03B Sublicense Rights in an Exclusive License Form 4.03C Minimum Annual Royalty Provision Form 4.03D Conversion to Nonexclusive Form 4.03E Disclaimer of Obligation to Exploit Form 4.03G Assignment of Exclusively Licensed Patent Specific Types of Licenses Form 5.03A Right to Grant Sublicenses Form 5.03B Post-Termination Sublicense Rights Form 5.03C Post-Termination Sublicense Rights Form 5.03D Early Termination of Sublicenses Form 5.03E No Bundling of Sublicensed Rights Implied Licenses and Patent Exhaustion Form 6.04A Disclaimer of Implied License Based on Existing License Agreement Form 6.04B Definition of Licensed Product Form 6.05 Limited License Pursuant to Sale Form 6.06A Authority to Sell Conditioned on Royalty Payment Form 6.06B Grant Clause for Component of Patented Product Form 6.07 Grant Clause for Component of Patented Product Form 6.08 Provision Imposing Contractual Restriction on Licensee s Customers Form 6.09 Notice Obligation Imposed on Territorially Restricted Licensee Issues in License Agreement Negotiation Form 7.03 Negotiation Agreement The Opening Part of the Agreement Form 8.00 Agreement Opening Form 8.02A Agreement Opening Form 8.02B Corporate Component Definition Form 8.02C License Restricted to Company Component Form 8.03 Agreement Recitals

3 Contents of Forms xxv Form 8.04 Modern Agreement Opening Form 8.05 Agreement Format Definitions Form 9.00 Structure of Article Setting Forth Definitions Form 9.01 Examples of Stipulative Definitions Form 9.03A Licensed Patents Definition Form 9.03B Licensed Patents Definition Form 9.03C Controlled Patents Definition Form 9.03D Patents Definition Form 9.03E Licensed Patents Definition Form 9.03F Licensed Product Definition Form 9.03G Valid Claim Definition Form 9.03H Third Party Definition The Granting Clause; Elements of the Grant; Definition of Licensed Subject Matter Form 10.01A Definitions of Subsidiary (Alternate), Controlled Company, and Affiliate (Alternate) Form 10.01B Subsidiaries Receive License Only Upon Notification to Licensor Form 10.01C Definition of Licensed Patents (to Include Inventions Made Within Five Years of Execution) Form 10.01D Definition of Licensed Patents (including all international patents) Form 10.01E Licensed Patents (in terms of products claimed) Form 10.01F Patent Expiration Provision Form 10.01G Limitation of the Have-Made Grant Form 10.01H Definition of Licensed Apparatus Otherwise Disposed Of Form 10.01I Disclaimer of Contractual Restraint on Export Form 10.01J Disclaimer of Contractual Restraint on Export, Reservation of Foreign Patent Rights Form 10.01K Required Notice on Resale Under Foreign Patents Form 10.02A Definition of Licensed Products (Broad) Form 10.02B Detailed Definition of Licensed Products Form 10.02C Definition of Licensed Products (Narrowed)

4 xxvi Drafting Patent License Agreements 11 Reservations and Improvements Form 11.00A Examples of a Reservation of Rights in Grantor Form 11.00A Form 11.00A Form 11.00A Form 11.00B Reservation (Prior Licenses) Form 11.00C Reservation (Prior Licenses) Form 11.00D Reservation (Future Licenses) Form 11.00E Reservation (Prior Licenses) Form 11.01A Improvement Definition Form 11.01B Improvement Definition (Process) Form 11.01C Improvement Exclusion Form 11.01D Improvements Definition (Broad) Form 11.01E Improvement Grant Clause Form 11.01F Grantback License Royalties, Reports, and Payments Form 12.01A Value-Added Royalty Base Form 12.01B Net Selling Price Defined Form 12.01C Net Sales Price Defined (Alternate) Form 12.01D Intracorporate Sales Transactions Form 12.01E Royalties for Transactions Not Arm s Length Form 12.01F Complex Net Sales Definition Form 12.01G Royalties on Other Dispositions of Licensed Products Form 12.01H Royalties on Otherwise Disposed Of Products Form 12.01I Royalty on Components Not Sold Separately Form 12.01J Royalty Stacking Provision Form 12.02A Royalty Obligation Sold or Otherwise Disposed Of Form 12.02B Royalty Obligation Different Countries of Manufacture and Sale Form 12.02C Royalty Obligation Process of Manufacture Form 12.02D Royalty Obligation Product of Licensed Process Made and Sold Form 12.03A Reporting Provision Form 12.03B Post-Termination Report Form 12.03C Royalty Obligation and Termination

