Creative Commons - User contributions [en]

Patent License Drafter's Notes

2010-08-25T00:39:45Z

Thinh:

'''Drafter’s Notes'''

See also [[Model Patent License]] which is superseded by [[CC Public Patent License]]

'''Purpose:'''

These Drafter’s Notes (“Notes”) capture many of the comments that were received during the Public Comment Period, explain how those comments are reflected in the final Public Patent License (“License”), and describe how other policy considerations shaped the drafting of the License. You may refer to these Notes to help understand our views of the issues presented by the comments and how I attempted to resolve those issues. These Notes are not intended to be part of the License and may not be used to change or add additional terms to the License, although they may be helpful in interpretation of the License when there is ambiguity. These Notes are not intended to provide legal advice or substitute for legal counsel. However, you may wish to consider them, with the aid of your legal counsel, prior to using the License.

The commentary is arranged in an order corresponding to the sections that appear in the License. In order to protect the anonymity of commentators, I do not identify the source of particular comments, and in some cases, multiple comments are summarized together for ease of reference. Some comments that resulted in minor or clarifying changes to the draft of the License during the Public Comment Period are not discussed in detail here, but are reflected in the Change Log. You do not have to review the Change Log in order to review the final License, but if you have been following the drafting process or if you have already reviewed an earlier version of the License, you may wish to refer to the Change Log for a quick summary of changes made leading to the final draft.

'''Title'''

A number of commentators suggested changing the title of the License. One commentator expressed the concern that the name “Model Patent License” implies that the License has broader applicability or acceptance than is warranted or that it is more specifically suitable than other patent licenses that already exist. This was not our intention. The current working title is “CC Public Patent License.”

'''Preamble'''

Some commentators expressed concern with the statement in the preamble that this License is intended for users who are maintaining their patents primarily for defensive purposes. They point out that in some cases, a public offer to license a patent may reduce the effectiveness or deterrent effect of such defensive use by establishing a presumptive measure (cap) on economic damages that may be proven in the event of infringement. They suggest that high-value or core business patents, even if held defensively, should be reserved. I think it is best that you consult with your attorney on the most effective patent licensing and portfolio management strategy for your unique situation, and I do not intend to recommend a particular patent licensing approach for every situation. Accordingly, I have deleted the reference to defensive use of patents.

Some commentators also suggested that our comment regarding the “offer conditions” are too narrow. For example, they suggested that an offeror could specify that those parties who are currently in patent litigation with the offeror or who have infringed the offeror’s patents be excluded from the offer. Otherwise, it is pointed out, an infringer could wait until its infringement is discovered and then take a license, with the result that it would only be liable for past infringement but it could avoid an injunction against future infringement by accepting a license. I agree with this and so added an additional sentence that the offer may be so limited.

'''Definitions'''

One of the issues that arose early in the drafting process was what type of model to use for identifying those patents that are being licensed. The simplest model is enumeration—a list of patents that are being offered for license. However, one concern expressed by several commentators was that this would be too narrow: there might be daughter applications such as continuations, continuations-in-part, and divisionals that issue later and that may not be readily discoverable by a licensee through due diligence. For this reason, we added continuations, continuations-in-part, divisionals, foreign counterparts, etc. to the definition of “Licensed Patent Rights” to supplement the enumeration approach. Nevertheless, a related issue arose with respect to so-called “grandparent” applications or prior dominant patents that may block the use of the licensed patents. For example, a licensor may license an improvement patent without including the dominant patent required to practice that improvement patent. In that case, an unwary licensee may wrongly conclude that it is obtaining all rights needed from the licensor to practice the invention, only to be confronted with an infringement claim from the licensor later for a dominant patent. Some courts have addressed the inequitable effects of this type of problem by finding implied licenses. However, for drafting purposes, I did not want to rely on implied license theories.

One suggestion was to include grandparent applications, just like daughter applications. However, this has some interpretive problems, insofar as the claims of a grandparent application cannot be directly related to the claims of daughter applications using clear rules such as priority, because the priority rules allow only the claims of a daughter application to claim back through the grandparent application’s specifications, not its own claims. This imperfect mapping would produce ambiguities in terms of what is being licensed, and I want to avoid any ambiguity that would result in future undesirable surprises for licensees and licensors. The virtues of clarity and predictability argue against such an approach.

Other commentators suggested that we should not overstate the problem about grandparent applications or dominant patents because unlike daughter applications, which may be yet unpublished, grandparent applications and dominant patents are discoverable by the licensee with a modest degree of due diligence, since they will either have been published or would be referenced by the licensed patents. While this is true of transactions between sophisticated licensors and licensees, there may be other situations where the licensee lacks the sophistication or resources to conduct adequate patent due diligence.

Therefore, a second alternative licensing approach is needed for those situations where the licensor wants to assure the licensee that it has licensed all claims necessary to practice (and that are owned or controlled by the licensor). Under this approach, the licensor designates a “Specification” that it wishes to license—this could be a technical disclosure, a patent specification, or a technical standard, for example—and that all claims covering that specification will be licensed as “Necessary Patent Claims”. To prevent “scope creep” caused by an overly expansive interpretation of the Specification, a clarification is made that only claims that are taught by the Specification are licensed and not merely enabling claims that are not the principle subject matter of the specification. (For example, a purely software specification does not include computer hardware claims merely because a computer is eventually needed to run the software. However, if a Specification has both specific hardware and software teachings, then both types of claims would be within scope).

With these two alternative ways of licensing patents, a licensor may either choose to be very specific with the patents it wishes to license by taking the enumeration approach (in which case, the licensee should be warned to conduct thorough patent diligence prior to accepting the license or practicing the invention), or it may seek to assure the licensee that it has indeed licensed all necessary claims by taking the “Specification” route. Thus, these two approaches should be seen as representing two ways of allocating the due diligence burden between the licensor and licensee.

Several commentators suggested that we added more specific branding requirements (similar to attribution requirements) for licensed products or services. Other commentators argued that it is unusual for licensees to agree to branding requirements as part of a patent license. Yet others argued that licensors would not necessarily want to impose branding requirements (which would involve granting a trademark license) unless it has some assurance of quality control. A trademark license without adequate policing (sometimes called a “naked license”) can result in loss of a trademark right. Furthermore, these commentators point out that trademark licensing accompanied by certain forms of technical guidance or assistance can result in a finding of a “franchise” in some states. Franchises are generally trademark licenses that are accompanied by consideration and a business plan (here, the patent license itself and associated know-how may supply the “business plan,” which is sometimes interpreted broadly). Franchise rules are complex, may require state-by-state registration formalities, and carry penalties including rescission and treble damages for failure to follow formalities. Due to these considerations, I consider a “branding” clause to be a “high risk” clause, and therefore I will leave open the possibility of implementing it through the “Additional Clauses” (see below), rather than providing a standard default.

'''Grant of License'''

2.1 One commentator suggested adding the phrase “under the Licensed Patent Rights” to make clear that this license is restricted in scope to the enumerated patents. This clarification is useful, so I made the change.

Several commentators suggested that the original paragraph was awkwardly worded and suggested a re-arrangement of clauses to make it flow better. I agreed and made the change. In particular, the phrase “under the Licensed Patent Rights, in the Territory, and during the Term” should be interpreted to apply to the whole paragraph.

2.2 This parallel license grant was added in order to implement the alternative, “Specification” mode of licensing discussed above. While it is technically possible to include both types of license grants (the enumeration approach of 2.1 and the specification approach of 2.2), and they would operate a two separate types of licenses that do not limit each other, for simplicity and ease of reference, it is recommended that the licensor pick one or the other. This can be accomplished simply by choosing whether to fill out the Licensed Patent Rights list or the Specification in the License Data Record (but not both). If the licensor fills both fields, then it will be granting two separate licenses, but the enumerated list does not operate as an additional limitation on the claims licensed under the Specification.

2.3 One commentator suggested that the ability to limit the “have made” right be extended to each of the other rights under patent. However, due to the unusual and complex nature of such limitations, I decided to leave this sentence unchanged and recommend that such additional limitations, if required, be implemented via the “Additional Clauses” mechanism.

2.4 One commentator suggested that the treatment of exclusive patent rights is centered on U.S. law. For example, under U.K. law, the terms “disposal” and “offer to dispose of” are used in place of “sale” and “offer for sale.” However, rather than extend the list of exclusive rights terminology to include variations from every country, I have opted to make the clarification that these rights include their foreign equivalents in order to generalize to all jurisdictions.

'''4. Reports'''

A number of commentators questioned why any reports would be necessary for non-royalty licenses. Other commentators expressed concerns that only low-value or insignificant patents would be offered under this license, limiting its impact. In order to provide empirical evidence for impact, licensors are encouraged to work with licensees to collect statistics and empirical measures of impact so that the impact of offering public patent licenses through clearinghouses can be measured and reported. In order to accomplish this goal, there must be an obligation on licensees to report impact statistics back to the licensor, and this section provides a mechanism to do that. Thus, even in non-royalty bearing licenses, some type of report is contemplated in order to provide the necessary usage statistics, although the contents of such a report shall be at the discretion of the licensor.

Some commentators expressed concern that the data reported by the licensee may contain confidential business information or plans. This section contemplates that only publicly available information will be published by the licensor as impact statistics, or if confidential information is involved, that the licensor would work with the licensee to remove any confidential information prior to publishing any statistics, thus reporting only anonymous or aggregated data that does not identify the licensee if possible. The level of aggregation or de-identification will depend on the specific circumstances and the sensitivity of the data provided. In addition, licensees and licensors may wish to enter into supplementary confidentiality agreements when warranted regarding treatment of sensitive business information. This section should be interpreted as requiring the licensee to provide at least publicly available data and providing the licensor with reasonable cooperation in identifying data that could be useful for documenting public or social impact.

Some commentators asked whether the licensee or the licensor will create use case studies to highlight the impact of patent licensing. Both licensees and licensors may publish such studies. However, at a minimum, it is contemplated that the licensee will cooperate with the licensor so that the licensor may publish such impact studies, if the licensor so chooses. Nothing prevents both parties from independently publishing their own use cases and studies. However, the parties should keep in mind their obligations not to imply endorsement or make other use of the other party’s trademarks under Section 8.

'''5. Term'''

A number of commentators suggested that the Term of the agreement be made flexible in order to accommodate expiration of the license before the expiration of the patents themselves. Other commentators, however, expressed the concern that this could cause a trap for the unwary, causing some licensees to rely on a license that has a date certain expiration without taking this into account. I think that this concern would be lessened if the fact that the license expires before the patents is specifically called out. As a result, I added the qualification “Unless otherwise specified,” in order to leave open the possibility of future support for date certain expirations. For now, neither the License Data Record nor the metadata will specifically support such early expiration. However, it is possible to implement such a condition via the “Additional Clauses” mechanism discussed below.

Some commentators pointed out that 11 U.S.C. § 365(e)(1) prevents a licensor from automatically terminating a license in the event of the licensee’s bankruptcy. This would invalidate the third paragraph of this section. Note that this paragraph has been qualified by “to the extent permitted by applicable law.” This qualification saves this clause from invalidity (where contrary to applicable law) but cannot make it enforceable. Therefore, a licensor is cautioned against relying on the enforceability of this provision in all jurisdictions. When this is an important issue, further research on country-specific bankruptcy laws is necessary.

Commentators disagreed over the inclusion of clause (a) of paragraph 4 (defensive termination). Clause (a) reads “unless (a) such claim is first asserted after Licensor has asserted a claim of patent infringement against Licensee or any third party with respect to products or services of Licensee.” Those who support the inclusion of this clause argue that defensive use of patents by the licensee should be allowed, without triggering termination rights of the licensor, when it is asserted in response to a licensor’s first offensive use of a patent unrelated to the license. This fits best with their intuition of what “defensive” termination means. Others, however, opined that it is customary that once patent litigation has been initiated, whether by the licensee or licensor, the licensor should have the option of terminating all licenses, whether or not such license is related to the patents that are the subject of the suit, and regardless of who initiated the lawsuit, so that the licensor may make maximum use of its patent portfolio for litigation purposes.

Given that my goal is to strike a fair balance between the interests of the licensor and licensee, I have to consider the effect of removing this clause. If removed, it would allow the licensor to terminate the license whenever the licensee asserts a patent-based counter-claim, even if the licensor first sued the licensee on an unrelated patent. While it is not my intention to preclude the licensor from pursuing other patent claims against the licensee, if it chooses to do so, it should not be able to also “pile on” patent rights that it has already licensed if the licensee does what it normally must in order to seek a compromise—namely, to assert those patents that it has maintained defensively by way of counterclaim. To do otherwise would be to make licensing a high-risk activity for licensee, that is, either give up its right to assert its patents defensively in the event that the licensor chooses to pursue a patent lawsuit against it, or risk losing a patent license that it has relied upon to build and market products and possibly face an injunction. Such a dilemma would not be consistent with our goal of providing a dependable license that can be relied upon to make investment and technology adoption decisions.

A few commentators suggested that if the licensee terminates the license for convenience, it should not have the right to take a new license under a general public patent license offer unless the licensor specifically agrees. This is in order to avoid certain types of strategic behavior intended to avoid paying maintenance fees or other types of annual fees. I agree with this and have made the corresponding change to the license.

'''6. Warranties'''

Some commentators noted the absence of any licensee warranties. An early version of the draft did contain licensee warranties, but other commentators suggested that those warranties (such as compliance with law and applicable regulations) were best dealt with through indemnification, because violation of such warranties should not necessarily lead to license termination provided that the licensee fully carries out its obligations to indemnify. I agreed with this and thus removed licensee warranties.

Other commentators suggested that the licensor should provide warranties that it has licensed all necessary rights or that it is unaware of any infringement. However, opposing commentators noted that such warranties are very unusual, and it is customary for a patent license to assume that the license itself does not give any assurance of the right to practice (i.e., freedom from infringement of dominant patents). Furthermore, issues regarding the possible existence of the licensor’s own dominant or related patents have been discussed above and need not be dealt with through the warranty section (or through breach of warranty remedies, which would create a chilling effect on licensor participation).

'''7. Indemnification'''

Some commentators suggested making the indemnification provision mutual (i.e., provide for an indemnification right for the licensee as well as licensor). However, this is very unusual and goes against industry custom, in which the licensor’s primary “obligation” under a patent license is to refrain from suing the licensee for infringement. Typically, the licensor does not warrant that its rights are valid or that it will take other affirmative duties. Therefore, there is very little basis for the licensor indemnifying a licensee.

Several commentators noted with approval the right of the licensor to take over the defense of any claim (at its own expense) that involves an adjudication of the licensor’s patent rights. Given the importance of these rights, most licensors would not want to leave their defense or settlement in the hands of a non-exclusive licensee.

'''8. Trademark and Attribution'''

One commentator noted that some patent owners would not want their non-exclusive licensees to be marking products with patent markings without their permission. Therefore, this should be made at the option of the licensor, but not automatic. I agreed with this and added a corresponding qualification: “At Licensor’s request”.

One issue that commentators requested clarification about was whether the licensor or the licensee would be preparing the use cases that document the impact of the licensed patents. As discussed above, while there is nothing to prevent both parties from creating and publishing their own use cases, the intention here is require the licensee to provide reasonable data and statistics that the licensor would need in order to compile use cases and statistics that provide empirical evidence for the impact of its licensing strategy. Therefore, this provision contemplates that the licensor will be preparing a use case with data and support from the licensee. Once published, such use cases may be distributed by both parties. However, aside from the distribution of such case studies in unmodified form, neither party may use the trademarks of the other or otherwise imply an endorsement by the other. No general trademark license is implied.

'''9. General'''

A number of commentators suggested that the insurance requirement be made more specific. However, as the size of licensees and the extent, nature, risks, and markets of the possible exploitation of patent rights vary considerably, there is no “one-size fits all” approach to determining the appropriate amount of insurance. Thus, I define it at a “prudent” level so that the above factors can be taken into account.

One commentator pointed out that liability for certain types of damages, such as for death or physical injury, cannot be disclaimed in some jurisdictions. In order to prevent this provision from being invalid, the qualification "TO THE EXTENT PERMITTED BY APPLICABLE LAW" has been added.

'''10. Additional Clauses'''

I added this clause in order to anticipate future extensions of the license through CC-supported modular clauses as well as to make it possible to use the core license with unsupported “custom” clauses, when the licensor chooses to do so.

The CC-supported use case involves adding additional clauses in the future that we may discuss with the community and that we are convinced will make the license better or add additional options for which there is community demand. Such clauses could include, for example, date-certain expiration of the Term, options for additional limitations to the license scope, or alternative reporting requirements. Such supported additional clauses would be added after consultation with our board and our community through a public feedback process.

The unsupported use case involves a licensor who wishes to implement a feature that we do not currently support in our standard license. These could include certain “high-risk” clauses such as branding and grant-backs, that a licensor may wish to implement only after careful consultation with its attorneys or other types of clauses that CC chooses not to support.

For example, I have already discussed above why branding and trademark license clauses should be reviewed carefully in light of trademark licensing practices, policies, and franchise law. Due to the complex nature of this analysis, it may be appropriate for some licensors to provide such branding or trademark licenses, while doing so may raise serious problems for other licensors. Creative Commons would not want to implement this as check-the-box option, because it poses a risk about which some licensors may not be aware. On the other hand, a licensor who chooses to draft their own clause and implement it through the Additional Clauses mechanism is more likely to have considered the issue carefully and is prepared to take the risks involved.

Another example of such a clause is a grant back. Several commentators have suggested that we implement some kind of grant back. Some have suggested that we implement a type of “share alike” for patents that would require licensees to grant rights in improvement patents under the same license, whether to the original licensor or to the community as a whole. Prior experiments with such share-alike licensing mechanisms in a community licensing context (or patent pools) have met with decidedly mixed results. Nevertheless, a grant-back is a well-known and accepted practice in traditional patent licenses in order to ensure that the licensor has access to improvements and freedom to operate. However, the use of grant back clauses carries some antitrust risk. The 1995 Federal Antitrust Guidelines for Licensing Intellectual Property recognizes that certain grant-backs can pose antitrust concerns where the licensor has market power. Grant backs are analyzed under a rule of reason standard, and courts have also found some grant backs to lead to antitrust violations (i.e., the use of grant back clauses by licensors having market power to achieve a monopoly) (see, e.g., U.S. vs. Alumina and U.S. vs. General Electric). Compulsory grant back clauses raise antitrust concerns because they may reduce the licensee’s incentive innovate relating to improvements. Thus, grant backs are appropriate for some licensors but no necessarily “safe” for everybody, and they deserve special analysis and review by appropriate antitrust counsel. For this reason, I decline to implement a standard check-the-box grant back option, but I leave open the possibility that a licensor may supply such an obligation through the Additional Clauses mechanism.

Licensees should also be alert whenever there are Additional Clauses that are not supported or endorsed by Creative Commons that such clause may require special scrutiny because they have not been reviewed by Creative Common or subjected to public comment, and licenses which contain unsupported Additional Clauses may not be branded or labeled as standard CC licenses.

Patent License Change Log

2010-08-25T00:38:16Z

Thinh:

'''Change Log'''

This refers to changes from [[Model Patent License]] to the [[CC Public Patent License]]

Title:

The “Model Patent License” title has been changed to “CC Public Patent License”.

Preamble:

“How to Use this CC Public Patent License”:

- Added the phrase “on the Internet” to emphasize that the patent offers are Internet-enabled

- Changed “active” to “live”

- Deleted reference to “defensive” use in 3rd paragraph of preamble

- Deleted “or restrictions on the have made right”.

- Added “In addition, you may specify that the offer is not available to parties with whom you are engaged in patent litigation or parties who are or have been infringing the patents being offered.”