5 Contents of Forms xxvii Form 12.03D Royalty Accrual Form 12.03E Alternative Royalty Accrual Form 12.03F Late Payments Form 12.04A Minimum Royalty Provision Form 12.04B Minimum Royalty Provision (Alternate) Form 12.05A Records and Audits Form 12.05B Records and Audits With Time Limit Form 12.05C Audit of Competitor s Records Form 12.05D Audit of Competitor s Records (Alternate) Form 12.06A Inflation Adjustment Clause Form 12.06B Alternate Inflation Adjustment Provision Form Licensee Nomenclature Provision United States Tax Issues Relating to Transfers of Patents and Know-How Protection for a Nonexclusive Licensee Form 14.00A Most Favored Licensee Provision Form 14.00B Most Favored Licensee Provision (Alternate) Form 14.00C Most Favored Licensee Provision (Alternate) Form 14.01A Third-Party Infringement Provision Form 14.01B Third-Party Infringement Provision (Alternate Remedy) Transferability of Rights and Obligations of License Agreements Form 15.00A Assignment at Will Form 15.00B Assignment at Will (Alternate) Form 15.00C No Assignment Form 15.00D Reasonable Withholding of Consent Form 15.00E Reasonable Withholding of Consent (Alternate) Form 15.01A Assignor Representation Form 15.01B Assignor Representation Form 15.01C Assignment of Licensed Patent Form 15.01D Assignment of Licensed Patent Form Assignment by Licensor Form 15.03A Assignment by Licensee Form 15.03B Assignment With Merger, Consolidation, or Sale of Business

6 xxviii Drafting Patent License Agreements Form 15.03C Additional Limitation of Licensee s Assignment Form 15.03D Termination for Change of Control Form 15.03E Definition of Change of Control Representations and Warranties and Negation of Implications Form 16.00A Warranty of Right to Grant License Form 16.00B Licensor Warrants It Will Use Due Care to Secure Ownership of Future Inventions by Its Employees Form 16.00C Licensor Obligates Itself to Secure Ownership of Future Inventions by Its Employees Form 16.00D Qualification of Licensor s Obligation to Secure Rights to Grant Licenses on Future Inventions Form 16.00E Elimination of Patent Rights Acquired by Payment From Scope of License Grant Form 16.00F Licensee Has Option to Obtain License Under After-Acquired Patents Form 16.00G Patent-Related Assurances to the Buyer of a Business Form 16.00H Knowledge Definition Form 16.00I Alternative IP Warranties to the Buyer of a Business Form 16.00J Warranty of Actual Exclusivity Form Negation of Implications by Licensor Indemnification and Liability Insurance Form 17.00A Mutual Indemnity for Collaboration Form 17.00B Defend Obligation Form 17.00C Defend Obligation Alternate Form 17.00D Control of Settlement by Indemnitor Form 17.00E Consequential Damage Disclaimer Form 17.00F Mutual Indemnity in License Agreement Form 17.00G Infringement Indemnity Form 17.00H Infringement Indemnity: Limited Liability Form 17.00I Indemnity Cap Form 17.00J Limiting Liability Form Indemnification by Licensor Form 17.02A Indemnification by Licensee

7 Contents of Forms xxix Form 17.02B Trademark Disclaimer Form Mutual Indemnity Form 17.04A Licensee to Obtain Insurance Form 17.04B Licensee to Obtain Insurance (Alternative) Licensing of Pending Patent Applications Form 18.00A Royalties Under Pending Patent Application Alternative Form 18.00B Royalties Under Pending Patent Application Alternative Form 18.00C Royalties Under Pending Patent Application Alternative Form 18.00D Royalties Under Pending Patent Application Alternative Form 18.01A Filing and Prosecution of Applications in University License Form 18.01B Filing and Prosecution of Applications Alternative Dispute Resolution Form 19.00A Dispute Resolution Negotiations Form 19.00B Dispute Resolution Negotiations Form 19.00C Dispute Resolution Negotiations: Standstill and Confidentiality Form 19.01A Mediation Provision Form 19.01B Mediation Provision Form 19.01C Mediation Provision Form 19.02A Arbitration Provision Form 19.02B Arbitration Provision Form 19.02C Arbitration Provision Form 19.02D Adopted Arbitration Rules Form 19.02E Arbitration Confidentiality Form 19.03A Staged ADR Provision Form 19.03B Staged ADR Provision Common Provisions of Consequence Form 20.00A Choice of Law Provision Form 20.00B Choice of Law Provision Form 20.00C Choice of Law Provision Form 20.00D Choice of Law Provision Form 20.00E Opt Out of UCITA Form 20.00F Choice of Law and Venue Provision Form 20.00G Alternative Venue Provision

8 xxx Drafting Patent License Agreements Form 20.00H Alternative Venue Provision Form 20.01A Notice Provision Form 20.01B Notice Provision Form 20.01C Notice Provision Form 20.02A Marking Provision Form 20.02B Marking Provision Form 20.02C Marking Provision Form 20.02D Marking Provision Form 20.03A Force Majeure Clause Form 20.03B Force Majeure Clause Protection in Exclusive License Form 20.03C Force Majeure Clause Exception for Fixed Payments Form Severability Provision Form Course of Conduct Disclaimer Form Nonwaiver Provision Form 20.07A Integration Provision Form 20.07B Express Negative Covenant in Field of Use License Form 20.08A Government Approval Provision Form 20.08B Government Approval Provision Term and Termination of the Agreement Form 21.01A Term and Termination Form 21.01B Term and Termination (Alternative) Form 21.02A Termination for Breach Form 21.02B Specifying Material Breach Form 21.02C Automatic Termination for Uncured Breach Form Termination on Change of Control Form Termination for Uncured Breach Not the Sole Remedy Execution of Agreements: Problems of Authority and Proof Form 22.00A Assent Form 22.00B Quiet Enjoyment Form 22.01A Execution Paragraph Form 22.01B Execution Paragraph (Alternate) Form 22.01C Execution Paragraph (Alternate for Geographically Dispersed Parties) Form 22.01D Execution Paragraph (Individual) Form 22.01E Execution Paragraph (Partnership)

9 Contents of Forms xxxi Form 22.02A Signature Line Form 22.02B Signature Line (Alternative) Form 22.02C Notarized Acknowledgment Form 22.02D U.S. Consular Notarization Bankruptcy Law Considerations Form Intellectual Property Agreement for Bankruptcy Form 23.04A Intellectual Property Agreement for Bankruptcy Form 23.04B Assignment Restrictions Form 23.04C Two-Notice Termination Provision Form 23.04D Single-Notice Termination Provision Validity and Construction of Patents Form 24.00A Conditional No Challenge Clause Form 24.00B Procedural Ground Rules for a Validity Challenge by the Licensee Form 24.00C Disclosure of Basis for Invalidity of Licensed Patent Form 24.00D Effect of Judgment Dealing With Patent Validity or Scope Settlement of Patent Litigation Form 25.00A Release for Past Infringement Form 25.00B Release for Future Infringement Form 25.00C Limitation on Geographic Scope of Release or License Form 25.00D Release of Claims Based on Confidential Information Form 25.00E Release Conditioned on Compliance With Other Terms Form 25.01A Stipulation of Dismissal With Prejudice Form 25.01B Dismissal of Suit Deferred Form 25.02A Limitation on Publicizing Settlement Form 25.02B Exceptions to Confidentiality Form 25.02C Requirements Imposed to Ensure Compliance With Limited Publicity Form Accused Infringer Waives Right to Relitigate Validity and Enforceability Confidential Disclosure Agreements Form 26.00A Definition of Confidential Information Form 26.00B Definition of Confidential Information

10 xxxii Drafting Patent License Agreements Form 26.00C Exclusions from Confidential Information Form 26.00D Exclusions from Confidential Information (Addition) Form 26.01A Scope of Disclosure Form 26.01B Warranty of Disclosure Form 26.01C Approval of Disclosure Form 26.02A Confidentiality Obligations Form 26.02B Limit on Use Form Residual Rights Form 26.05A License Option Form 26.05B Terms of the License Option Agreements Concerning the Sale or Other Transfer of Unpatented Technological Values Form 27.03A Outline of Technology License Terms Form 27.03B Outline of Technology License Terms Form 27.03C Outline of Technology License Terms Form 27.03D Definition of Technology (pharmaceutical) Form 27.03E Definition of Technology (computer) Form 27.03F Definition of Licensed Technology Form 27.03H Definition of Proprietary Information Form 27.03I Technology Transfer Delivery Terms Form 27.04A Broad Disclaimer of Licensor Liability Form 27.04B Limited Warranty by Licensor Form 27.04C Disclaimer of Liability by Licensor of Early Development Stage Technology Form 27.04D Disclaimer of Obligation to Supply Specific Information Form 27.04E UCC-Based General Disclaimer Form 27.05A Disclaimer of Restriction of Technology Licensee Form 27.05B Limitation on Licensee s Use of Proprietary Information Form 27.05C Supplier of Technical Information Periodically Notifies Licensee After Information Becomes Non-Proprietary Form 27.06A Proprietary Information Definition Form 27.06B Treatment of Licensed Know-How on Early Termination of the License Collaboration Agreements Form Diligence and Unilateral Control Form 28.02A Milestone Payments