Definitions:

- Added: ““Necessary Patent Claims” means any patent claim(s), now owned, controlled, or hereafter acquired by Licensor in any patent that Licensor has the right to license, that would be infringed, but for the license granted in Section 2.2, by the making, using, selling, or importation of processes or products that implement specific features or teachings of Specification, but excluding any claims covering subject matter that is not set forth or specifically described in the Specification.

- Added: “Specification” means the specification, if any, set forth in the License Data Record by the "Specification" entry.

2. Grant of License:

- 2.1: Added “under the Licensed Patent Rights”; added “solely" before "in the Field of Use"

- 2.2: Added new paragraph: “If the License Data Record contains a Specification, then subject to the terms and conditions of this Agreement and the License Data Record, Licensor grants to Licensee under the Necessary Patent Claims, in the Territory, and during the Term, a non-exclusive, non-transferable (except as expressly permitted in Section 9) license, without a right to sublicense, to make, use, sell, offer for sale, and import products that implement the Specification (or portions thereof) and to practice processes that implement the Specification (or portions thereof)..."

- 2.4: Added new paragraph: “The exclusive rights referenced above (such as make, sell, and use) shall also be interpreted to include substantially similar exclusive patent rights (such as disposal and offer to dispose) in other countries, when applicable.”

3. Fees:
- Added “And Other Consideration” to Section title

4. Reporting:
- Changed: “If no royalties are required,” to “In addition..”

5. Term:

- Added: “Unless otherwise specified..” to first paragraph

- Added: “provided that if Licensee terminates this Agreement, it shall not be eligible to reinstate this license or accept any other general license offer with respect to the subject matter of this Agreement, unless the Licensor specifically agrees otherwise in writing.”

- Added: “and 10” to last paragraph.

8. Trademark and Attribution

- Added: “At Licensor’s request” to first paragraph

9.
- Added: "TO THE EXTENT PERMITTED BY APPLICABLE LAW..." in the last paragraph

10.

Added: “ADDITIONAL CLAUSES”

Additional Clauses (if any) contained in the Licensed Data Record are hereby incorporated into this Agreement by reference. In the event of any conflict between the terms of this Agreement and the Additional Clauses, the terms of the Additional Clauses shall prevail.

CC Public Patent License

2010-08-25T00:36:58Z

Thinh:

'''CC Public Patent License'''
Also see [[Patent License Drafter's Notes]] and [[Patent License Change Log]]

'''How to Use this CC Public Patent License'''

This CC Public Patent License is intended to be used as part of a public license offer to license patent rights. A public license offer provides two main benefits:

a) it is publicly accessible on the Internet: anyone can read the full terms of the offer;
b) it is an “live” offer so that anyone can accept it if they agree to all its terms.

To have these benefits, the offer must be openly published, and it must be capable of being accepted by anyone on a non-discriminatory basis and without additional negotiation. Used in the right context, this type of offer can provide benefits for both licensor and licensee. A licensor can use a public license offer to publicize its willingness to license patent rights on reasonable and non-discriminatory terms, thus attracting innovators and potential licensees who might otherwise not have been either aware that such patent rights were available for license or who might otherwise be unwilling to approach the licensor due to anticipated, significant transaction costs typically associated with negotiating a favorable license. A potential licensee can rely on the public and non-discriminatory availability of this public license offer to make plans and decisions about technology implementation, which in the absence of such offers, would be complicated or impossible.

Patent licenses can be very complicated, particularly when complex commercialization and licensing strategies are involved. So it would be impossible for anyone to write a license that addresses everyone’s needs or fits every scenario. Instead, we developed this Model Patent License Agreement to be simple and easy to understand. It is intended to provide a simple standard model license to make patents available on reasonable and non-discriminatory terms: preferably free of charge and without unnecessary field limitations. If you need to implement a more complex licensing strategy, then this may not be the right tool for you. In any case, please consult your own attorney before making an offer. Creative Commons is not a law firm, so we cannot provide you with advice on whether to use this instrument or how to tailor it to suit your needs or business strategy.

To use this Model Patent License Agreement, you need to supply some basic information, which is found in the License Data Record (see Addendum A). This information should be supplied in a standard electronic format for ease of reference, but you can use other formats if you wish. Some basic information is required in order to make a complete public license offer, while other fields may be optional. If you do not fill out the optional fields, then they will be defined by default provisions in the license. IN MOST CASES, THE DEFAULT OPTION ALLOWS FOR THE MOST PERMISSIVE AND FREE USE BY THE LICENSEE. For example, by default, there are no field of use restrictions, fees, or royalties. You may also add limitations to the offer itself (for example, an expiration date for the offer). In addition, you may specify that the offer is not available to parties with whom you are engaged in patent litigation or parties who are or have been infringing the patents being offered. We do not encourage you to impose other offer limitations beyond this. However, in some circumstances, it may be reasonable to specify that anyone currently engaged in litigation with you that would otherwise give you grounds for terminating the license (see Section 5) may not accept the offer in the first place.

Together, the License Data Record and the CC Public Patent License will be become your public license offer. When such an offer is made available on your Web site, or through clearinghouses like GX, anyone eligible to accept the offer may accept it through a registration and acceptance process. As part of that process, the Licensee will supply the Licensee-specific information needed to complete the License Data Record. This process, and the transaction record, then completes the license agreement.

'''CC PUBLIC PATENT LICENSE'''

The owner of the Licensed Patent Rights, as defined below (the “Licensor”), grants a license on the terms and conditions set forth in this CC Public Patent License (the “Agreement”) to the person or entity accepting this Agreement (the “Licensee”).

'''1. DEFINITIONS'''

“Field of Use” means the fields of use specified in the License Data Record. If not so specified, Field of Use means all fields of use.

“License Data Record” means a written or electronic document that provides the information specified in Addendum A.

“Licensed Patent Rights” means (a) the patents and patent applications listed in the License Data Record, (b) all divisionals, continuations, and foreign counterpart applications claiming priority from any patent or patent application described in (a), (c) those claims of any continuations-in-parts that claim priority exclusively from the patents or patent applications described in (a) and (b); (d) all patents issuing from patent applications included in (a) through (c); and (e) all reissues, reexaminations, renewals, and extensions of any patents included in (a) through (d).

“Licensed Process(es)” means a process the practice of which would infringe, but for the license granted in this Agreement, one or more claims of the Licensed Patent Rights.

“Licensed Product(s)” means a machine, article of manufacture, composition of matter, or other product (a) the manufacture, use, sale, offer for sale, or import of which would infringe, but for the licenses granted in this Agreement, one or more claims of the Licensed Patent Rights, or (b) made or directly obtained by a Licensed Process.

“Necessary Patent Claims” means any patent claim(s), now owned, controlled, or hereafter acquired by Licensor in any patent that Licensor has the right to license, that would be infringed, but for the license granted in Section 2.2, by the making, using, selling, or importation of processes or products that implement specific features or teachings of Specification, but excluding any claims covering subject matter that is not set forth or specifically described in the Specification.

“Specification” means the specification, if any, set forth in the License Data Record by the "Specification" entry.

“Territory” means a geographical or jurisdictional designation, as specified in the License Data Record. If not so specified, Territory means worldwide.

“Term” means the period of time specified in Section 5.

'''2. GRANT OF LICENSE'''

2.1 Subject to the terms and conditions of this Agreement and the License Data Record, Licensor grants to Licensee under the Licensed Patent Rights, in the Territory, and during the Term, a non-exclusive, non-transferable (except as expressly permitted in Section 9) license, without a right to sublicense, to make, use, sell, offer for sale, and import Licensed Products and to practice Licensed Processes, in each case, solely in the Field of Use.

2.2 If the License Data Record contains a Specification, then subject to the terms and conditions of this Agreement and the License Data Record, Licensor grants to Licensee under the Necessary Patent Claims, in the Territory, and during the Term, a non-exclusive, non-transferable (except as expressly permitted in Section 9) license, without a right to sublicense, to make, use, sell, offer for sale, and import products that implement the Specification (or portions thereof) and to practice processes that implement the Specification (or portions thereof), in each case, solely in the Field of Use.

2.3 The above licenses include the right to have made, except as otherwise specified by the License Data Record.

2.4 The exclusive rights referenced above (such as make, sell, and use) shall also be interpreted to include substantially similar exclusive patent rights (such as disposal and offer to dispose) in other countries, when applicable.

'''3. FEES AND OTHER CONSIDERATION'''

Fees, royalties, or other consideration, if any, shall be specified in the “License Fees and Royalties” section of License Data Record. If none are specified, then no payment is required under this Agreement.

'''4. REPORTING'''

Licensee shall provide quarterly reports to Licensor, along with any required payments, in sufficient detail to verify the calculation of royalties owed, including without limitation, gross receipts from the use, sale, or other disposition of Licensed Products and/or from the practice of a Licensed Process, deductions taken for calculating revenues, and the total royalty due. If no royalties are due, then the report shall so specify.

In addition, then Licensee shall instead provide such reports as may be reasonably requested by Licensor to perform the analysis and activities described below.

Licensor may use the information provided by Licensee to analyze and publish metrics and impact statistics related to the use of the Licensed Patent Rights and have others do so, as long as such information is used only in aggregated and anonymous form. Licensor may also use or disclose the information to enforce this Agreement, and/or to comply with a court order, or otherwise as required by law.

'''5. TERM'''

Unless otherwise specified, the Term of this Agreement commences on its execution and ends upon the expiration, abandonment, or final invalidity of all claims within the Licensed Patent Rights, unless earlier terminated as permitted below.

Licensor may terminate this Agreement in the event of a material breach of this Agreement that is not cured within thirty (30) days after Licensor provides written notice to Licensee specifying such breach.

To the extent permitted by applicable law, Licensor may terminate this Agreement immediately in the event Licensee becomes insolvent, files for bankruptcy protection, makes an assignment for the benefit of creditors, or becomes the subject of involuntary bankruptcy proceedings. Licensee shall immediately notify Licensor upon the occurrence of one of these conditions.

Licensor may terminate this Agreement upon written notice to Licensee in the event that Licensee asserts a claim of patent infringement against Licensor or any third party with respect to products or services of Licensor, unless (a) such claim is first asserted after Licensor has asserted a claim of patent infringement against Licensee or any third party with respect to products or services of Licensee, or (b) Licensee fully withdraws such claim within ten (10) days after being notified by Licensor. For purposes of this paragraph, “Licensor” and “Licensee” shall also include their respective affiliates.

Licensee may terminate this Agreement by providing Licensor with at least thirty (30) days prior written notice, provided that if Licensee terminates this Agreement, it shall not be eligible to reinstate this license or accept any other general license offer with respect to the subject matter of this Agreement, unless the Licensor specifically agrees otherwise in writing.
Upon any termination of this Agreement, Licensee shall provide Licensor with a final royalty report within thirty (30) days after termination, along with full payment of all amounts due. The following sections shall also survive termination of this Agreement: 6, 7, 8, 9, and 10.

'''6. WARRANTIES'''

Licensor warrants that it has the right and authority to grant the rights and licenses granted in this Agreement.

Licensor disclaims all other warranties, representations, and conditions, whether express, implied, or statutory, including, but not limited to, the warranties of merchantability, fitness for a particular purpose, or non-infringement.

Without limiting the generality of the above disclaimer, Licensor makes no representation or warranties that: a) it will prosecute or continue to prosecute, maintain, or defend any patent or patent application, b) it will bring an infringement suit, assert any claim against third parties accused of infringement, or otherwise enforce any patent or patent application, c) it will join as a party to any suit or legal action, d) it will provide Licensee with know-how or assistance necessary or useful to practice the Licensed Patent Rights, e) the Licensed Patent Rights are valid or enforceable, or f) the Licensed Products or Licensed Processes may be exploited or practiced without infringing third party patents.

'''7. INDEMNIFICATION'''

Licensee shall indemnify and hold Licensor, and its officers, directors, employees, representatives, agents, and affiliates harmless from any and all damages, liabilities, costs, and expenses (including reasonable attorneys’ fees) arising out of or caused by Licensee’s practice or exploitation of the license granted by this Agreement or by the sale, use, or exploitation of Licensed Products or Licensed Processes by or under the authority of Licensee.

Licensor shall notify Licensee promptly of any claim of which Licensor is aware and for which Licensor seeks indemnification. Licensee shall have the right to control the defense of such claims, except to the extent that the scope or validity of the Licensed Patent Rights are at issue, in which case Licensor may assume the sole control and defense of such claims at its own expense.

'''8. TRADEMARKS AND ATTRIBUTION'''

At Licensor’s request, Licensee agrees to mark Licensed Products and their packaging with patent markings as required by applicable law to preserve Licensor’s rights and otherwise enforce the Licensed Patents.

At Licensor’s request, Licensee shall reasonably cooperate with Licensor and provide such information as may be necessary for Licensor to prepare use case studies that document Licensee’s use of the Licensed Patent Rights and related usage or impact metrics. Each party may copy, distribute, and publish such use case studies, including by means of its Web sites, and authorize others to do so, to demonstrate the uses and impact of the technology.

Except solely as permitted above, neither party may use the other’s trademarks, service marks, trade names, company names, or logos (“Marks”) to offer, market, sell, or otherwise endorse any product or service or to engage in any other trademark usage, unless with the prior written authorization of the owner. Any uses of a party’s Marks shall inure solely to the benefit of that party, along with all goodwill associated therewith.

'''9. GENERAL PROVISIONS'''

Notices to the parties shall be provided at the address set forth in the License Data Record, unless a party provides written notice to the other party of a change of address. Notices may be provided by personal delivery, express delivery service, or registered mail. Notices shall be effective on the date received.

Nothing in this Agreement constitutes the parties as partners, joint venturers, principal and agent, or fiduciaries of each other.

A delay or failure in enforcing a right or obligation under this Agreement shall not be construed as an implied waiver of that right or obligation or of any other provision or breach under this Agreement. A waiver under this Agreement is only effective if made in writing and signed by the party granting the waiver.

An amendment or modification of this Agreement is effective only if made in writing and signed by the duly authorized representatives of the parties.
This Agreement constitutes the entire agreement between the parties as to the subject matter herein and supersedes all prior or contemporaneous negotiations, agreements, representations, memorandums, and understandings.

If any provision of this Agreement is deemed to be invalid or unenforceable, then that provision, to the extent unenforceable, is severable and the remainder of this Agreement shall continue in full force and effect.

Licensee may not assign any of its rights under this Agreement, delegate any of its obligations under this Agreement, or otherwise transfer this Agreement, without the prior written consent of Licensor, and any attempted assignment, transfer, or delegation shall be voidable by Licensor. Any change of control of Licensee shall be deemed an attempted transfer of this Agreement. Licensor may assign this Agreement in connection with a sale, merger, or transfer of the assets to which this Agreement relates, provided that the assignee assumes all rights and obligations under this Agreement.

Licensee agrees to maintain insurance in amounts prudent for Licensee’s operations and adequate to discharge Licensee’s obligations under Section 7.

This Agreement is governed by and interpreted in accordance with the laws of the jurisdiction set forth in the License Data Record, if any. The parties agree that the proper jurisdiction and venue for any disputes arising out of this Agreement shall be in the courts of the venue specified in the License Data Record, if any. If none are specified, then jurisdiction and venue shall be deemed to be in the relevant jurisdiction for Licensor’s address, as stated in the License Data Record.

No rights or forbearances are granted, or may arise (whether through implication, estoppel, exhaustion or otherwise) other than those expressly granted in this Agreement.

TO THE EXTENT PERMITTED BY APPLICABLE LAW AND EXCEPT FOR THE OBLIGATION TO RENDER CONSIDERATION (IF ANY) IN SECTION 3, THE INDEMNIFICATION OBLIGATIONS IN SECTION 7, AND INFRINGEMENT OF ANY TRADEMARK OR INTELLECTUAL PROPERTY RIGHT, IN NO EVENT WILL EITHER PARTY HAVE ANY LIABILITY OF ANY KIND WHATSOEVER TO THE OTHER ARISING OUT OF THIS AGREEMENT, INCLUDING BUT NOT LIMITED TO, FOR INDIRECT, INCIDENTAL, CONSEQUENTIAL OR SPECIAL DAMAGES, EVEN IF ADVISED OF THE POSSIBILITY OF SUCH DAMAGES.

'''10. ADDITIONAL CLAUSES'''

Additional Clauses (if any) contained in the Licensed Data Record are hereby incorporated into this Agreement by reference. In the event of any conflict between the terms of this Agreement and the Additional Clauses, the terms of the Additional Clauses shall prevail.

'''Addendum A'''

The purpose of this Addendum is to provide guidelines for a License Data Record, which may be either in paper or electronic form. This License Data Record is unique to each transaction and must specify a minimum information set in order to give effect to the Patent License Agreement.

To constitute an agreement that incorporates the terms of the Patent License Agreement, a License Data Record must:

1) reference this Agreement by linking to the URL of the Patent License Agreement deed or legal code, attaching a copy of it, referencing it by name, or by any other means that uniquely and unambiguously identifies it; AND

2) provide the following information:

a. Name of Licensor: the name of the person or entities offering this license,

b. Licensor Contact Information: address, contact person, phone number, fax, and/or email,

c. Name of Licensee: the name of the person or entities accepting this license,

d. Licensee Contact Information: address, contact person, phone number, fax, and/or email,

e. Licensed Patent Rights: a list of patents and patent applications to be licensed,

OR

Specification: a written specification of the invention or technology to be licensed.

f. License Fees, Royalties, and other consideration (optional): a description of any required fees, royalties, or other consideration, including without limitation any requirements relating to improvements or innovations,

g. Field of Use (optional): a description of any scope of use limitations associated with the license,

h. “Have Made” Limitations (optional): any limitations to the license to “have made,”

i. Choice of Law (optional): jurisdiction for choice of law,

j. Choice of Venue (optional) jurisdiction for legal venue,

k. Territory (optional): geographic limitations of the license,

l. Offer Limitations (optional): any limitations associated with the offer, and

m. Additional Clauses

'''Sample License Data Record'''

This License Data Record references and incorporates the GX Model Patent License Agreement (located at URL: _________)

Licensor Name:
Licensor Contact Address:

_____________________________

_____________________________

_____________________________

Phone: _______________________

Fax: _________________________

Email: ________________________

Licensee Name:

Licensee Contact Address:

_____________________________

_____________________________

_____________________________

Phone: _______________________

Fax: _________________________

Email: _____________________________

Licensed Patents Rights:

Patent No. ____________________________

Patent Application No.__________________ …

OR

Specification (attached a detailed specification or provide a URL):

License Fees & Royalties (optional):

Field of Use (optional):

Have Made Limitations (optional):

Choice of Law (optional) City_____________, State_____________

Choice of Venue (optional) City_____________, State_____________

Territory (Optional)

Offer Limitations (Optional)

Additional Clauses (Optional)

Patent License Change Log

2010-08-25T00:34:23Z

Thinh:

'''Change Log'''

This refers to changes from [[Model Patent License]] to the [[CC Public Patent License]]

Title:

The “Model Patent License” title has been changed to “CC Public Patent License”.

Preamble:

“How to Use this CC Public Patent License”:

- Added the phrase “on the Internet” to emphasize that the patent offers are Internet-enabled

- Changed “active” to “live”

- Deleted reference to “defensive” use in 3rd paragraph of preamble

- Deleted “or restrictions on the have made right”.

- Added “In addition, you may specify that the offer is not available to parties with whom you are engaged in patent litigation or parties who are or have been infringing the patents being offered.”

Definitions:

- Added: ““Necessary Patent Claims” means any patent claim(s), now owned, controlled, or hereafter acquired by Licensor in any patent that Licensor has the right to license, that would be infringed, but for the license granted in Section 2.2, by the making, using, selling, or importation of processes or products that implement specific features or teachings of Specification, but excluding any claims covering subject matter that is not set forth or specifically described in the Specification.

- Added: “Specification” means the specification, if any, set forth in the License Data Record by the "Specification" entry.

2. Grant of License:

- 2.1: Added “under the Licensed Patent Rights”; added “solely" before "in the Field of Use"

- 2.2: Added new paragraph: “If the License Data Record contains a Specification, then subject to the terms and conditions of this Agreement and the License Data Record, Licensor grants to Licensee under the Necessary Patent Claims, in the Territory, and during the Term, a non-exclusive, non-transferable (except as expressly permitted in Section 9) license, without a right to sublicense, to make, use, sell, offer for sale, and import products that implement the Specification (or portions thereof) and to practice processes that implement the Specification (or portions thereof)..."

- 2.4: Added new paragraph: “The exclusive rights referenced above (such as make, sell, and use) shall also be interpreted to include substantially similar exclusive patent rights (such as disposal and offer to dispose) in other countries, when applicable.”

3. Fees:
- Added “And Other Consideration” to Section title

4. Reporting:
- Changed: “If no royalties are required,” to “In addition..”

5. Term:

- Added: “Unless otherwise specified..” to first paragraph

- Added: “provided that if Licensee terminates this Agreement, it shall not be eligible to reinstate this license or accept any other general license offer with respect to the subject matter of this Agreement, unless the Licensor specifically agrees otherwise in writing.”

- Added: “and 10” to last paragraph.

8. Trademark and Attribution

- Added: “At Licensor’s request” to first paragraph

10.

Added: “ADDITIONAL CLAUSES”

Additional Clauses (if any) contained in the Licensed Data Record are hereby incorporated into this Agreement by reference. In the event of any conflict between the terms of this Agreement and the Additional Clauses, the terms of the Additional Clauses shall prevail.

CC Public Patent License

2010-08-25T00:33:40Z

Thinh:

'''CC Public Patent License'''
Also see [[Patent License Drafter's Notes]] and [[Patent License Change Log]]

'''How to Use this CC Public Patent License'''

This CC Public Patent License is intended to be used as part of a public license offer to license patent rights. A public license offer provides two main benefits:

a) it is publicly accessible on the Internet: anyone can read the full terms of the offer;
b) it is an “live” offer so that anyone can accept it if they agree to all its terms.

To have these benefits, the offer must be openly published, and it must be capable of being accepted by anyone on a non-discriminatory basis and without additional negotiation. Used in the right context, this type of offer can provide benefits for both licensor and licensee. A licensor can use a public license offer to publicize its willingness to license patent rights on reasonable and non-discriminatory terms, thus attracting innovators and potential licensees who might otherwise not have been either aware that such patent rights were available for license or who might otherwise be unwilling to approach the licensor due to anticipated, significant transaction costs typically associated with negotiating a favorable license. A potential licensee can rely on the public and non-discriminatory availability of this public license offer to make plans and decisions about technology implementation, which in the absence of such offers, would be complicated or impossible.

Patent licenses can be very complicated, particularly when complex commercialization and licensing strategies are involved. So it would be impossible for anyone to write a license that addresses everyone’s needs or fits every scenario. Instead, we developed this Model Patent License Agreement to be simple and easy to understand. It is intended to provide a simple standard model license to make patents available on reasonable and non-discriminatory terms: preferably free of charge and without unnecessary field limitations. If you need to implement a more complex licensing strategy, then this may not be the right tool for you. In any case, please consult your own attorney before making an offer. Creative Commons is not a law firm, so we cannot provide you with advice on whether to use this instrument or how to tailor it to suit your needs or business strategy.

To use this Model Patent License Agreement, you need to supply some basic information, which is found in the License Data Record (see Addendum A). This information should be supplied in a standard electronic format for ease of reference, but you can use other formats if you wish. Some basic information is required in order to make a complete public license offer, while other fields may be optional. If you do not fill out the optional fields, then they will be defined by default provisions in the license. IN MOST CASES, THE DEFAULT OPTION ALLOWS FOR THE MOST PERMISSIVE AND FREE USE BY THE LICENSEE. For example, by default, there are no field of use restrictions, fees, or royalties. You may also add limitations to the offer itself (for example, an expiration date for the offer). In addition, you may specify that the offer is not available to parties with whom you are engaged in patent litigation or parties who are or have been infringing the patents being offered. We do not encourage you to impose other offer limitations beyond this. However, in some circumstances, it may be reasonable to specify that anyone currently engaged in litigation with you that would otherwise give you grounds for terminating the license (see Section 5) may not accept the offer in the first place.

Together, the License Data Record and the CC Public Patent License will be become your public license offer. When such an offer is made available on your Web site, or through clearinghouses like GX, anyone eligible to accept the offer may accept it through a registration and acceptance process. As part of that process, the Licensee will supply the Licensee-specific information needed to complete the License Data Record. This process, and the transaction record, then completes the license agreement.

'''CC PUBLIC PATENT LICENSE'''

The owner of the Licensed Patent Rights, as defined below (the “Licensor”), grants a license on the terms and conditions set forth in this CC Public Patent License (the “Agreement”) to the person or entity accepting this Agreement (the “Licensee”).

'''1. DEFINITIONS'''

“Field of Use” means the fields of use specified in the License Data Record. If not so specified, Field of Use means all fields of use.

“License Data Record” means a written or electronic document that provides the information specified in Addendum A.

“Licensed Patent Rights” means (a) the patents and patent applications listed in the License Data Record, (b) all divisionals, continuations, and foreign counterpart applications claiming priority from any patent or patent application described in (a), (c) those claims of any continuations-in-parts that claim priority exclusively from the patents or patent applications described in (a) and (b); (d) all patents issuing from patent applications included in (a) through (c); and (e) all reissues, reexaminations, renewals, and extensions of any patents included in (a) through (d).

“Licensed Process(es)” means a process the practice of which would infringe, but for the license granted in this Agreement, one or more claims of the Licensed Patent Rights.

“Licensed Product(s)” means a machine, article of manufacture, composition of matter, or other product (a) the manufacture, use, sale, offer for sale, or import of which would infringe, but for the licenses granted in this Agreement, one or more claims of the Licensed Patent Rights, or (b) made or directly obtained by a Licensed Process.

“Necessary Patent Claims” means any patent claim(s), now owned, controlled, or hereafter acquired by Licensor in any patent that Licensor has the right to license, that would be infringed, but for the license granted in Section 2.2, by the making, using, selling, or importation of processes or products that implement specific features or teachings of Specification, but excluding any claims covering subject matter that is not set forth or specifically described in the Specification.

“Specification” means the specification, if any, set forth in the License Data Record by the "Specification" entry.

“Territory” means a geographical or jurisdictional designation, as specified in the License Data Record. If not so specified, Territory means worldwide.

“Term” means the period of time specified in Section 5.

'''2. GRANT OF LICENSE'''

2.1 Subject to the terms and conditions of this Agreement and the License Data Record, Licensor grants to Licensee under the Licensed Patent Rights, in the Territory, and during the Term, a non-exclusive, non-transferable (except as expressly permitted in Section 9) license, without a right to sublicense, to make, use, sell, offer for sale, and import Licensed Products and to practice Licensed Processes, in each case, solely in the Field of Use.

2.2 If the License Data Record contains a Specification, then subject to the terms and conditions of this Agreement and the License Data Record, Licensor grants to Licensee under the Necessary Patent Claims, in the Territory, and during the Term, a non-exclusive, non-transferable (except as expressly permitted in Section 9) license, without a right to sublicense, to make, use, sell, offer for sale, and import products that implement the Specification (or portions thereof) and to practice processes that implement the Specification (or portions thereof), in each case, solely in the Field of Use.

2.3 The above licenses include the right to have made, except as otherwise specified by the License Data Record.

2.4 The exclusive rights referenced above (such as make, sell, and use) shall also be interpreted to include substantially similar exclusive patent rights (such as disposal and offer to dispose) in other countries, when applicable.

'''3. FEES AND OTHER CONSIDERATION'''

Fees, royalties, or other consideration, if any, shall be specified in the “License Fees and Royalties” section of License Data Record. If none are specified, then no payment is required under this Agreement.

'''4. REPORTING'''

Licensee shall provide quarterly reports to Licensor, along with any required payments, in sufficient detail to verify the calculation of royalties owed, including without limitation, gross receipts from the use, sale, or other disposition of Licensed Products and/or from the practice of a Licensed Process, deductions taken for calculating revenues, and the total royalty due. If no royalties are due, then the report shall so specify.

In addition, then Licensee shall instead provide such reports as may be reasonably requested by Licensor to perform the analysis and activities described below.

Licensor may use the information provided by Licensee to analyze and publish metrics and impact statistics related to the use of the Licensed Patent Rights and have others do so, as long as such information is used only in aggregated and anonymous form. Licensor may also use or disclose the information to enforce this Agreement, and/or to comply with a court order, or otherwise as required by law.

'''5. TERM'''

Unless otherwise specified, the Term of this Agreement commences on its execution and ends upon the expiration, abandonment, or final invalidity of all claims within the Licensed Patent Rights, unless earlier terminated as permitted below.

Licensor may terminate this Agreement in the event of a material breach of this Agreement that is not cured within thirty (30) days after Licensor provides written notice to Licensee specifying such breach.

To the extent permitted by applicable law, Licensor may terminate this Agreement immediately in the event Licensee becomes insolvent, files for bankruptcy protection, makes an assignment for the benefit of creditors, or becomes the subject of involuntary bankruptcy proceedings. Licensee shall immediately notify Licensor upon the occurrence of one of these conditions.

Licensor may terminate this Agreement upon written notice to Licensee in the event that Licensee asserts a claim of patent infringement against Licensor or any third party with respect to products or services of Licensor, unless (a) such claim is first asserted after Licensor has asserted a claim of patent infringement against Licensee or any third party with respect to products or services of Licensee, or (b) Licensee fully withdraws such claim within ten (10) days after being notified by Licensor. For purposes of this paragraph, “Licensor” and “Licensee” shall also include their respective affiliates.

Licensee may terminate this Agreement by providing Licensor with at least thirty (30) days prior written notice, provided that if Licensee terminates this Agreement, it shall not be eligible to reinstate this license or accept any other general license offer with respect to the subject matter of this Agreement, unless the Licensor specifically agrees otherwise in writing.
Upon any termination of this Agreement, Licensee shall provide Licensor with a final royalty report within thirty (30) days after termination, along with full payment of all amounts due. The following sections shall also survive termination of this Agreement: 6, 7, 8, 9, and 10.

'''6. WARRANTIES'''

Licensor warrants that it has the right and authority to grant the rights and licenses granted in this Agreement.

Licensor disclaims all other warranties, representations, and conditions, whether express, implied, or statutory, including, but not limited to, the warranties of merchantability, fitness for a particular purpose, or non-infringement.

Without limiting the generality of the above disclaimer, Licensor makes no representation or warranties that: a) it will prosecute or continue to prosecute, maintain, or defend any patent or patent application, b) it will bring an infringement suit, assert any claim against third parties accused of infringement, or otherwise enforce any patent or patent application, c) it will join as a party to any suit or legal action, d) it will provide Licensee with know-how or assistance necessary or useful to practice the Licensed Patent Rights, e) the Licensed Patent Rights are valid or enforceable, or f) the Licensed Products or Licensed Processes may be exploited or practiced without infringing third party patents.

'''7. INDEMNIFICATION'''

Licensee shall indemnify and hold Licensor, and its officers, directors, employees, representatives, agents, and affiliates harmless from any and all damages, liabilities, costs, and expenses (including reasonable attorneys’ fees) arising out of or caused by Licensee’s practice or exploitation of the license granted by this Agreement or by the sale, use, or exploitation of Licensed Products or Licensed Processes by or under the authority of Licensee.

Licensor shall notify Licensee promptly of any claim of which Licensor is aware and for which Licensor seeks indemnification. Licensee shall have the right to control the defense of such claims, except to the extent that the scope or validity of the Licensed Patent Rights are at issue, in which case Licensor may assume the sole control and defense of such claims at its own expense.

'''8. TRADEMARKS AND ATTRIBUTION'''

At Licensor’s request, Licensee agrees to mark Licensed Products and their packaging with patent markings as required by applicable law to preserve Licensor’s rights and otherwise enforce the Licensed Patents.

At Licensor’s request, Licensee shall reasonably cooperate with Licensor and provide such information as may be necessary for Licensor to prepare use case studies that document Licensee’s use of the Licensed Patent Rights and related usage or impact metrics. Each party may copy, distribute, and publish such use case studies, including by means of its Web sites, and authorize others to do so, to demonstrate the uses and impact of the technology.

Except solely as permitted above, neither party may use the other’s trademarks, service marks, trade names, company names, or logos (“Marks”) to offer, market, sell, or otherwise endorse any product or service or to engage in any other trademark usage, unless with the prior written authorization of the owner. Any uses of a party’s Marks shall inure solely to the benefit of that party, along with all goodwill associated therewith.

'''9. GENERAL PROVISIONS'''

Notices to the parties shall be provided at the address set forth in the License Data Record, unless a party provides written notice to the other party of a change of address. Notices may be provided by personal delivery, express delivery service, or registered mail. Notices shall be effective on the date received.

Nothing in this Agreement constitutes the parties as partners, joint venturers, principal and agent, or fiduciaries of each other.

A delay or failure in enforcing a right or obligation under this Agreement shall not be construed as an implied waiver of that right or obligation or of any other provision or breach under this Agreement. A waiver under this Agreement is only effective if made in writing and signed by the party granting the waiver.

An amendment or modification of this Agreement is effective only if made in writing and signed by the duly authorized representatives of the parties.
This Agreement constitutes the entire agreement between the parties as to the subject matter herein and supersedes all prior or contemporaneous negotiations, agreements, representations, memorandums, and understandings.

If any provision of this Agreement is deemed to be invalid or unenforceable, then that provision, to the extent unenforceable, is severable and the remainder of this Agreement shall continue in full force and effect.

Licensee may not assign any of its rights under this Agreement, delegate any of its obligations under this Agreement, or otherwise transfer this Agreement, without the prior written consent of Licensor, and any attempted assignment, transfer, or delegation shall be voidable by Licensor. Any change of control of Licensee shall be deemed an attempted transfer of this Agreement. Licensor may assign this Agreement in connection with a sale, merger, or transfer of the assets to which this Agreement relates, provided that the assignee assumes all rights and obligations under this Agreement.

Licensee agrees to maintain insurance in amounts prudent for Licensee’s operations and adequate to discharge Licensee’s obligations under Section 7.

This Agreement is governed by and interpreted in accordance with the laws of the jurisdiction set forth in the License Data Record, if any. The parties agree that the proper jurisdiction and venue for any disputes arising out of this Agreement shall be in the courts of the venue specified in the License Data Record, if any. If none are specified, then jurisdiction and venue shall be deemed to be in the relevant jurisdiction for Licensor’s address, as stated in the License Data Record.

No rights or forbearances are granted, or may arise (whether through implication, estoppel, exhaustion or otherwise) other than those expressly granted in this Agreement.

EXCEPT FOR THE OBLIGATION TO RENDER CONSIDERATION (IF ANY) IN SECTION 3, THE INDEMNIFICATION OBLIGATIONS IN SECTION 7, AND INFRINGEMENT OF ANY TRADEMARK OR INTELLECTUAL PROPERTY RIGHT, IN NO EVENT WILL EITHER PARTY HAVE ANY LIABILITY OF ANY KIND WHATSOEVER TO THE OTHER ARISING OUT OF THIS AGREEMENT, INCLUDING BUT NOT LIMITED TO, FOR INDIRECT, INCIDENTAL, CONSEQUENTIAL OR SPECIAL DAMAGES, EVEN IF ADVISED OF THE POSSIBILITY OF SUCH DAMAGES.

'''10. ADDITIONAL CLAUSES'''

Additional Clauses (if any) contained in the Licensed Data Record are hereby incorporated into this Agreement by reference. In the event of any conflict between the terms of this Agreement and the Additional Clauses, the terms of the Additional Clauses shall prevail.

'''Addendum A'''

The purpose of this Addendum is to provide guidelines for a License Data Record, which may be either in paper or electronic form. This License Data Record is unique to each transaction and must specify a minimum information set in order to give effect to the Patent License Agreement.

To constitute an agreement that incorporates the terms of the Patent License Agreement, a License Data Record must:

1) reference this Agreement by linking to the URL of the Patent License Agreement deed or legal code, attaching a copy of it, referencing it by name, or by any other means that uniquely and unambiguously identifies it; AND

2) provide the following information:

a. Name of Licensor: the name of the person or entities offering this license,

b. Licensor Contact Information: address, contact person, phone number, fax, and/or email,

c. Name of Licensee: the name of the person or entities accepting this license,

d. Licensee Contact Information: address, contact person, phone number, fax, and/or email,

e. Licensed Patent Rights: a list of patents and patent applications to be licensed,

OR

Specification: a written specification of the invention or technology to be licensed.

f. License Fees, Royalties, and other consideration (optional): a description of any required fees, royalties, or other consideration, including without limitation any requirements relating to improvements or innovations,

g. Field of Use (optional): a description of any scope of use limitations associated with the license,

h. “Have Made” Limitations (optional): any limitations to the license to “have made,”

i. Choice of Law (optional): jurisdiction for choice of law,

j. Choice of Venue (optional) jurisdiction for legal venue,

k. Territory (optional): geographic limitations of the license,

l. Offer Limitations (optional): any limitations associated with the offer, and

m. Additional Clauses

'''Sample License Data Record'''

This License Data Record references and incorporates the GX Model Patent License Agreement (located at URL: _________)

Licensor Name:
Licensor Contact Address:

_____________________________

_____________________________

_____________________________

Phone: _______________________

Fax: _________________________

Email: ________________________

Licensee Name:

Licensee Contact Address:

_____________________________

_____________________________

_____________________________

Phone: _______________________

Fax: _________________________

Email: _____________________________

Licensed Patents Rights:

Patent No. ____________________________

Patent Application No.__________________ …

OR

Specification (attached a detailed specification or provide a URL):

License Fees & Royalties (optional):

Field of Use (optional):

Have Made Limitations (optional):

Choice of Law (optional) City_____________, State_____________

Choice of Venue (optional) City_____________, State_____________

Territory (Optional)

Offer Limitations (Optional)

Additional Clauses (Optional)

Patent License Change Log

2010-08-25T00:31:45Z

Thinh:

'''Change Log'''

This refers to changes from [[Model Patent License]] to the [[CC Public Patent License]]

Title:

The “Model Patent License” title has been changed to “CC Public Patent License”.

Preamble:

“How to Use this CC Public Patent License”:

- Added the phrase “on the Internet” to emphasize that the patent offers are Internet-enabled

- Changed “active” to “live”

- Deleted reference to “defensive” use in 3rd paragraph of preamble

- Deleted “or restrictions on the have made right”.

- Added “In addition, you may specify that the offer is not available to parties with whom you are engaged in patent litigation or parties who are or have been infringing the patents being offered.”

Definitions:

- Added: ““Necessary Patent Claims” means any patent claim(s), now owned, controlled, or hereafter acquired by Licensor in any patent that Licensor has the right to license, that would be infringed, but for the license granted in Section 2.2, by the making, using, selling, or importation of processes or products that implement specific features or teachings of Specification, but excluding any claims covering subject matter that is not set forth or specifically described in the Specification.

- Added: “Specification” means the specification, if any, set forth in the License Data Record by the "Specification" entry.

2. Grant of License:

- 2.1: Added “under the Licensed Patent Rights”; added “have made”

- 2.2: Added new paragraph: “If the License Data Record contains a Specification, then subject to the terms and conditions of this Agreement and the License Data Record, Licensor grants to Licensee under the Necessary Patent Claims, in the Territory, and during the Term, a non-exclusive, non-transferable (except as expressly permitted in Section 9) license, without a right to sublicense, to make, use, sell, offer for sale, and import products that implement the Specification (or portions thereof) and to practice processes that implement the Specification (or portions thereof)..."