11 Contents of Forms xxxiii Form 28.02B Contributions to the Collaboration Form 28.02C Expense and Revenue Balancing Provision Form 28.02D Opt-Out Terms and Consideration Form 28.03A Collaboration Intellectual Property Allocation Definitions Form 28.03B Ownership Allocation in Collaboration Agreement Form 28.03C Enforcement of Jointly Owned Collaboration Patent Rights Form 28.03D Prosecution and Maintenance of Jointly Owned Patent Rights Form 28.03E Allocating Ownership of All Inventions to Single Party Form 28.03F License Grant for Collaboration Activities Form 28.03G License for Collaboration Product After Funding Discontinuance Form 28.04A Prosecution of Collaboration Patent Rights Form 28.04B Enforcement of Collaboration Patent Rights Form 28.05A Provisions Surviving Termination Form 28.05B Accrued Rights on Termination Cross-Border Licensing Issues Form 29.00A Place of Payment, Rate of Exchange, Tax Burden Form 29.00B Place of Payment, Rate of Exchange, Tax Burden Allocated Form 29.00C Tax Burden Allocated Form 29.01A Government Approval Required for Agreement to Become Effective (Alternative 1) Form 29.01B Government Approval Required for Agreement to Become Effective (Alternative 2) Form 29.02A Licensee Required to Register Agreement Form 29.02B Alternate Licensee Recording Requirement Form 29.03A Agreement Terminable Due to Government Action Form 29.03B Agreement Terminable by Licensor Form Choice of Applicable Law

12 xxxiv Drafting Patent License Agreements Form 29.06A Choice of Language Form 29.06B Alternate Language Originals Form Definition of Patents and Licensed Patents (Including Foreign Rights) Export Laws and Regulations of the United States Form 30.00A Written Assurance of Foreign Licensee That It Will Not Reexport Technology and Products of the Technology If Subject to U.S. Security Regulations Form 30.00B Generic Written Assurance of Foreign Licensee That It Will Not Reexport Technology and Products of the Technology If Subject to U.S. Security Regulations Form 30.00C Export Control Notice University and Government Licensing Form 31.00A Representation Regarding Bayh-Dole Act Form 31.00B Representation Regarding Receipt of Government Funds Selected Competition Law Issues Form Agreement Terms for Multipatent Licensing Form 32.04A Label License Notice Form 32.04B Agreement Terms That Authorize a Party Other Than the Patent Owner to Extend Label Licenses to Purchasers of an Unpatented Component Form 32.04C Grant Clause for Licensing a Nonstaple Component Form 32.05A Supplier License Limitation to Avoid Double Royalties Form 32.05B Customer License Limitation to Avoid Double Royalties Appendix A Antitrust Guidelines for the Licensing of Intellectual Property Appendix B Assignments Form B1 Simple Assignment of an Issued Patent by a Corporation Form B2 Assignment of a Pending, Previously Assigned Application by an Owner Other Than the Inventor

13 Contents of Forms xxxv Form B3 Assignment of an Invention, With Ensuing Patent Rights by the Inventor to a Corporation Form B4 Agreement of Assignment by One Company to Another (With Separate Recordable Assignment) Appendix C Simple License Agreement Form C Simple License Agreement Appendix D Nonexclusive License Agreements Form D1 A More Complex Nonexclusive Cross-License Agreement With Royalties on Net Sales Form D2 Nonexclusive License Agreement With Inflation Provision Appendix E Defined Field Patent License Agreement Form E Defined Field Patent License Agreement (Exclusive) Appendix F Patent and Technical Information License Agreement Form F Patent and Technical Information License Agreement (Nonexclusive) Appendix G Confidential Disclosure Agreements Form G1 Confidential Disclosure Agreement for Manufacture of Products for Discloser by Disclosee Form G2 Confidential Evaluation Agreement with Option Terms Form G3 Confidential Disclosure Agreement (One Way Out) Form G4 Confidential Disclosure Agreement (One Way In) Form G5 Confidential Disclosure Agreement (Mutual) Appendix H Forms for Dealing With Outside Submissions Form H1 Outside Submission Form Where Compensation Is Not Expected Form H2 Outside Submission Form Where Compensation Is Hoped For Form H3 Clauses for Use in Acceptance of a Submitted Idea Appendix I Employment Agreement Appendix J Simple Collaboration Agreement