- 2.4: Added new paragraph: “The exclusive rights referenced above (such as make, sell, and use) shall also be interpreted to include substantially similar exclusive patent rights (such as disposal and offer to dispose) in other countries, when applicable.”

3. Fees:
- Added “And Other Consideration” to Section title

4. Reporting:
- Changed: “If no royalties are required,” to “In addition..”

5. Term:

- Added: “Unless otherwise specified..” to first paragraph

- Added: “provided that if Licensee terminates this Agreement, it shall not be eligible to reinstate this license or accept any other general license offer with respect to the subject matter of this Agreement, unless the Licensor specifically agrees otherwise in writing.”

- Added: “and 10” to last paragraph.

8. Trademark and Attribution

- Added: “At Licensor’s request” to first paragraph

10.

Added: “ADDITIONAL CLAUSES”

Additional Clauses (if any) contained in the Licensed Data Record are hereby incorporated into this Agreement by reference. In the event of any conflict between the terms of this Agreement and the Additional Clauses, the terms of the Additional Clauses shall prevail.

Patent License Change Log

2010-08-25T00:31:14Z

Thinh:

'''Change Log'''

This refers to changes from [[Model Patent License]] to the [[CC Public Patent License]]

Title:

The “Model Patent License” title has been changed to “CC Public Patent License”.

Preamble:

“How to Use this CC Public Patent License”:

- Added the phrase “on the Internet” to emphasize that the patent offers are Internet-enabled

- Changed “active” to “live”

- Deleted reference to “defensive” use in 3rd paragraph of preamble

- Deleted “or restrictions on the have made right”.

- Added “In addition, you may specify that the offer is not available to parties with whom you are engaged in patent litigation or parties who are or have been infringing the patents being offered.”

Definitions:

- Added: ““Necessary Patent Claims” means any patent claim(s), now owned, controlled, or hereafter acquired by Licensor in any patent that Licensor has the right to license, that would be infringed, but for the license granted in Section 2.2, by the making, using, selling, or importation of processes or products that implement specific features or teachings of Specification, but excluding any claims covering subject matter that is not set forth or specifically described in the Specification.

- Added: “Specification” means the specification, if any, set forth in the License Data Record by the "Specification" entry.

2. Grant of License:

- 2.1: Added “under the Licensed Patent Rights”; added “have made”

- 2.2: Added new paragraph: “If the License Data Record contains a Specification, then subject to the terms and conditions of this Agreement and the License Data Record, Licensor grants to Licensee under the Necessary Patent Claims, in the Territory, and during the Term, a non-exclusive, non-transferable (except as expressly permitted in Section 9) license, without a right to sublicense, to make, use, sell, offer for sale, and import products that implement the Specification (or portions thereof) and to practice processes that implement the Specification (or portions thereof).”; added “have made”

- 2.4: Added new paragraph: “The exclusive rights referenced above (such as make, sell, and use) shall also be interpreted to include substantially similar exclusive patent rights (such as disposal and offer to dispose) in other countries, when applicable.”

3. Fees:
- Added “And Other Consideration” to Section title

4. Reporting:
- Changed: “If no royalties are required,” to “In addition..”

5. Term:

- Added: “Unless otherwise specified..” to first paragraph

- Added: “provided that if Licensee terminates this Agreement, it shall not be eligible to reinstate this license or accept any other general license offer with respect to the subject matter of this Agreement, unless the Licensor specifically agrees otherwise in writing.”

- Added: “and 10” to last paragraph.

8. Trademark and Attribution

- Added: “At Licensor’s request” to first paragraph

10.

Added: “ADDITIONAL CLAUSES”

Additional Clauses (if any) contained in the Licensed Data Record are hereby incorporated into this Agreement by reference. In the event of any conflict between the terms of this Agreement and the Additional Clauses, the terms of the Additional Clauses shall prevail.

CC Public Patent License

2010-08-25T00:30:30Z

Thinh:

'''CC Public Patent License'''
Also see [[Patent License Drafter's Notes]] and [[Patent License Change Log]]

'''How to Use this CC Public Patent License'''

This CC Public Patent License is intended to be used as part of a public license offer to license patent rights. A public license offer provides two main benefits:

a) it is publicly accessible on the Internet: anyone can read the full terms of the offer;
b) it is an “live” offer so that anyone can accept it if they agree to all its terms.

To have these benefits, the offer must be openly published, and it must be capable of being accepted by anyone on a non-discriminatory basis and without additional negotiation. Used in the right context, this type of offer can provide benefits for both licensor and licensee. A licensor can use a public license offer to publicize its willingness to license patent rights on reasonable and non-discriminatory terms, thus attracting innovators and potential licensees who might otherwise not have been either aware that such patent rights were available for license or who might otherwise be unwilling to approach the licensor due to anticipated, significant transaction costs typically associated with negotiating a favorable license. A potential licensee can rely on the public and non-discriminatory availability of this public license offer to make plans and decisions about technology implementation, which in the absence of such offers, would be complicated or impossible.

Patent licenses can be very complicated, particularly when complex commercialization and licensing strategies are involved. So it would be impossible for anyone to write a license that addresses everyone’s needs or fits every scenario. Instead, we developed this Model Patent License Agreement to be simple and easy to understand. It is intended to provide a simple standard model license to make patents available on reasonable and non-discriminatory terms: preferably free of charge and without unnecessary field limitations. If you need to implement a more complex licensing strategy, then this may not be the right tool for you. In any case, please consult your own attorney before making an offer. Creative Commons is not a law firm, so we cannot provide you with advice on whether to use this instrument or how to tailor it to suit your needs or business strategy.

To use this Model Patent License Agreement, you need to supply some basic information, which is found in the License Data Record (see Addendum A). This information should be supplied in a standard electronic format for ease of reference, but you can use other formats if you wish. Some basic information is required in order to make a complete public license offer, while other fields may be optional. If you do not fill out the optional fields, then they will be defined by default provisions in the license. IN MOST CASES, THE DEFAULT OPTION ALLOWS FOR THE MOST PERMISSIVE AND FREE USE BY THE LICENSEE. For example, by default, there are no field of use restrictions, fees, or royalties. You may also add limitations to the offer itself (for example, an expiration date for the offer). In addition, you may specify that the offer is not available to parties with whom you are engaged in patent litigation or parties who are or have been infringing the patents being offered. We do not encourage you to impose other offer limitations beyond this. However, in some circumstances, it may be reasonable to specify that anyone currently engaged in litigation with you that would otherwise give you grounds for terminating the license (see Section 5) may not accept the offer in the first place.

Together, the License Data Record and the CC Public Patent License will be become your public license offer. When such an offer is made available on your Web site, or through clearinghouses like GX, anyone eligible to accept the offer may accept it through a registration and acceptance process. As part of that process, the Licensee will supply the Licensee-specific information needed to complete the License Data Record. This process, and the transaction record, then completes the license agreement.

'''CC PUBLIC PATENT LICENSE'''

The owner of the Licensed Patent Rights, as defined below (the “Licensor”), grants a license on the terms and conditions set forth in this CC Public Patent License (the “Agreement”) to the person or entity accepting this Agreement (the “Licensee”).

'''1. DEFINITIONS'''

“Field of Use” means the fields of use specified in the License Data Record. If not so specified, Field of Use means all fields of use.

“License Data Record” means a written or electronic document that provides the information specified in Addendum A.

“Licensed Patent Rights” means (a) the patents and patent applications listed in the License Data Record, (b) all divisionals, continuations, and foreign counterpart applications claiming priority from any patent or patent application described in (a), (c) those claims of any continuations-in-parts that claim priority exclusively from the patents or patent applications described in (a) and (b); (d) all patents issuing from patent applications included in (a) through (c); and (e) all reissues, reexaminations, renewals, and extensions of any patents included in (a) through (d).

“Licensed Process(es)” means a process the practice of which would infringe, but for the license granted in this Agreement, one or more claims of the Licensed Patent Rights.

“Licensed Product(s)” means a machine, article of manufacture, composition of matter, or other product (a) the manufacture, use, sale, offer for sale, or import of which would infringe, but for the licenses granted in this Agreement, one or more claims of the Licensed Patent Rights, or (b) made or directly obtained by a Licensed Process.

“Necessary Patent Claims” means any patent claim(s), now owned, controlled, or hereafter acquired by Licensor in any patent that Licensor has the right to license, that would be infringed, but for the license granted in Section 2.2, by the making, using, selling, or importation of processes or products that implement specific features or teachings of Specification, but excluding any claims covering subject matter that is not set forth or specifically described in the Specification.

“Specification” means the specification, if any, set forth in the License Data Record by the "Specification" entry.

“Territory” means a geographical or jurisdictional designation, as specified in the License Data Record. If not so specified, Territory means worldwide.

“Term” means the period of time specified in Section 5.

'''2. GRANT OF LICENSE'''

2.1 Subject to the terms and conditions of this Agreement and the License Data Record, Licensor grants to Licensee under the Licensed Patent Rights, in the Territory, and during the Term, a non-exclusive, non-transferable (except as expressly permitted in Section 9) license, without a right to sublicense, to make, use, sell, offer for sale, and import Licensed Products and to practice Licensed Processes, in each case, in the Field of Use.

2.2 If the License Data Record contains a Specification, then subject to the terms and conditions of this Agreement and the License Data Record, Licensor grants to Licensee under the Necessary Patent Claims, in the Territory, and during the Term, a non-exclusive, non-transferable (except as expressly permitted in Section 9) license, without a right to sublicense, to make, use, sell, offer for sale, and import products that implement the Specification (or portions thereof) and to practice processes that implement the Specification (or portions thereof), in each case, in the Field of Use.

2.3 The above licenses include the right to have made, except as otherwise specified by the License Data Record.

2.4 The exclusive rights referenced above (such as make, sell, and use) shall also be interpreted to include substantially similar exclusive patent rights (such as disposal and offer to dispose) in other countries, when applicable.

'''3. FEES AND OTHER CONSIDERATION'''

Fees, royalties, or other consideration, if any, shall be specified in the “License Fees and Royalties” section of License Data Record. If none are specified, then no payment is required under this Agreement.

'''4. REPORTING'''

Licensee shall provide quarterly reports to Licensor, along with any required payments, in sufficient detail to verify the calculation of royalties owed, including without limitation, gross receipts from the use, sale, or other disposition of Licensed Products and/or from the practice of a Licensed Process, deductions taken for calculating revenues, and the total royalty due. If no royalties are due, then the report shall so specify.

In addition, then Licensee shall instead provide such reports as may be reasonably requested by Licensor to perform the analysis and activities described below.

Licensor may use the information provided by Licensee to analyze and publish metrics and impact statistics related to the use of the Licensed Patent Rights and have others do so, as long as such information is used only in aggregated and anonymous form. Licensor may also use or disclose the information to enforce this Agreement, and/or to comply with a court order, or otherwise as required by law.

'''5. TERM'''

Unless otherwise specified, the Term of this Agreement commences on its execution and ends upon the expiration, abandonment, or final invalidity of all claims within the Licensed Patent Rights, unless earlier terminated as permitted below.

Licensor may terminate this Agreement in the event of a material breach of this Agreement that is not cured within thirty (30) days after Licensor provides written notice to Licensee specifying such breach.

To the extent permitted by applicable law, Licensor may terminate this Agreement immediately in the event Licensee becomes insolvent, files for bankruptcy protection, makes an assignment for the benefit of creditors, or becomes the subject of involuntary bankruptcy proceedings. Licensee shall immediately notify Licensor upon the occurrence of one of these conditions.

Licensor may terminate this Agreement upon written notice to Licensee in the event that Licensee asserts a claim of patent infringement against Licensor or any third party with respect to products or services of Licensor, unless (a) such claim is first asserted after Licensor has asserted a claim of patent infringement against Licensee or any third party with respect to products or services of Licensee, or (b) Licensee fully withdraws such claim within ten (10) days after being notified by Licensor. For purposes of this paragraph, “Licensor” and “Licensee” shall also include their respective affiliates.

Licensee may terminate this Agreement by providing Licensor with at least thirty (30) days prior written notice, provided that if Licensee terminates this Agreement, it shall not be eligible to reinstate this license or accept any other general license offer with respect to the subject matter of this Agreement, unless the Licensor specifically agrees otherwise in writing.
Upon any termination of this Agreement, Licensee shall provide Licensor with a final royalty report within thirty (30) days after termination, along with full payment of all amounts due. The following sections shall also survive termination of this Agreement: 6, 7, 8, 9, and 10.

'''6. WARRANTIES'''

Licensor warrants that it has the right and authority to grant the rights and licenses granted in this Agreement.

Licensor disclaims all other warranties, representations, and conditions, whether express, implied, or statutory, including, but not limited to, the warranties of merchantability, fitness for a particular purpose, or non-infringement.

Without limiting the generality of the above disclaimer, Licensor makes no representation or warranties that: a) it will prosecute or continue to prosecute, maintain, or defend any patent or patent application, b) it will bring an infringement suit, assert any claim against third parties accused of infringement, or otherwise enforce any patent or patent application, c) it will join as a party to any suit or legal action, d) it will provide Licensee with know-how or assistance necessary or useful to practice the Licensed Patent Rights, e) the Licensed Patent Rights are valid or enforceable, or f) the Licensed Products or Licensed Processes may be exploited or practiced without infringing third party patents.

'''7. INDEMNIFICATION'''

Licensee shall indemnify and hold Licensor, and its officers, directors, employees, representatives, agents, and affiliates harmless from any and all damages, liabilities, costs, and expenses (including reasonable attorneys’ fees) arising out of or caused by Licensee’s practice or exploitation of the license granted by this Agreement or by the sale, use, or exploitation of Licensed Products or Licensed Processes by or under the authority of Licensee.

Licensor shall notify Licensee promptly of any claim of which Licensor is aware and for which Licensor seeks indemnification. Licensee shall have the right to control the defense of such claims, except to the extent that the scope or validity of the Licensed Patent Rights are at issue, in which case Licensor may assume the sole control and defense of such claims at its own expense.

'''8. TRADEMARKS AND ATTRIBUTION'''

At Licensor’s request, Licensee agrees to mark Licensed Products and their packaging with patent markings as required by applicable law to preserve Licensor’s rights and otherwise enforce the Licensed Patents.

At Licensor’s request, Licensee shall reasonably cooperate with Licensor and provide such information as may be necessary for Licensor to prepare use case studies that document Licensee’s use of the Licensed Patent Rights and related usage or impact metrics. Each party may copy, distribute, and publish such use case studies, including by means of its Web sites, and authorize others to do so, to demonstrate the uses and impact of the technology.

Except solely as permitted above, neither party may use the other’s trademarks, service marks, trade names, company names, or logos (“Marks”) to offer, market, sell, or otherwise endorse any product or service or to engage in any other trademark usage, unless with the prior written authorization of the owner. Any uses of a party’s Marks shall inure solely to the benefit of that party, along with all goodwill associated therewith.

'''9. GENERAL PROVISIONS'''

Notices to the parties shall be provided at the address set forth in the License Data Record, unless a party provides written notice to the other party of a change of address. Notices may be provided by personal delivery, express delivery service, or registered mail. Notices shall be effective on the date received.

Nothing in this Agreement constitutes the parties as partners, joint venturers, principal and agent, or fiduciaries of each other.

A delay or failure in enforcing a right or obligation under this Agreement shall not be construed as an implied waiver of that right or obligation or of any other provision or breach under this Agreement. A waiver under this Agreement is only effective if made in writing and signed by the party granting the waiver.

An amendment or modification of this Agreement is effective only if made in writing and signed by the duly authorized representatives of the parties.
This Agreement constitutes the entire agreement between the parties as to the subject matter herein and supersedes all prior or contemporaneous negotiations, agreements, representations, memorandums, and understandings.

If any provision of this Agreement is deemed to be invalid or unenforceable, then that provision, to the extent unenforceable, is severable and the remainder of this Agreement shall continue in full force and effect.

Licensee may not assign any of its rights under this Agreement, delegate any of its obligations under this Agreement, or otherwise transfer this Agreement, without the prior written consent of Licensor, and any attempted assignment, transfer, or delegation shall be voidable by Licensor. Any change of control of Licensee shall be deemed an attempted transfer of this Agreement. Licensor may assign this Agreement in connection with a sale, merger, or transfer of the assets to which this Agreement relates, provided that the assignee assumes all rights and obligations under this Agreement.

Licensee agrees to maintain insurance in amounts prudent for Licensee’s operations and adequate to discharge Licensee’s obligations under Section 7.

This Agreement is governed by and interpreted in accordance with the laws of the jurisdiction set forth in the License Data Record, if any. The parties agree that the proper jurisdiction and venue for any disputes arising out of this Agreement shall be in the courts of the venue specified in the License Data Record, if any. If none are specified, then jurisdiction and venue shall be deemed to be in the relevant jurisdiction for Licensor’s address, as stated in the License Data Record.

No rights or forbearances are granted, or may arise (whether through implication, estoppel, exhaustion or otherwise) other than those expressly granted in this Agreement.

EXCEPT FOR THE OBLIGATION TO RENDER CONSIDERATION (IF ANY) IN SECTION 3, THE INDEMNIFICATION OBLIGATIONS IN SECTION 7, AND INFRINGEMENT OF ANY TRADEMARK OR INTELLECTUAL PROPERTY RIGHT, IN NO EVENT WILL EITHER PARTY HAVE ANY LIABILITY OF ANY KIND WHATSOEVER TO THE OTHER ARISING OUT OF THIS AGREEMENT, INCLUDING BUT NOT LIMITED TO, FOR INDIRECT, INCIDENTAL, CONSEQUENTIAL OR SPECIAL DAMAGES, EVEN IF ADVISED OF THE POSSIBILITY OF SUCH DAMAGES.

'''10. ADDITIONAL CLAUSES'''

Additional Clauses (if any) contained in the Licensed Data Record are hereby incorporated into this Agreement by reference. In the event of any conflict between the terms of this Agreement and the Additional Clauses, the terms of the Additional Clauses shall prevail.

'''Addendum A'''

The purpose of this Addendum is to provide guidelines for a License Data Record, which may be either in paper or electronic form. This License Data Record is unique to each transaction and must specify a minimum information set in order to give effect to the Patent License Agreement.

To constitute an agreement that incorporates the terms of the Patent License Agreement, a License Data Record must:

1) reference this Agreement by linking to the URL of the Patent License Agreement deed or legal code, attaching a copy of it, referencing it by name, or by any other means that uniquely and unambiguously identifies it; AND

2) provide the following information:

a. Name of Licensor: the name of the person or entities offering this license,

b. Licensor Contact Information: address, contact person, phone number, fax, and/or email,

c. Name of Licensee: the name of the person or entities accepting this license,

d. Licensee Contact Information: address, contact person, phone number, fax, and/or email,

e. Licensed Patent Rights: a list of patents and patent applications to be licensed,

OR

Specification: a written specification of the invention or technology to be licensed.

f. License Fees, Royalties, and other consideration (optional): a description of any required fees, royalties, or other consideration, including without limitation any requirements relating to improvements or innovations,

g. Field of Use (optional): a description of any scope of use limitations associated with the license,

h. “Have Made” Limitations (optional): any limitations to the license to “have made,”

i. Choice of Law (optional): jurisdiction for choice of law,

j. Choice of Venue (optional) jurisdiction for legal venue,

k. Territory (optional): geographic limitations of the license,

l. Offer Limitations (optional): any limitations associated with the offer, and

m. Additional Clauses

'''Sample License Data Record'''

This License Data Record references and incorporates the GX Model Patent License Agreement (located at URL: _________)

Licensor Name:
Licensor Contact Address:

_____________________________

_____________________________

_____________________________

Phone: _______________________

Fax: _________________________

Email: ________________________

Licensee Name:

Licensee Contact Address:

_____________________________

_____________________________

_____________________________

Phone: _______________________

Fax: _________________________

Email: _____________________________

Licensed Patents Rights:

Patent No. ____________________________

Patent Application No.__________________ …

OR

Specification (attached a detailed specification or provide a URL):

License Fees & Royalties (optional):

Field of Use (optional):

Have Made Limitations (optional):

Choice of Law (optional) City_____________, State_____________

Choice of Venue (optional) City_____________, State_____________

Territory (Optional)

Offer Limitations (Optional)

Additional Clauses (Optional)

CC Public Patent License

2010-08-25T00:27:58Z

Thinh:

'''CC Public Patent License'''
Also see [[Patent License Drafter's Notes]] and [[Patent License Change Log]]

'''How to Use this CC Public Patent License'''

This CC Public Patent License is intended to be used as part of a public license offer to license patent rights. A public license offer provides two main benefits:

a) it is publicly accessible on the Internet: anyone can read the full terms of the offer;
b) it is an “live” offer so that anyone can accept it if they agree to all its terms.

To have these benefits, the offer must be openly published, and it must be capable of being accepted by anyone on a non-discriminatory basis and without additional negotiation. Used in the right context, this type of offer can provide benefits for both licensor and licensee. A licensor can use a public license offer to publicize its willingness to license patent rights on reasonable and non-discriminatory terms, thus attracting innovators and potential licensees who might otherwise not have been either aware that such patent rights were available for license or who might otherwise be unwilling to approach the licensor due to anticipated, significant transaction costs typically associated with negotiating a favorable license. A potential licensee can rely on the public and non-discriminatory availability of this public license offer to make plans and decisions about technology implementation, which in the absence of such offers, would be complicated or impossible.

Patent licenses can be very complicated, particularly when complex commercialization and licensing strategies are involved. So it would be impossible for anyone to write a license that addresses everyone’s needs or fits every scenario. Instead, we developed this Model Patent License Agreement to be simple and easy to understand. It is intended to provide a simple standard model license to make patents available on reasonable and non-discriminatory terms: preferably free of charge and without unnecessary field limitations. If you need to implement a more complex licensing strategy, then this may not be the right tool for you. In any case, please consult your own attorney before making an offer. Creative Commons is not a law firm, so we cannot provide you with advice on whether to use this instrument or how to tailor it to suit your needs or business strategy.

To use this Model Patent License Agreement, you need to supply some basic information, which is found in the License Data Record (see Addendum A). This information should be supplied in a standard electronic format for ease of reference, but you can use other formats if you wish. Some basic information is required in order to make a complete public license offer, while other fields may be optional. If you do not fill out the optional fields, then they will be defined by default provisions in the license. IN MOST CASES, THE DEFAULT OPTION ALLOWS FOR THE MOST PERMISSIVE AND FREE USE BY THE LICENSEE. For example, by default, there are no field of use restrictions, fees, or royalties. You may also add limitations to the offer itself (for example, an expiration date for the offer). In addition, you may specify that the offer is not available to parties with whom you are engaged in patent litigation or parties who are or have been infringing the patents being offered. We do not encourage you to impose other offer limitations beyond this. However, in some circumstances, it may be reasonable to specify that anyone currently engaged in litigation with you that would otherwise give you grounds for terminating the license (see Section 5) may not accept the offer in the first place.

Together, the License Data Record and the CC Public Patent License will be become your public license offer. When such an offer is made available on your Web site, or through clearinghouses like GX, anyone eligible to accept the offer may accept it through a registration and acceptance process. As part of that process, the Licensee will supply the Licensee-specific information needed to complete the License Data Record. This process, and the transaction record, then completes the license agreement.

'''CC PUBLIC PATENT LICENSE'''

The owner of the Licensed Patent Rights, as defined below (the “Licensor”), grants a license on the terms and conditions set forth in this CC Public Patent License (the “Agreement”) to the person or entity accepting this Agreement (the “Licensee”).

'''1. DEFINITIONS'''

“Field of Use” means the fields of use specified in the License Data Record. If not so specified, Field of Use means all fields of use.

“License Data Record” means a written or electronic document that provides the information specified in Addendum A.

“Licensed Patent Rights” means (a) the patents and patent applications listed in the License Data Record, (b) all divisionals, continuations, and foreign counterpart applications claiming priority from any patent or patent application described in (a), (c) those claims of any continuations-in-parts that claim priority exclusively from the patents or patent applications described in (a) and (b); (d) all patents issuing from patent applications included in (a) through (c); and (e) all reissues, reexaminations, renewals, and extensions of any patents included in (a) through (d).

“Licensed Process(es)” means a process the practice of which would infringe, but for the license granted in this Agreement, one or more claims of the Licensed Patent Rights.

“Licensed Product(s)” means a machine, article of manufacture, composition of matter, or other product (a) the manufacture, use, sale, offer for sale, or import of which would infringe, but for the licenses granted in this Agreement, one or more claims of the Licensed Patent Rights, or (b) made or directly obtained by a Licensed Process.

“Necessary Patent Claims” means any patent claim(s), now owned, controlled, or hereafter acquired by Licensor in any patent that Licensor has the right to license, that would be infringed, but for the license granted in Section 2.2, by the making, using, selling, or importation of processes or products that implement specific features or teachings of Specification, but excluding any claims covering subject matter that is not set forth or specifically described in the Specification.

“Specification” means the specification, if any, set forth in the License Data Record by the "Specification" entry.

“Territory” means a geographical or jurisdictional designation, as specified in the License Data Record. If not so specified, Territory means worldwide.

“Term” means the period of time specified in Section 5.

'''2. GRANT OF LICENSE'''

2.1 Subject to the terms and conditions of this Agreement and the License Data Record, Licensor grants to Licensee under the Licensed Patent Rights, in the Territory, and during the Term, a non-exclusive, non-transferable (except as expressly permitted in Section 9) license, without a right to sublicense, to make, use, sell, offer for sale, and import Licensed Products and to practice Licensed Processes, in each case, in the Field of Use.

2.2 If the License Data Record contains a Specification, then subject to the terms and conditions of this Agreement and the License Data Record, Licensor grants to Licensee under the Necessary Patent Claims, in the Territory, and during the Term, a non-exclusive, non-transferable (except as expressly permitted in Section 9) license, without a right to sublicense, to make, use, sell, offer for sale, and import products that implement the Specification and to practice processes that implement the Specification, in each case, in the Field of Use.

2.3 The above licenses include the right to have made, except as otherwise specified by the License Data Record.

2.4 The exclusive rights referenced above (such as make, sell, and use) shall also be interpreted to include substantially similar exclusive patent rights (such as disposal and offer to dispose) in other countries, when applicable.

'''3. FEES AND OTHER CONSIDERATION'''

Fees, royalties, or other consideration, if any, shall be specified in the “License Fees and Royalties” section of License Data Record. If none are specified, then no payment is required under this Agreement.

'''4. REPORTING'''

Licensee shall provide quarterly reports to Licensor, along with any required payments, in sufficient detail to verify the calculation of royalties owed, including without limitation, gross receipts from the use, sale, or other disposition of Licensed Products and/or from the practice of a Licensed Process, deductions taken for calculating revenues, and the total royalty due. If no royalties are due, then the report shall so specify.

In addition, then Licensee shall instead provide such reports as may be reasonably requested by Licensor to perform the analysis and activities described below.

Licensor may use the information provided by Licensee to analyze and publish metrics and impact statistics related to the use of the Licensed Patent Rights and have others do so, as long as such information is used only in aggregated and anonymous form. Licensor may also use or disclose the information to enforce this Agreement, and/or to comply with a court order, or otherwise as required by law.

'''5. TERM'''

Unless otherwise specified, the Term of this Agreement commences on its execution and ends upon the expiration, abandonment, or final invalidity of all claims within the Licensed Patent Rights, unless earlier terminated as permitted below.

Licensor may terminate this Agreement in the event of a material breach of this Agreement that is not cured within thirty (30) days after Licensor provides written notice to Licensee specifying such breach.

To the extent permitted by applicable law, Licensor may terminate this Agreement immediately in the event Licensee becomes insolvent, files for bankruptcy protection, makes an assignment for the benefit of creditors, or becomes the subject of involuntary bankruptcy proceedings. Licensee shall immediately notify Licensor upon the occurrence of one of these conditions.

Licensor may terminate this Agreement upon written notice to Licensee in the event that Licensee asserts a claim of patent infringement against Licensor or any third party with respect to products or services of Licensor, unless (a) such claim is first asserted after Licensor has asserted a claim of patent infringement against Licensee or any third party with respect to products or services of Licensee, or (b) Licensee fully withdraws such claim within ten (10) days after being notified by Licensor. For purposes of this paragraph, “Licensor” and “Licensee” shall also include their respective affiliates.

Licensee may terminate this Agreement by providing Licensor with at least thirty (30) days prior written notice, provided that if Licensee terminates this Agreement, it shall not be eligible to reinstate this license or accept any other general license offer with respect to the subject matter of this Agreement, unless the Licensor specifically agrees otherwise in writing.
Upon any termination of this Agreement, Licensee shall provide Licensor with a final royalty report within thirty (30) days after termination, along with full payment of all amounts due. The following sections shall also survive termination of this Agreement: 6, 7, 8, 9, and 10.

'''6. WARRANTIES'''

Licensor warrants that it has the right and authority to grant the rights and licenses granted in this Agreement.

Licensor disclaims all other warranties, representations, and conditions, whether express, implied, or statutory, including, but not limited to, the warranties of merchantability, fitness for a particular purpose, or non-infringement.

Without limiting the generality of the above disclaimer, Licensor makes no representation or warranties that: a) it will prosecute or continue to prosecute, maintain, or defend any patent or patent application, b) it will bring an infringement suit, assert any claim against third parties accused of infringement, or otherwise enforce any patent or patent application, c) it will join as a party to any suit or legal action, d) it will provide Licensee with know-how or assistance necessary or useful to practice the Licensed Patent Rights, e) the Licensed Patent Rights are valid or enforceable, or f) the Licensed Products or Licensed Processes may be exploited or practiced without infringing third party patents.

'''7. INDEMNIFICATION'''

Licensee shall indemnify and hold Licensor, and its officers, directors, employees, representatives, agents, and affiliates harmless from any and all damages, liabilities, costs, and expenses (including reasonable attorneys’ fees) arising out of or caused by Licensee’s practice or exploitation of the license granted by this Agreement or by the sale, use, or exploitation of Licensed Products or Licensed Processes by or under the authority of Licensee.

Licensor shall notify Licensee promptly of any claim of which Licensor is aware and for which Licensor seeks indemnification. Licensee shall have the right to control the defense of such claims, except to the extent that the scope or validity of the Licensed Patent Rights are at issue, in which case Licensor may assume the sole control and defense of such claims at its own expense.

'''8. TRADEMARKS AND ATTRIBUTION'''

At Licensor’s request, Licensee agrees to mark Licensed Products and their packaging with patent markings as required by applicable law to preserve Licensor’s rights and otherwise enforce the Licensed Patents.

At Licensor’s request, Licensee shall reasonably cooperate with Licensor and provide such information as may be necessary for Licensor to prepare use case studies that document Licensee’s use of the Licensed Patent Rights and related usage or impact metrics. Each party may copy, distribute, and publish such use case studies, including by means of its Web sites, and authorize others to do so, to demonstrate the uses and impact of the technology.

Except solely as permitted above, neither party may use the other’s trademarks, service marks, trade names, company names, or logos (“Marks”) to offer, market, sell, or otherwise endorse any product or service or to engage in any other trademark usage, unless with the prior written authorization of the owner. Any uses of a party’s Marks shall inure solely to the benefit of that party, along with all goodwill associated therewith.

'''9. GENERAL PROVISIONS'''

Notices to the parties shall be provided at the address set forth in the License Data Record, unless a party provides written notice to the other party of a change of address. Notices may be provided by personal delivery, express delivery service, or registered mail. Notices shall be effective on the date received.

Nothing in this Agreement constitutes the parties as partners, joint venturers, principal and agent, or fiduciaries of each other.

A delay or failure in enforcing a right or obligation under this Agreement shall not be construed as an implied waiver of that right or obligation or of any other provision or breach under this Agreement. A waiver under this Agreement is only effective if made in writing and signed by the party granting the waiver.

An amendment or modification of this Agreement is effective only if made in writing and signed by the duly authorized representatives of the parties.
This Agreement constitutes the entire agreement between the parties as to the subject matter herein and supersedes all prior or contemporaneous negotiations, agreements, representations, memorandums, and understandings.

If any provision of this Agreement is deemed to be invalid or unenforceable, then that provision, to the extent unenforceable, is severable and the remainder of this Agreement shall continue in full force and effect.

Licensee may not assign any of its rights under this Agreement, delegate any of its obligations under this Agreement, or otherwise transfer this Agreement, without the prior written consent of Licensor, and any attempted assignment, transfer, or delegation shall be voidable by Licensor. Any change of control of Licensee shall be deemed an attempted transfer of this Agreement. Licensor may assign this Agreement in connection with a sale, merger, or transfer of the assets to which this Agreement relates, provided that the assignee assumes all rights and obligations under this Agreement.

Licensee agrees to maintain insurance in amounts prudent for Licensee’s operations and adequate to discharge Licensee’s obligations under Section 7.

This Agreement is governed by and interpreted in accordance with the laws of the jurisdiction set forth in the License Data Record, if any. The parties agree that the proper jurisdiction and venue for any disputes arising out of this Agreement shall be in the courts of the venue specified in the License Data Record, if any. If none are specified, then jurisdiction and venue shall be deemed to be in the relevant jurisdiction for Licensor’s address, as stated in the License Data Record.

No rights or forbearances are granted, or may arise (whether through implication, estoppel, exhaustion or otherwise) other than those expressly granted in this Agreement.

EXCEPT FOR THE OBLIGATION TO RENDER CONSIDERATION (IF ANY) IN SECTION 3, THE INDEMNIFICATION OBLIGATIONS IN SECTION 7, AND INFRINGEMENT OF ANY TRADEMARK OR INTELLECTUAL PROPERTY RIGHT, IN NO EVENT WILL EITHER PARTY HAVE ANY LIABILITY OF ANY KIND WHATSOEVER TO THE OTHER ARISING OUT OF THIS AGREEMENT, INCLUDING BUT NOT LIMITED TO, FOR INDIRECT, INCIDENTAL, CONSEQUENTIAL OR SPECIAL DAMAGES, EVEN IF ADVISED OF THE POSSIBILITY OF SUCH DAMAGES.

'''10. ADDITIONAL CLAUSES'''

Additional Clauses (if any) contained in the Licensed Data Record are hereby incorporated into this Agreement by reference. In the event of any conflict between the terms of this Agreement and the Additional Clauses, the terms of the Additional Clauses shall prevail.

'''Addendum A'''

The purpose of this Addendum is to provide guidelines for a License Data Record, which may be either in paper or electronic form. This License Data Record is unique to each transaction and must specify a minimum information set in order to give effect to the Patent License Agreement.

To constitute an agreement that incorporates the terms of the Patent License Agreement, a License Data Record must:

1) reference this Agreement by linking to the URL of the Patent License Agreement deed or legal code, attaching a copy of it, referencing it by name, or by any other means that uniquely and unambiguously identifies it; AND

2) provide the following information:

a. Name of Licensor: the name of the person or entities offering this license,

b. Licensor Contact Information: address, contact person, phone number, fax, and/or email,

c. Name of Licensee: the name of the person or entities accepting this license,

d. Licensee Contact Information: address, contact person, phone number, fax, and/or email,

e. Licensed Patent Rights: a list of patents and patent applications to be licensed,

OR

Specification: a written specification of the invention or technology to be licensed.

f. License Fees, Royalties, and other consideration (optional): a description of any required fees, royalties, or other consideration, including without limitation any requirements relating to improvements or innovations,

g. Field of Use (optional): a description of any scope of use limitations associated with the license,

h. “Have Made” Limitations (optional): any limitations to the license to “have made,”

i. Choice of Law (optional): jurisdiction for choice of law,

j. Choice of Venue (optional) jurisdiction for legal venue,

k. Territory (optional): geographic limitations of the license,

l. Offer Limitations (optional): any limitations associated with the offer, and

m. Additional Clauses

'''Sample License Data Record'''

This License Data Record references and incorporates the GX Model Patent License Agreement (located at URL: _________)

Licensor Name:
Licensor Contact Address:

_____________________________

_____________________________

_____________________________

Phone: _______________________

Fax: _________________________

Email: ________________________

Licensee Name:

Licensee Contact Address:

_____________________________

_____________________________

_____________________________

Phone: _______________________

Fax: _________________________

Email: _____________________________

Licensed Patents Rights:

Patent No. ____________________________

Patent Application No.__________________ …

OR

Specification (attached a detailed specification or provide a URL):

License Fees & Royalties (optional):

Field of Use (optional):

Have Made Limitations (optional):

Choice of Law (optional) City_____________, State_____________

Choice of Venue (optional) City_____________, State_____________

Territory (Optional)

Offer Limitations (Optional)

Additional Clauses (Optional)

Patent License Change Log

2010-08-25T00:27:35Z

Thinh:

'''Change Log'''

This refers to changes from [[Model Patent License]] to the [[CC Public Patent License]]

Title:

The “Model Patent License” title has been changed to “CC Public Patent License”.

Preamble:

“How to Use this CC Public Patent License”:

- Added the phrase “on the Internet” to emphasize that the patent offers are Internet-enabled

- Changed “active” to “live”

- Deleted reference to “defensive” use in 3rd paragraph of preamble

- Deleted “or restrictions on the have made right”.

- Added “In addition, you may specify that the offer is not available to parties with whom you are engaged in patent litigation or parties who are or have been infringing the patents being offered.”

Definitions:

- Added: ““Necessary Patent Claims” means any patent claim(s), now owned, controlled, or hereafter acquired by Licensor in any patent that Licensor has the right to license, that would be infringed, but for the license granted in Section 2.2, by the making, using, selling, or importation of processes or products that implement specific features or teachings of Specification, but excluding any claims covering subject matter that is not set forth or specifically described in the Specification.

- Added: “Specification” means the specification, if any, set forth in the License Data Record by the "Specification" entry.

2. Grant of License:

- 2.1: Added “under the Licensed Patent Rights”; added “have made”

- 2.2: Added new paragraph: “If the License Data Record contains a Specification, then subject to the terms and conditions of this Agreement and the License Data Record, Licensor grants to Licensee under the Necessary Patent Claims, in the Territory, and during the Term, a non-exclusive, non-transferable (except as expressly permitted in Section 9) license, without a right to sublicense, to make, use, sell, offer for sale, and import products that implement the Specification and to practice processes that implement the Specification.”; added “have made”

- 2.4: Added new paragraph: “The exclusive rights referenced above (such as make, sell, and use) shall also be interpreted to include substantially similar exclusive patent rights (such as disposal and offer to dispose) in other countries, when applicable.”

3. Fees:
- Added “And Other Consideration” to Section title

4. Reporting:
- Changed: “If no royalties are required,” to “In addition..”

5. Term:

- Added: “Unless otherwise specified..” to first paragraph

- Added: “provided that if Licensee terminates this Agreement, it shall not be eligible to reinstate this license or accept any other general license offer with respect to the subject matter of this Agreement, unless the Licensor specifically agrees otherwise in writing.”

- Added: “and 10” to last paragraph.

8. Trademark and Attribution

- Added: “At Licensor’s request” to first paragraph

10.

Added: “ADDITIONAL CLAUSES”

Additional Clauses (if any) contained in the Licensed Data Record are hereby incorporated into this Agreement by reference. In the event of any conflict between the terms of this Agreement and the Additional Clauses, the terms of the Additional Clauses shall prevail.

Patent License Change Log

2010-08-25T00:26:56Z

Thinh:

'''Change Log'''

This refers to changes from [[Model Patent License]] to the [[CC Public Patent License]]

Title:

The “Model Patent License” title has been changed to “CC Public Patent License”.

Preamble:

“How to Use this CC Public Patent License”:

- Added the phrase “on the Internet” to emphasize that the patent offers are Internet-enabled

- Changed “active” to “live”

- Deleted reference to “defensive” use in 3rd paragraph of preamble

- Deleted “or restrictions on the have made right”.

- Added “In addition, you may specify that the offer is not available to parties with whom you are engaged in patent litigation or parties who are or have been infringing the patents being offered.”

Definitions:

- Added: ““Necessary Patent Claims” means any patent claim(s), now owned, controlled, or hereafter acquired by Licensor in any patent that Licensor has the right to license, that would be infringed, but for the license granted in Section 2.2, by the making, using, selling, or importation of processes or products that implement specific features or teachings of Specification, but excluding any claims covering subject matter that are not set forth or specifically described in the Specification.

- Added: “Specification” means the specification, if any, set forth in the License Data Record by the "Specification" entry.

2. Grant of License:

- 2.1: Added “under the Licensed Patent Rights”; added “have made”

- 2.2: Added new paragraph: “If the License Data Record contains a Specification, then subject to the terms and conditions of this Agreement and the License Data Record, Licensor grants to Licensee under the Necessary Patent Claims, in the Territory, and during the Term, a non-exclusive, non-transferable (except as expressly permitted in Section 9) license, without a right to sublicense, to make, use, sell, offer for sale, and import products that implement the Specification and to practice processes that implement the Specification.”; added “have made”

- 2.4: Added new paragraph: “The exclusive rights referenced above (such as make, sell, and use) shall also be interpreted to include substantially similar exclusive patent rights (such as disposal and offer to dispose) in other countries, when applicable.”

3. Fees:
- Added “And Other Consideration” to Section title

4. Reporting:
- Changed: “If no royalties are required,” to “In addition..”

5. Term:

- Added: “Unless otherwise specified..” to first paragraph

- Added: “provided that if Licensee terminates this Agreement, it shall not be eligible to reinstate this license or accept any other general license offer with respect to the subject matter of this Agreement, unless the Licensor specifically agrees otherwise in writing.”

- Added: “and 10” to last paragraph.

8. Trademark and Attribution

- Added: “At Licensor’s request” to first paragraph

10.

Added: “ADDITIONAL CLAUSES”

Additional Clauses (if any) contained in the Licensed Data Record are hereby incorporated into this Agreement by reference. In the event of any conflict between the terms of this Agreement and the Additional Clauses, the terms of the Additional Clauses shall prevail.

CC Public Patent License

2010-08-25T00:25:33Z

Thinh:

'''CC Public Patent License'''
Also see [[Patent License Drafter's Notes]] and [[Patent License Change Log]]

'''How to Use this CC Public Patent License'''

This CC Public Patent License is intended to be used as part of a public license offer to license patent rights. A public license offer provides two main benefits:

a) it is publicly accessible on the Internet: anyone can read the full terms of the offer;
b) it is an “live” offer so that anyone can accept it if they agree to all its terms.

To have these benefits, the offer must be openly published, and it must be capable of being accepted by anyone on a non-discriminatory basis and without additional negotiation. Used in the right context, this type of offer can provide benefits for both licensor and licensee. A licensor can use a public license offer to publicize its willingness to license patent rights on reasonable and non-discriminatory terms, thus attracting innovators and potential licensees who might otherwise not have been either aware that such patent rights were available for license or who might otherwise be unwilling to approach the licensor due to anticipated, significant transaction costs typically associated with negotiating a favorable license. A potential licensee can rely on the public and non-discriminatory availability of this public license offer to make plans and decisions about technology implementation, which in the absence of such offers, would be complicated or impossible.

Patent licenses can be very complicated, particularly when complex commercialization and licensing strategies are involved. So it would be impossible for anyone to write a license that addresses everyone’s needs or fits every scenario. Instead, we developed this Model Patent License Agreement to be simple and easy to understand. It is intended to provide a simple standard model license to make patents available on reasonable and non-discriminatory terms: preferably free of charge and without unnecessary field limitations. If you need to implement a more complex licensing strategy, then this may not be the right tool for you. In any case, please consult your own attorney before making an offer. Creative Commons is not a law firm, so we cannot provide you with advice on whether to use this instrument or how to tailor it to suit your needs or business strategy.

To use this Model Patent License Agreement, you need to supply some basic information, which is found in the License Data Record (see Addendum A). This information should be supplied in a standard electronic format for ease of reference, but you can use other formats if you wish. Some basic information is required in order to make a complete public license offer, while other fields may be optional. If you do not fill out the optional fields, then they will be defined by default provisions in the license. IN MOST CASES, THE DEFAULT OPTION ALLOWS FOR THE MOST PERMISSIVE AND FREE USE BY THE LICENSEE. For example, by default, there are no field of use restrictions, fees, or royalties. You may also add limitations to the offer itself (for example, an expiration date for the offer). In addition, you may specify that the offer is not available to parties with whom you are engaged in patent litigation or parties who are or have been infringing the patents being offered. We do not encourage you to impose other offer limitations beyond this. However, in some circumstances, it may be reasonable to specify that anyone currently engaged in litigation with you that would otherwise give you grounds for terminating the license (see Section 5) may not accept the offer in the first place.

Together, the License Data Record and the CC Public Patent License will be become your public license offer. When such an offer is made available on your Web site, or through clearinghouses like GX, anyone eligible to accept the offer may accept it through a registration and acceptance process. As part of that process, the Licensee will supply the Licensee-specific information needed to complete the License Data Record. This process, and the transaction record, then completes the license agreement.

'''CC PUBLIC PATENT LICENSE'''

The owner of the Licensed Patent Rights, as defined below (the “Licensor”), grants a license on the terms and conditions set forth in this CC Public Patent License (the “Agreement”) to the person or entity accepting this Agreement (the “Licensee”).

'''1. DEFINITIONS'''

“Field of Use” means the fields of use specified in the License Data Record. If not so specified, Field of Use means all fields of use.

“License Data Record” means a written or electronic document that provides the information specified in Addendum A.

“Licensed Patent Rights” means (a) the patents and patent applications listed in the License Data Record, (b) all divisionals, continuations, and foreign counterpart applications claiming priority from any patent or patent application described in (a), (c) those claims of any continuations-in-parts that claim priority exclusively from the patents or patent applications described in (a) and (b); (d) all patents issuing from patent applications included in (a) through (c); and (e) all reissues, reexaminations, renewals, and extensions of any patents included in (a) through (d).

“Licensed Process(es)” means a process the practice of which would infringe, but for the license granted in this Agreement, one or more claims of the Licensed Patent Rights.

“Licensed Product(s)” means a machine, article of manufacture, composition of matter, or other product (a) the manufacture, use, sale, offer for sale, or import of which would infringe, but for the licenses granted in this Agreement, one or more claims of the Licensed Patent Rights, or (b) made or directly obtained by a Licensed Process.

“Necessary Patent Claims” means any patent claim(s), now owned, controlled, or hereafter acquired by Licensor in any patent that Licensor has the right to license, that would be infringed, but for the license granted in Section 2.2, by the making, using, selling, or importation of processes or products that implement specific features or teachings of Specification, but excluding any claims covering subject matter that are not set forth or specifically described in the Specification.

“Specification” means the specification, if any, set forth in the License Data Record by the "Specification" entry.

“Territory” means a geographical or jurisdictional designation, as specified in the License Data Record. If not so specified, Territory means worldwide.

“Term” means the period of time specified in Section 5.

'''2. GRANT OF LICENSE'''

2.1 Subject to the terms and conditions of this Agreement and the License Data Record, Licensor grants to Licensee under the Licensed Patent Rights, in the Territory, and during the Term, a non-exclusive, non-transferable (except as expressly permitted in Section 9) license, without a right to sublicense, to make, use, sell, offer for sale, and import Licensed Products and to practice Licensed Processes, in each case, in the Field of Use.

2.2 If the License Data Record contains a Specification, then subject to the terms and conditions of this Agreement and the License Data Record, Licensor grants to Licensee under the Necessary Patent Claims, in the Territory, and during the Term, a non-exclusive, non-transferable (except as expressly permitted in Section 9) license, without a right to sublicense, to make, use, sell, offer for sale, and import products that implement the Specification and to practice processes that implement the Specification, in each case, in the Field of Use.

2.3 The above licenses include the right to have made, except as otherwise specified by the License Data Record.

2.4 The exclusive rights referenced above (such as make, sell, and use) shall also be interpreted to include substantially similar exclusive patent rights (such as disposal and offer to dispose) in other countries, when applicable.

'''3. FEES AND OTHER CONSIDERATION'''

Fees, royalties, or other consideration, if any, shall be specified in the “License Fees and Royalties” section of License Data Record. If none are specified, then no payment is required under this Agreement.

'''4. REPORTING'''

Licensee shall provide quarterly reports to Licensor, along with any required payments, in sufficient detail to verify the calculation of royalties owed, including without limitation, gross receipts from the use, sale, or other disposition of Licensed Products and/or from the practice of a Licensed Process, deductions taken for calculating revenues, and the total royalty due. If no royalties are due, then the report shall so specify.

In addition, then Licensee shall instead provide such reports as may be reasonably requested by Licensor to perform the analysis and activities described below.

Licensor may use the information provided by Licensee to analyze and publish metrics and impact statistics related to the use of the Licensed Patent Rights and have others do so, as long as such information is used only in aggregated and anonymous form. Licensor may also use or disclose the information to enforce this Agreement, and/or to comply with a court order, or otherwise as required by law.

'''5. TERM'''

Unless otherwise specified, the Term of this Agreement commences on its execution and ends upon the expiration, abandonment, or final invalidity of all claims within the Licensed Patent Rights, unless earlier terminated as permitted below.

Licensor may terminate this Agreement in the event of a material breach of this Agreement that is not cured within thirty (30) days after Licensor provides written notice to Licensee specifying such breach.

To the extent permitted by applicable law, Licensor may terminate this Agreement immediately in the event Licensee becomes insolvent, files for bankruptcy protection, makes an assignment for the benefit of creditors, or becomes the subject of involuntary bankruptcy proceedings. Licensee shall immediately notify Licensor upon the occurrence of one of these conditions.

Licensor may terminate this Agreement upon written notice to Licensee in the event that Licensee asserts a claim of patent infringement against Licensor or any third party with respect to products or services of Licensor, unless (a) such claim is first asserted after Licensor has asserted a claim of patent infringement against Licensee or any third party with respect to products or services of Licensee, or (b) Licensee fully withdraws such claim within ten (10) days after being notified by Licensor. For purposes of this paragraph, “Licensor” and “Licensee” shall also include their respective affiliates.

Licensee may terminate this Agreement by providing Licensor with at least thirty (30) days prior written notice, provided that if Licensee terminates this Agreement, it shall not be eligible to reinstate this license or accept any other general license offer with respect to the subject matter of this Agreement, unless the Licensor specifically agrees otherwise in writing.
Upon any termination of this Agreement, Licensee shall provide Licensor with a final royalty report within thirty (30) days after termination, along with full payment of all amounts due. The following sections shall also survive termination of this Agreement: 6, 7, 8, 9, and 10.

'''6. WARRANTIES'''

Licensor warrants that it has the right and authority to grant the rights and licenses granted in this Agreement.

Licensor disclaims all other warranties, representations, and conditions, whether express, implied, or statutory, including, but not limited to, the warranties of merchantability, fitness for a particular purpose, or non-infringement.

Without limiting the generality of the above disclaimer, Licensor makes no representation or warranties that: a) it will prosecute or continue to prosecute, maintain, or defend any patent or patent application, b) it will bring an infringement suit, assert any claim against third parties accused of infringement, or otherwise enforce any patent or patent application, c) it will join as a party to any suit or legal action, d) it will provide Licensee with know-how or assistance necessary or useful to practice the Licensed Patent Rights, e) the Licensed Patent Rights are valid or enforceable, or f) the Licensed Products or Licensed Processes may be exploited or practiced without infringing third party patents.

'''7. INDEMNIFICATION'''

Licensee shall indemnify and hold Licensor, and its officers, directors, employees, representatives, agents, and affiliates harmless from any and all damages, liabilities, costs, and expenses (including reasonable attorneys’ fees) arising out of or caused by Licensee’s practice or exploitation of the license granted by this Agreement or by the sale, use, or exploitation of Licensed Products or Licensed Processes by or under the authority of Licensee.

Licensor shall notify Licensee promptly of any claim of which Licensor is aware and for which Licensor seeks indemnification. Licensee shall have the right to control the defense of such claims, except to the extent that the scope or validity of the Licensed Patent Rights are at issue, in which case Licensor may assume the sole control and defense of such claims at its own expense.

'''8. TRADEMARKS AND ATTRIBUTION'''

At Licensor’s request, Licensee agrees to mark Licensed Products and their packaging with patent markings as required by applicable law to preserve Licensor’s rights and otherwise enforce the Licensed Patents.

At Licensor’s request, Licensee shall reasonably cooperate with Licensor and provide such information as may be necessary for Licensor to prepare use case studies that document Licensee’s use of the Licensed Patent Rights and related usage or impact metrics. Each party may copy, distribute, and publish such use case studies, including by means of its Web sites, and authorize others to do so, to demonstrate the uses and impact of the technology.

Except solely as permitted above, neither party may use the other’s trademarks, service marks, trade names, company names, or logos (“Marks”) to offer, market, sell, or otherwise endorse any product or service or to engage in any other trademark usage, unless with the prior written authorization of the owner. Any uses of a party’s Marks shall inure solely to the benefit of that party, along with all goodwill associated therewith.

'''9. GENERAL PROVISIONS'''

Notices to the parties shall be provided at the address set forth in the License Data Record, unless a party provides written notice to the other party of a change of address. Notices may be provided by personal delivery, express delivery service, or registered mail. Notices shall be effective on the date received.

Nothing in this Agreement constitutes the parties as partners, joint venturers, principal and agent, or fiduciaries of each other.

A delay or failure in enforcing a right or obligation under this Agreement shall not be construed as an implied waiver of that right or obligation or of any other provision or breach under this Agreement. A waiver under this Agreement is only effective if made in writing and signed by the party granting the waiver.

An amendment or modification of this Agreement is effective only if made in writing and signed by the duly authorized representatives of the parties.
This Agreement constitutes the entire agreement between the parties as to the subject matter herein and supersedes all prior or contemporaneous negotiations, agreements, representations, memorandums, and understandings.

If any provision of this Agreement is deemed to be invalid or unenforceable, then that provision, to the extent unenforceable, is severable and the remainder of this Agreement shall continue in full force and effect.

Licensee may not assign any of its rights under this Agreement, delegate any of its obligations under this Agreement, or otherwise transfer this Agreement, without the prior written consent of Licensor, and any attempted assignment, transfer, or delegation shall be voidable by Licensor. Any change of control of Licensee shall be deemed an attempted transfer of this Agreement. Licensor may assign this Agreement in connection with a sale, merger, or transfer of the assets to which this Agreement relates, provided that the assignee assumes all rights and obligations under this Agreement.

Licensee agrees to maintain insurance in amounts prudent for Licensee’s operations and adequate to discharge Licensee’s obligations under Section 7.

This Agreement is governed by and interpreted in accordance with the laws of the jurisdiction set forth in the License Data Record, if any. The parties agree that the proper jurisdiction and venue for any disputes arising out of this Agreement shall be in the courts of the venue specified in the License Data Record, if any. If none are specified, then jurisdiction and venue shall be deemed to be in the relevant jurisdiction for Licensor’s address, as stated in the License Data Record.

No rights or forbearances are granted, or may arise (whether through implication, estoppel, exhaustion or otherwise) other than those expressly granted in this Agreement.

EXCEPT FOR THE OBLIGATION TO RENDER CONSIDERATION (IF ANY) IN SECTION 3, THE INDEMNIFICATION OBLIGATIONS IN SECTION 7, AND INFRINGEMENT OF ANY TRADEMARK OR INTELLECTUAL PROPERTY RIGHT, IN NO EVENT WILL EITHER PARTY HAVE ANY LIABILITY OF ANY KIND WHATSOEVER TO THE OTHER ARISING OUT OF THIS AGREEMENT, INCLUDING BUT NOT LIMITED TO, FOR INDIRECT, INCIDENTAL, CONSEQUENTIAL OR SPECIAL DAMAGES, EVEN IF ADVISED OF THE POSSIBILITY OF SUCH DAMAGES.

'''10. ADDITIONAL CLAUSES'''

Additional Clauses (if any) contained in the Licensed Data Record are hereby incorporated into this Agreement by reference. In the event of any conflict between the terms of this Agreement and the Additional Clauses, the terms of the Additional Clauses shall prevail.

'''Addendum A'''

The purpose of this Addendum is to provide guidelines for a License Data Record, which may be either in paper or electronic form. This License Data Record is unique to each transaction and must specify a minimum information set in order to give effect to the Patent License Agreement.

To constitute an agreement that incorporates the terms of the Patent License Agreement, a License Data Record must:

1) reference this Agreement by linking to the URL of the Patent License Agreement deed or legal code, attaching a copy of it, referencing it by name, or by any other means that uniquely and unambiguously identifies it; AND

2) provide the following information:

a. Name of Licensor: the name of the person or entities offering this license,

b. Licensor Contact Information: address, contact person, phone number, fax, and/or email,

c. Name of Licensee: the name of the person or entities accepting this license,

d. Licensee Contact Information: address, contact person, phone number, fax, and/or email,

e. Licensed Patent Rights: a list of patents and patent applications to be licensed,

OR

Specification: a written specification of the invention or technology to be licensed.

f. License Fees, Royalties, and other consideration (optional): a description of any required fees, royalties, or other consideration, including without limitation any requirements relating to improvements or innovations,

g. Field of Use (optional): a description of any scope of use limitations associated with the license,

h. “Have Made” Limitations (optional): any limitations to the license to “have made,”

i. Choice of Law (optional): jurisdiction for choice of law,

j. Choice of Venue (optional) jurisdiction for legal venue,

k. Territory (optional): geographic limitations of the license,

l. Offer Limitations (optional): any limitations associated with the offer, and

m. Additional Clauses

'''Sample License Data Record'''

This License Data Record references and incorporates the GX Model Patent License Agreement (located at URL: _________)

Licensor Name:
Licensor Contact Address:

_____________________________

_____________________________

_____________________________

Phone: _______________________

Fax: _________________________

Email: ________________________

Licensee Name:

Licensee Contact Address:

_____________________________

_____________________________

_____________________________

Phone: _______________________

Fax: _________________________

Email: _____________________________

Licensed Patents Rights:

Patent No. ____________________________

Patent Application No.__________________ …

OR

Specification (attached a detailed specification or provide a URL):

License Fees & Royalties (optional):

Field of Use (optional):

Have Made Limitations (optional):

Choice of Law (optional) City_____________, State_____________

Choice of Venue (optional) City_____________, State_____________

Territory (Optional)

Offer Limitations (Optional)

Additional Clauses (Optional)

Research Non-Assertion Pledge

2010-08-24T17:29:38Z

Thinh:

See [[Patent Tools Public Discussion]]

See also [[Research Non-Assertion Pledge Change Log]] for changes and the [[Research Non-Assertion Pledge Drafter's Notes]] for commentary

==1. Purpose==

The purpose of the GreenXchange is to promote innovation and the dissemination of knowledge that leads to the development, production and adoption of products that enhance sustainability. In order to promote that goal and reduce barriers to conducting research that helps achieve that goal, members of the GreenXchange may adopt the following Research Non-Assertion Pledge (the “Pledge”). This Pledge is made for the benefit of the researchers and institutions meeting the criteria set forth below.

==2. Definitions==

“Grantor” means the entity or individual making this Pledge.

“Non-Commercial Research Use” means any internal experimental, research, developmental, or educational use or practice of the Patent Rights, other than in exchange for money or other valuable consideration.

“Non-Profit Institution” means (i) a college, university, or other institution of higher education, (ii) an organization that qualifies for an exemption under section 501(c)(3) of the Internal Revenue Code of 1954 (26 U.S.C. 501(c)) and exempt from taxation under Internal Revenue Code (26 U.S.C. 501(a)), or (iii) any nonprofit scientific or educational organization qualified under a state nonprofit organization statute and any organization that receives similar treatment as a non-profit or charitable organization under the applicable laws of other countries.

“Patent Rights” means the patents and/or patent applications specifically designated by Grantor for inclusion in this Pledge, except to the extent any patents, patent applications, or claims have been added or removed from time to time in accordance with the procedures set forth below.

==3. Research Non-Assertion Pledge==

3.1 Subject to the exceptions and limitations in this Section 3, Grantor hereby promises not to assert any Patent Rights anywhere in the world against a Non-Profit Institution, or its staff, representatives, or students, in each case only to the extent engaging in Non-Commercial Research Use that would infringe the Patent Rights but for this Pledge.

3.2 Grantor may add new patents, patent applications, or claims to the Patent Rights by providing notice thereof on its designated Web site. Grantor may remove patents, patent applications, or claims from the Patent Rights in accordance with Section 3.4.

3.3 Notwithstanding anything to the contrary, Grantor may terminate this Pledge as against any party in the event that such party asserts a claim of patent infringement against Grantor or any third party with respect to products or services of Grantor, unless (a) such claim is first asserted after Grantor has asserted a claim of patent infringement against such party or any third party with respect to products or services of such party, or (b) such party fully withdraws such claim within ten (10) days after being notified by Grantor. For purposes of this paragraph, “Licensor” and “Licensee” shall also include their respective affiliates.

3.4 Grantor may terminate this Pledge in its entirety, or remove specific patents, patent applications, or claims by providing notice on its designated Web site, provided that users may continue to rely on this Research Non-Assertion Pledge for an additional 12 months (or longer, if allowed by the Grantor) if needed to complete existing projects, except to the extent Grantor has exercised its right to terminate under Section 3.3.

Research Non-Assertion Pledge Drafter's Notes

2010-08-24T17:28:43Z

Thinh: Created page with "== Drafter's Comments == === Estoppel === Some commentators suggested that the estoppel theory that we rely upon for this pledge has uncertain enforceability. Particularly, in ..."

== Drafter's Comments ==

=== Estoppel ===

Some commentators suggested that the estoppel theory that we rely upon for this pledge has uncertain enforceability. Particularly, in some countries, estoppel requires for there to be some pre-existing relationship between the parties. Due to this uncertainty, it was recommended that the Research Non-Assertion Pledge be implemented in a form that requires some form of execution or signature process (or registration). While this is a possible implementation of the Non-Assertion Pledge, I do not think it is necessary to implement a signature process. In particular, it follows the model established by the IBM Non-Assertion Against Open Software, the Eco-Patent Commons, and the Microsoft Open Specification Promise, all of which rely on estoppel.

=== Definition of Non-Profit Institution ===

An earlier draft included government agencies as a qualified non-profit institution, but this was removed due to the failure among our commentators to agree on the appropriateness of including government entities, other than educational institutions (educational institutions are already included as one of the categories).

It was pointed out that the definition of a Non-Profit Institution under sub-clause (ii) is a U.S.-centric definition, and alternative definitions of other countries, or under other countries' laws were suggested. However, because an exhaustive list of such statutes is impracticable, sub-clause (iii) should be interpreted as being a catch all provision for non-profit entities in other jurisdictions.

=== Exclusive Licenses and Conflicting Transfers ===

IMPORTANT!!

It was pointed out by some commentators that a conflict could exist between an exclusive licensee and the beneficiary of the non-assertion. In some jurisdictions, for example, an exclusive licensee has the right to bring an infringement suit independently of the patent owner. Therefore, if the patent owner has already granted an exclusive license, then a beneficiary of the non-assertion may nevertheless face the possibility of suit from an exclusive licensee. It was recommended that we add a warranty that the patent owner has granted no exclusive licenses to the pledge patents. This, I decided not to do, due to the risks to the licensor in making that warranty. However, I strongly urge patent owners who are making the pledge to identify and specifically remove any patents that have been licensed exclusively from the non-assertion pledge to prevent such a conflict.

=== Subsequent Ownership Transfers ===

Some commentators pointed out that the Pledge may not be binding upon a subsequent assignee of the patent rights (such as a company that acquires the patent owner's assets), because it is not well-established whether the unilateral promise on which the Pledge is based would be binding upon the assignee. This could depend on the details of the transaction (e.g., whether it's an asset purchase or merger), whether the assignee has promised to honor the commitments of the assignor, and the legal doctrine applicable in a specific jurisdiction. It was suggested that I add a clause to the Non-Assertion Pledge that would either (a) require the patent owner to condition any sale or assignment of the patent rights on the continuing validity of the Pledge, or (b) recite within the Pledge itself that it is binding upon future purchasers of the patent rights. I declined to do this due to the risk pointed out by some commentators that such a clause might complicate or jeopardize future mergers & acquisitions involving the grantor. However, whenever possible, grantors are strongly encouraged to ensure that any future transfers of the patent rights are done subject to the Pledge.

Research Non-Assertion Pledge

2010-08-24T17:06:00Z

Thinh:

See [[Patent Tools Public Discussion]]
See also [[Research Non-Assertion Pledge Change Log]] for changes

==1. Purpose==

The purpose of the GreenXchange is to promote innovation and the dissemination of knowledge that leads to the development, production and adoption of products that enhance sustainability. In order to promote that goal and reduce barriers to conducting research that helps achieve that goal, members of the GreenXchange may adopt the following Research Non-Assertion Pledge (the “Pledge”). This Pledge is made for the benefit of the researchers and institutions meeting the criteria set forth below.

==2. Definitions==

“Grantor” means the entity or individual making this Pledge.

“Non-Commercial Research Use” means any internal experimental, research, developmental, or educational use or practice of the Patent Rights, other than in exchange for money or other valuable consideration.

“Non-Profit Institution” means (i) a college, university, or other institution of higher education, (ii) an organization that qualifies for an exemption under section 501(c)(3) of the Internal Revenue Code of 1954 (26 U.S.C. 501(c)) and exempt from taxation under Internal Revenue Code (26 U.S.C. 501(a)), or (iii) any nonprofit scientific or educational organization qualified under a state nonprofit organization statute and any organization that receives similar treatment as a non-profit or charitable organization under the applicable laws of other countries.

“Patent Rights” means the patents and/or patent applications specifically designated by Grantor for inclusion in this Pledge, except to the extent any patents, patent applications, or claims have been added or removed from time to time in accordance with the procedures set forth below.

==3. Research Non-Assertion Pledge==

3.1 Subject to the exceptions and limitations in this Section 3, Grantor hereby promises not to assert any Patent Rights anywhere in the world against a Non-Profit Institution, or its staff, representatives, or students, in each case only to the extent engaging in Non-Commercial Research Use that would infringe the Patent Rights but for this Pledge.

3.2 Grantor may add new patents, patent applications, or claims to the Patent Rights by providing notice thereof on its designated Web site. Grantor may remove patents, patent applications, or claims from the Patent Rights in accordance with Section 3.4.

3.3 Notwithstanding anything to the contrary, Grantor may terminate this Pledge as against any party in the event that such party asserts a claim of patent infringement against Grantor or any third party with respect to products or services of Grantor, unless (a) such claim is first asserted after Grantor has asserted a claim of patent infringement against such party or any third party with respect to products or services of such party, or (b) such party fully withdraws such claim within ten (10) days after being notified by Grantor. For purposes of this paragraph, “Licensor” and “Licensee” shall also include their respective affiliates.

3.4 Grantor may terminate this Pledge in its entirety, or remove specific patents, patent applications, or claims by providing notice on its designated Web site, provided that users may continue to rely on this Research Non-Assertion Pledge for an additional 12 months (or longer, if allowed by the Grantor) if needed to complete existing projects, except to the extent Grantor has exercised its right to terminate under Section 3.3.

Research Non-Assertion Pledge Change Log

2010-08-24T17:05:52Z

Thinh: Created page with "Change Log 2. Definitions "Non-Profit Institution" - added "or" between subsections (ii) and (iii)"

Change Log

2. Definitions
"Non-Profit Institution"
- added "or" between subsections (ii) and (iii)

Research Non-Assertion Pledge

2010-08-24T17:03:48Z

Thinh: /* 2. Definitions */

See [[Patent Tools Public Discussion]]

==1. Purpose==

The purpose of the GreenXchange is to promote innovation and the dissemination of knowledge that leads to the development, production and adoption of products that enhance sustainability. In order to promote that goal and reduce barriers to conducting research that helps achieve that goal, members of the GreenXchange may adopt the following Research Non-Assertion Pledge (the “Pledge”). This Pledge is made for the benefit of the researchers and institutions meeting the criteria set forth below.

==2. Definitions==

“Grantor” means the entity or individual making this Pledge.

“Non-Commercial Research Use” means any internal experimental, research, developmental, or educational use or practice of the Patent Rights, other than in exchange for money or other valuable consideration.

“Non-Profit Institution” means (i) a college, university, or other institution of higher education, (ii) an organization that qualifies for an exemption under section 501(c)(3) of the Internal Revenue Code of 1954 (26 U.S.C. 501(c)) and exempt from taxation under Internal Revenue Code (26 U.S.C. 501(a)), or (iii) any nonprofit scientific or educational organization qualified under a state nonprofit organization statute and any organization that receives similar treatment as a non-profit or charitable organization under the applicable laws of other countries.

“Patent Rights” means the patents and/or patent applications specifically designated by Grantor for inclusion in this Pledge, except to the extent any patents, patent applications, or claims have been added or removed from time to time in accordance with the procedures set forth below.

==3. Research Non-Assertion Pledge==

3.1 Subject to the exceptions and limitations in this Section 3, Grantor hereby promises not to assert any Patent Rights anywhere in the world against a Non-Profit Institution, or its staff, representatives, or students, in each case only to the extent engaging in Non-Commercial Research Use that would infringe the Patent Rights but for this Pledge.

3.2 Grantor may add new patents, patent applications, or claims to the Patent Rights by providing notice thereof on its designated Web site. Grantor may remove patents, patent applications, or claims from the Patent Rights in accordance with Section 3.4.

3.3 Notwithstanding anything to the contrary, Grantor may terminate this Pledge as against any party in the event that such party asserts a claim of patent infringement against Grantor or any third party with respect to products or services of Grantor, unless (a) such claim is first asserted after Grantor has asserted a claim of patent infringement against such party or any third party with respect to products or services of such party, or (b) such party fully withdraws such claim within ten (10) days after being notified by Grantor. For purposes of this paragraph, “Licensor” and “Licensee” shall also include their respective affiliates.

3.4 Grantor may terminate this Pledge in its entirety, or remove specific patents, patent applications, or claims by providing notice on its designated Web site, provided that users may continue to rely on this Research Non-Assertion Pledge for an additional 12 months (or longer, if allowed by the Grantor) if needed to complete existing projects, except to the extent Grantor has exercised its right to terminate under Section 3.3.

Research Non-Assertion Pledge

2010-08-24T17:01:32Z

Thinh: /* 2. Definitions */

See [[Patent Tools Public Discussion]]

==1. Purpose==

The purpose of the GreenXchange is to promote innovation and the dissemination of knowledge that leads to the development, production and adoption of products that enhance sustainability. In order to promote that goal and reduce barriers to conducting research that helps achieve that goal, members of the GreenXchange may adopt the following Research Non-Assertion Pledge (the “Pledge”). This Pledge is made for the benefit of the researchers and institutions meeting the criteria set forth below.

==2. Definitions==

“Grantor” means the entity or individual making this Pledge.

“Non-Commercial Research Use” means any internal experimental, research, developmental, or educational use or practice of the Patent Rights, other than in exchange for money or other valuable consideration.

“Non-Profit Institution” means (i) a college, university, or other institution of higher education, (ii) an organization that qualifies for an exemption under section 501(c)(3) of the Internal Revenue Code of 1954 (26 U.S.C. 501(c)) and exempt from taxation under Internal Revenue Code (26 U.S.C. 501(a)), or (iii) any nonprofit scientific or educational organization qualified under a state nonprofit organization statute, and any organization that receives similar treatment as a non-profit or charitable organization under the applicable laws of other countries.

“Patent Rights” means the patents and/or patent applications specifically designated by Grantor for inclusion in this Pledge, except to the extent any patents, patent applications, or claims have been added or removed from time to time in accordance with the procedures set forth below.

==3. Research Non-Assertion Pledge==

3.1 Subject to the exceptions and limitations in this Section 3, Grantor hereby promises not to assert any Patent Rights anywhere in the world against a Non-Profit Institution, or its staff, representatives, or students, in each case only to the extent engaging in Non-Commercial Research Use that would infringe the Patent Rights but for this Pledge.

3.2 Grantor may add new patents, patent applications, or claims to the Patent Rights by providing notice thereof on its designated Web site. Grantor may remove patents, patent applications, or claims from the Patent Rights in accordance with Section 3.4.

3.3 Notwithstanding anything to the contrary, Grantor may terminate this Pledge as against any party in the event that such party asserts a claim of patent infringement against Grantor or any third party with respect to products or services of Grantor, unless (a) such claim is first asserted after Grantor has asserted a claim of patent infringement against such party or any third party with respect to products or services of such party, or (b) such party fully withdraws such claim within ten (10) days after being notified by Grantor. For purposes of this paragraph, “Licensor” and “Licensee” shall also include their respective affiliates.

3.4 Grantor may terminate this Pledge in its entirety, or remove specific patents, patent applications, or claims by providing notice on its designated Web site, provided that users may continue to rely on this Research Non-Assertion Pledge for an additional 12 months (or longer, if allowed by the Grantor) if needed to complete existing projects, except to the extent Grantor has exercised its right to terminate under Section 3.3.

Patent License Drafter's Notes

2010-08-23T21:20:13Z

Thinh:

'''Drafter’s Notes'''

See also [[Model Patent License]] which is superseded by [[CC Public Patent License]]

'''Purpose:'''

These Drafter’s Notes (“Notes”) capture many of the comments that were received during the Public Comment Period, explain how those comments are reflected in the final Public Patent License (“License”), and describe how other policy considerations shaped the drafting of the License. You may refer to these Notes to help understand our views of the issues presented by the comments and how I attempted to resolve those issues. These Notes are not intended to be part of the License and may not be used to change or add additional terms to the License, although they may be helpful in interpretation of the License when there is ambiguity. These Notes are not intended to provide legal advice or substitute for legal counsel. However, you may wish to consider them, with the aid of your legal counsel, prior to using the License.

The commentary is arranged in an order corresponding to the sections that appear in the License. In order to protect the anonymity of commentators, I do not identify the source of particular comments, and in some cases, multiple comments are summarized together for ease of reference. Some comments that resulted in minor or clarifying changes to the draft of the License during the Public Comment Period are not discussed in detail here, but are reflected in the Change Log. You do not have to review the Change Log in order to review the final License, but if you have been following the drafting process or if you have already reviewed an earlier version of the License, you may wish to refer to the Change Log for a quick summary of changes made leading to the final draft.

'''Title'''

A number of commentators suggested changing the title of the License. One commentator expressed the concern that the name “Model Patent License” implies that the License has broader applicability or acceptance than is warranted or that it is more specifically suitable than other patent licenses that already exist. This was not our intention. The current working title is “CC Public Patent License.”

'''Preamble'''

Some commentators expressed concern with the statement in the preamble that this License is intended for users who are maintaining their patents primarily for defensive purposes. They point out that in some cases, a public offer to license a patent may reduce the effectiveness or deterrent effect of such defensive use by establishing a presumptive measure (cap) on economic damages that may be proven in the event of infringement. They suggest that high-value or core business patents, even if held defensively, should be reserved. I think it is best that you consult with your attorney on the most effective patent licensing and portfolio management strategy for your unique situation, and I do not intend to recommend a particular patent licensing approach for every situation. Accordingly, I have deleted the reference to defensive use of patents.

Some commentators also suggested that our comment regarding the “offer conditions” are too narrow. For example, they suggested that an offeror could specify that those parties who are currently in patent litigation with the offeror or who have infringed the offeror’s patents be excluded from the offer. Otherwise, it is pointed out, an infringer could wait until its infringement is discovered and then take a license, with the result that it would only be liable for past infringement but it could avoid an injunction against future infringement by accepting a license. I agree with this and so added an additional sentence that the offer may be so limited.

'''Definitions'''

One of the issues that arose early in the drafting process was what type of model to use for identifying those patents that are being licensed. The simplest model is enumeration—a list of patents that are being offered for license. However, one concern expressed by several commentators was that this would be too narrow: there might be daughter applications such as continuations, continuations-in-part, and divisionals that issue later and that may not be readily discoverable by a licensee through due diligence. For this reason, we added continuations, continuations-in-part, divisionals, foreign counterparts, etc. to the definition of “Licensed Patent Rights” to supplement the enumeration approach. Nevertheless, a related issue arose with respect to so-called “grandparent” applications or prior dominant patents that may block the use of the licensed patents. For example, a licensor may license an improvement patent without including the dominant patent required to practice that improvement patent. In that case, an unwary licensee may wrongly conclude that it is obtaining all rights needed from the licensor to practice the invention, only to be confronted with an infringement claim from the licensor later for a dominant patent. Some courts have addressed the inequitable effects of this type of problem by finding implied licenses. However, for drafting purposes, I did not want to rely on implied license theories.

One suggestion was to include grandparent applications, just like daughter applications. However, this has some interpretive problems, insofar as the claims of a grandparent application cannot be directly related to the claims of daughter applications using clear rules such as priority, because the priority rules allow only the claims of a daughter application to claim back through the grandparent application’s specifications, not its own claims. This imperfect mapping would produce ambiguities in terms of what is being licensed, and I want to avoid any ambiguity that would result in future undesirable surprises for licensees and licensors. The virtues of clarity and predictability argue against such an approach.

Other commentators suggested that we should not overstate the problem about grandparent applications or dominant patents because unlike daughter applications, which may be yet unpublished, grandparent applications and dominant patents are discoverable by the licensee with a modest degree of due diligence, since they will either have been published or would be referenced by the licensed patents. While this is true of transactions between sophisticated licensors and licensees, there may be other situations where the licensee lacks the sophistication or resources to conduct adequate patent due diligence.

Therefore, a second alternative licensing approach is needed for those situations where the licensor wants to assure the licensee that it has licensed all claims necessary to practice (and that are owned or controlled by the licensor). Under this approach, the licensor designates a “Specification” that it wishes to license—this could be a technical disclosure, a patent specification, or a technical standard, for example—and that all claims covering that specification will be licensed as “Necessary Patent Claims”. To prevent “scope creep” caused by an overly expansive interpretation of the Specification, a clarification is made that only claims that are taught by the Specification are licensed and not merely enabling claims that are not the principle subject matter of the specification. (For example, a purely software specification does not include computer hardware claims merely because a computer is eventually needed to run the software. However, if a Specification has both specific hardware and software teachings, then both types of claims would be within scope).

With these two alternative ways of licensing patents, a licensor may either choose to be very specific with the patents it wishes to license by taking the enumeration approach (in which case, the licensee should be warned to conduct thorough patent diligence prior to accepting the license or practicing the invention), or it may seek to assure the licensee that it has indeed licensed all necessary claims by taking the “Specification” route. Thus, these two approaches should be seen as representing two ways of allocating the due diligence burden between the licensor and licensee.

Several commentators suggested that we added more specific branding requirements (similar to attribution requirements) for licensed products or services. Other commentators argued that it is unusual for licensees to agree to branding requirements as part of a patent license. Yet others argued that licensors would not necessarily want to impose branding requirements (which would involve granting a trademark license) unless it has some assurance of quality control. A trademark license without adequate policing (sometimes called a “naked license”) can result in loss of a trademark right. Furthermore, these commentators point out that trademark licensing accompanied by certain forms of technical guidance or assistance can result in a finding of a “franchise” in some states. Franchises are generally trademark licenses that are accompanied by consideration and a business plan (here, the patent license itself and associated know-how may supply the “business plan,” which is sometimes interpreted broadly). Franchise rules are complex, may require state-by-state registration formalities, and carry penalties including rescission and treble damages for failure to follow formalities. Due to these considerations, I consider a “branding” clause to be a “high risk” clause, and therefore I will leave open the possibility of implementing it through the “Additional Clauses” (see below), rather than providing a standard default.

'''Grant of License'''

2.1 One commentator suggested adding the phrase “under the Licensed Patent Rights” to make clear that this license is restricted in scope to the enumerated patents. This clarification is useful, so I made the change.

Several commentators suggested that the original paragraph was awkwardly worded and suggested a re-arrangement of clauses to make it flow better. I agreed and made the change. In particular, the phrase “under the Licensed Patent Rights, in the Territory, and during the Term” should be interpreted to apply to the whole paragraph.

2.2 This parallel license grant was added in order to implement the alternative, “Specification” mode of licensing discussed above. While it is technically possible to include both types of license grants (the enumeration approach of 2.1 and the specification approach of 2.2), and they would operate a two separate types of licenses that do not limit each other, for simplicity and ease of reference, it is recommended that the licensor pick one or the other. This can be accomplished simply by choosing whether to fill out the Licensed Patent Rights list or the Specification in the License Data Record (but not both). If the licensor fills both fields, then it will be granting two separate licenses, but the enumerated list does not operate as an additional limitation on the claims licensed under the Specification.

2.3 One commentator suggested that the ability to limit the “have made” right be extended to each of the other rights under patent. However, due to the unusual and complex nature of such limitations, I decided to leave this sentence unchanged and recommend that such additional limitations, if required, be implemented via the “Additional Clauses” mechanism.

2.4 One commentator suggested that the treatment of exclusive patent rights is centered on U.S. law. For example, under U.K. law, the terms “disposal” and “offer to dispose of” are used in place of “sale” and “offer for sale.” However, rather than extend the list of exclusive rights terminology to include variations from every country, I have opted to make the clarification that these rights include their foreign equivalents in order to generalize to all jurisdictions.

'''4. Reports'''

A number of commentators questioned why any reports would be necessary for non-royalty licenses. Other commentators expressed concerns that only low-value or insignificant patents would be offered under this license, limiting its impact. In order to provide empirical evidence for impact, licensors are encouraged to work with licensees to collect statistics and empirical measures of impact so that the impact of offering public patent licenses through clearinghouses can be measured and reported. In order to accomplish this goal, there must be an obligation on licensees to report impact statistics back to the licensor, and this section provides a mechanism to do that. Thus, even in non-royalty bearing licenses, some type of report is contemplated in order to provide the necessary usage statistics, although the contents of such a report shall be at the discretion of the licensor.

Some commentators expressed concern that the data reported by the licensee may contain confidential business information or plans. This section contemplates that only publicly available information will be published by the licensor as impact statistics, or if confidential information is involved, that the licensor would work with the licensee to remove any confidential information prior to publishing any statistics, thus reporting only anonymous or aggregated data that does not identify the licensee if possible. The level of aggregation or de-identification will depend on the specific circumstances and the sensitivity of the data provided. In addition, licensees and licensors may wish to enter into supplementary confidentiality agreements when warranted regarding treatment of sensitive business information. This section should be interpreted as requiring the licensee to provide at least publicly available data and providing the licensor with reasonable cooperation in identifying data that could be useful for documenting public or social impact.

Some commentators asked whether the licensee or the licensor will create use case studies to highlight the impact of patent licensing. Both licensees and licensors may publish such studies. However, at a minimum, it is contemplated that the licensee will cooperate with the licensor so that the licensor may publish such impact studies, if the licensor so chooses. Nothing prevents both parties from independently publishing their own use cases and studies. However, the parties should keep in mind their obligations not to imply endorsement or make other use of the other party’s trademarks under Section 8.

'''5. Term'''

A number of commentators suggested that the Term of the agreement be made flexible in order to accommodate expiration of the license before the expiration of the patents themselves. Other commentators, however, expressed the concern that this could cause a trap for the unwary, causing some licensees to rely on a license that has a date certain expiration without taking this into account. I think that this concern would be lessened if the fact that the license expires before the patents is specifically called out. As a result, I added the qualification “Unless otherwise specified,” in order to leave open the possibility of future support for date certain expirations. For now, neither the License Data Record nor the metadata will specifically support such early expiration. However, it is possible to implement such a condition via the “Additional Clauses” mechanism discussed below.

Some commentators pointed out that 11 U.S.C. § 365(e)(1) prevents a licensor from automatically terminating a license in the event of the licensee’s bankruptcy. This would invalidate the third paragraph of this section. Note that this paragraph has been qualified by “to the extent permitted by applicable law.” This qualification saves this clause from invalidity (where contrary to applicable law) but cannot make it enforceable. Therefore, a licensor is cautioned against relying on the enforceability of this provision in all jurisdictions. When this is an important issue, further research on country-specific bankruptcy laws is necessary.

Commentators disagreed over the inclusion of clause (a) of paragraph 4 (defensive termination). Clause (a) reads “unless (a) such claim is first asserted after Licensor has asserted a claim of patent infringement against Licensee or any third party with respect to products or services of Licensee.” Those who support the inclusion of this clause argue that defensive use of patents by the licensee should be allowed, without triggering termination rights of the licensor, when it is asserted in response to a licensor’s first offensive use of a patent unrelated to the license. This fits best with their intuition of what “defensive” termination means. Others, however, opined that it is customary that once patent litigation has been initiated, whether by the licensee or licensor, the licensor should have the option of terminating all licenses, whether or not such license is related to the patents that are the subject of the suit, and regardless of who initiated the lawsuit, so that the licensor may make maximum use of its patent portfolio for litigation purposes.

Given that my goal is to strike a fair balance between the interests of the licensor and licensee, I have to consider the effect of removing this clause. If removed, it would allow the licensor to terminate the license whenever the licensee asserts a patent-based counter-claim, even if the licensor first sued the licensee on an unrelated patent. While it is not my intention to preclude the licensor from pursuing other patent claims against the licensee, if it chooses to do so, it should not be able to also “pile on” patent rights that it has already licensed if the licensee does what it normally must in order to seek a compromise—namely, to assert those patents that it has maintained defensively by way of counterclaim. To do otherwise would be to make licensing a high-risk activity for licensee, that is, either give up its right to assert its patents defensively in the event that the licensor chooses to pursue a patent lawsuit against it, or risk losing a patent license that it has relied upon to build and market products and possibly face an injunction. Such a dilemma would not be consistent with our goal of providing a dependable license that can be relied upon to make investment and technology adoption decisions.

A few commentators suggested that if the licensee terminates the license for convenience, it should not have the right to take a new license under a general public patent license offer unless the licensor specifically agrees. This is in order to avoid certain types of strategic behavior intended to avoid paying maintenance fees or other types of annual fees. I agree with this and have made the corresponding change to the license.

'''6. Warranties'''

Some commentators noted the absence of any licensee warranties. An early version of the draft did contain licensee warranties, but other commentators suggested that those warranties (such as compliance with law and applicable regulations) were best dealt with through indemnification, because violation of such warranties should not necessarily lead to license termination provided that the licensee fully carries out its obligations to indemnify. I agreed with this and thus removed licensee warranties.

Other commentators suggested that the licensor should provide warranties that it has licensed all necessary rights or that it is unaware of any infringement. However, opposing commentators noted that such warranties are very unusual, and it is customary for a patent license to assume that the license itself does not give any assurance of the right to practice (i.e., freedom from infringement of dominant patents). Furthermore, issues regarding the possible existence of the licensor’s own dominant or related patents have been discussed above and need not be dealt with through the warranty section (or through breach of warranty remedies, which would create a chilling effect on licensor participation).

'''7. Indemnification'''

Some commentators suggested making the indemnification provision mutual (i.e., provide for an indemnification right for the licensee as well as licensor). However, this is very unusual and goes against industry custom, in which the licensor’s primary “obligation” under a patent license is to refrain from suing the licensee for infringement. Typically, the licensor does not warrant that its rights are valid or that it will take other affirmative duties. Therefore, there is very little basis for the licensor indemnifying a licensee.

Several commentators noted with approval the right of the licensor to take over the defense of any claim (at its own expense) that involves an adjudication of the licensor’s patent rights. Given the importance of these rights, most licensors would not want to leave their defense or settlement in the hands of a non-exclusive licensee.

'''8. Trademark and Attribution'''

One commentator noted that some patent owners would not want their non-exclusive licensees to be marking products with patent markings without their permission. Therefore, this should be made at the option of the licensor, but not automatic. I agreed with this and added a corresponding qualification: “At Licensor’s request”.

One issue that commentators requested clarification about was whether the licensor or the licensee would be preparing the use cases that document the impact of the licensed patents. As discussed above, while there is nothing to prevent both parties from creating and publishing their own use cases, the intention here is require the licensee to provide reasonable data and statistics that the licensor would need in order to compile use cases and statistics that provide empirical evidence for the impact of its licensing strategy. Therefore, this provision contemplates that the licensor will be preparing a use case with data and support from the licensee. Once published, such use cases may be distributed by both parties. However, aside from the distribution of such case studies in unmodified form, neither party may use the trademarks of the other or otherwise imply an endorsement by the other. No general trademark license is implied.

'''9. General'''

A number of commentators suggested that the insurance requirement be made more specific. However, as the size of licensees and the extent, nature, risks, and markets of the possible exploitation of patent rights vary considerably, there is no “one-size fits all” approach to determining the appropriate amount of insurance. Thus, I define it at a “prudent” level so that the above factors can be taken into account.

'''10. Additional Clauses'''

I added this clause in order to anticipate future extensions of the license through CC-supported modular clauses as well as to make it possible to use the core license with unsupported “custom” clauses, when the licensor chooses to do so.

The CC-supported use case involves adding additional clauses in the future that we may discuss with the community and that we are convinced will make the license better or add additional options for which there is community demand. Such clauses could include, for example, date-certain expiration of the Term, options for additional limitations to the license scope, or alternative reporting requirements. Such supported additional clauses would be added after consultation with our board and our community through a public feedback process.

The unsupported use case involves a licensor who wishes to implement a feature that we do not currently support in our standard license. These could include certain “high-risk” clauses such as branding and grant-backs, that a licensor may wish to implement only after careful consultation with its attorneys or other types of clauses that CC chooses not to support.

For example, I have already discussed above why branding and trademark license clauses should be reviewed carefully in light of trademark licensing practices, policies, and franchise law. Due to the complex nature of this analysis, it may be appropriate for some licensors to provide such branding or trademark licenses, while doing so may raise serious problems for other licensors. Creative Commons would not want to implement this as check-the-box option, because it poses a risk about which some licensors may not be aware. On the other hand, a licensor who chooses to draft their own clause and implement it through the Additional Clauses mechanism is more likely to have considered the issue carefully and is prepared to take the risks involved.

Another example of such a clause is a grant back. Several commentators have suggested that we implement some kind of grant back. Some have suggested that we implement a type of “share alike” for patents that would require licensees to grant rights in improvement patents under the same license, whether to the original licensor or to the community as a whole. Prior experiments with such share-alike licensing mechanisms in a community licensing context (or patent pools) have met with decidedly mixed results. Nevertheless, a grant-back is a well-known and accepted practice in traditional patent licenses in order to ensure that the licensor has access to improvements and freedom to operate. However, the use of grant back clauses carries some antitrust risk. The 1995 Federal Antitrust Guidelines for Licensing Intellectual Property recognizes that certain grant-backs can pose antitrust concerns where the licensor has market power. Grant backs are analyzed under a rule of reason standard, and courts have also found some grant backs to lead to antitrust violations (i.e., the use of grant back clauses by licensors having market power to achieve a monopoly) (see, e.g., U.S. vs. Alumina and U.S. vs. General Electric). Compulsory grant back clauses raise antitrust concerns because they may reduce the licensee’s incentive innovate relating to improvements. Thus, grant backs are appropriate for some licensors but no necessarily “safe” for everybody, and they deserve special analysis and review by appropriate antitrust counsel. For this reason, I decline to implement a standard check-the-box grant back option, but I leave open the possibility that a licensor may supply such an obligation through the Additional Clauses mechanism.

Licensees should also be alert whenever there are Additional Clauses that are not supported or endorsed by Creative Commons that such clause may require special scrutiny because they have not been reviewed by Creative Common or subjected to public comment, and licenses which contain unsupported Additional Clauses may not be branded or labeled as standard CC licenses.

CC Public Patent License

2010-08-23T21:16:46Z

Thinh:

'''CC Public Patent License'''
Also see [[Patent License Drafter's Notes]] and [[Patent License Change Log]]

'''How to Use this CC Public Patent License'''

This CC Public Patent License is intended to be used as part of a public license offer to license patent rights. A public license offer provides two main benefits:

a) it is publicly accessible on the Internet: anyone can read the full terms of the offer;
b) it is an “live” offer so that anyone can accept it if they agree to all its terms.

To have these benefits, the offer must be openly published, and it must be capable of being accepted by anyone on a non-discriminatory basis and without additional negotiation. Used in the right context, this type of offer can provide benefits for both licensor and licensee. A licensor can use a public license offer to publicize its willingness to license patent rights on reasonable and non-discriminatory terms, thus attracting innovators and potential licensees who might otherwise not have been either aware that such patent rights were available for license or who might otherwise be unwilling to approach the licensor due to anticipated, significant transaction costs typically associated with negotiating a favorable license. A potential licensee can rely on the public and non-discriminatory availability of this public license offer to make plans and decisions about technology implementation, which in the absence of such offers, would be complicated or impossible.

Patent licenses can be very complicated, particularly when complex commercialization and licensing strategies are involved. So it would be impossible for anyone to write a license that addresses everyone’s needs or fits every scenario. Instead, we developed this Model Patent License Agreement to be simple and easy to understand. It is intended to provide a simple standard model license to make patents available on reasonable and non-discriminatory terms: preferably free of charge and without unnecessary field limitations. If you need to implement a more complex licensing strategy, then this may not be the right tool for you. In any case, please consult your own attorney before making an offer. Creative Commons is not a law firm, so we cannot provide you with advice on whether to use this instrument or how to tailor it to suit your needs or business strategy.

To use this Model Patent License Agreement, you need to supply some basic information, which is found in the License Data Record (see Addendum A). This information should be supplied in a standard electronic format for ease of reference, but you can use other formats if you wish. Some basic information is required in order to make a complete public license offer, while other fields may be optional. If you do not fill out the optional fields, then they will be defined by default provisions in the license. IN MOST CASES, THE DEFAULT OPTION ALLOWS FOR THE MOST PERMISSIVE AND FREE USE BY THE LICENSEE. For example, by default, there are no field of use restrictions, fees, or royalties. You may also add limitations to the offer itself (for example, an expiration date for the offer). In addition, you may specify that the offer is not available to parties with whom you are engaged in patent litigation or parties who are or have been infringing the patents being offered. We do not encourage you to impose other offer limitations beyond this. However, in some circumstances, it may be reasonable to specify that anyone currently engaged in litigation with you that would otherwise give you grounds for terminating the license (see Section 5) may not accept the offer in the first place.

Together, the License Data Record and the CC Public Patent License will be become your public license offer. When such an offer is made available on your Web site, or through clearinghouses like GX, anyone eligible to accept the offer may accept it through a registration and acceptance process. As part of that process, the Licensee will supply the Licensee-specific information needed to complete the License Data Record. This process, and the transaction record, then completes the license agreement.

'''CC PUBLIC PATENT LICENSE'''

The owner of the Licensed Patent Rights, as defined below (the “Licensor”), grants a license on the terms and conditions set forth in this CC Public Patent License (the “Agreement”) to the person or entity accepting this Agreement (the “Licensee”).

'''1. DEFINITIONS'''

“Field of Use” means the fields of use specified in the License Data Record. If not so specified, Field of Use means all fields of use.

“License Data Record” means a written or electronic document that provides the information specified in Addendum A.

“Licensed Patent Rights” means (a) the patents and patent applications listed in the License Data Record, (b) all divisionals, continuations, and foreign counterpart applications claiming priority from any patent or patent application described in (a), (c) those claims of any continuations-in-parts that claim priority exclusively from the patents or patent applications described in (a) and (b); (d) all patents issuing from patent applications included in (a) through (c); and (e) all reissues, reexaminations, renewals, and extensions of any patents included in (a) through (d).

“Licensed Process(es)” means a process the practice of which would infringe, but for the license granted in this Agreement, one or more claims of the Licensed Patent Rights.

“Licensed Product(s)” means a machine, article of manufacture, composition of matter, or other product (a) the manufacture, use, sale, offer for sale, or import of which would infringe, but for the licenses granted in this Agreement, one or more claims of the Licensed Patent Rights, or (b) made or directly obtained by a Licensed Process.

“Necessary Patent Claims” means any patent claim(s), now owned, controlled, or hereafter acquired by Licensor in any patent that Licensor has the right to license, that would be infringed, but for the license granted in Section 2.2, by the making, using, selling, or importation of processes or products that implement the specific features or teachings of Specification, but excluding any claims that are not necessary to implement the Specification as written or that may enable the Specification but are not the principle subject matter of the Specification.

“Specification” means the specification, if any, set forth in the License Data Record by the "Specification" entry.

“Territory” means a geographical or jurisdictional designation, as specified in the License Data Record. If not so specified, Territory means worldwide.

“Term” means the period of time specified in Section 5.

'''2. GRANT OF LICENSE'''

2.1 Subject to the terms and conditions of this Agreement and the License Data Record, Licensor grants to Licensee under the Licensed Patent Rights, in the Territory, and during the Term, a non-exclusive, non-transferable (except as expressly permitted in Section 9) license, without a right to sublicense, to make, use, sell, offer for sale, and import Licensed Products and to practice Licensed Processes, in each case, in the Field of Use.

2.2 If the License Data Record contains a Specification, then subject to the terms and conditions of this Agreement and the License Data Record, Licensor grants to Licensee under the Necessary Patent Claims, in the Territory, and during the Term, a non-exclusive, non-transferable (except as expressly permitted in Section 9) license, without a right to sublicense, to make, use, sell, offer for sale, and import products that implement the Specification and to practice processes that implement the Specification, in each case, in the Field of Use.

2.3 The above licenses include the right to have made, except as otherwise specified by the License Data Record.

2.4 The exclusive rights referenced above (such as make, sell, and use) shall also be interpreted to include substantially similar exclusive patent rights (such as disposal and offer to dispose) in other countries, when applicable.

'''3. FEES AND OTHER CONSIDERATION'''

Fees, royalties, or other consideration, if any, shall be specified in the “License Fees and Royalties” section of License Data Record. If none are specified, then no payment is required under this Agreement.

'''4. REPORTING'''

Licensee shall provide quarterly reports to Licensor, along with any required payments, in sufficient detail to verify the calculation of royalties owed, including without limitation, gross receipts from the use, sale, or other disposition of Licensed Products and/or from the practice of a Licensed Process, deductions taken for calculating revenues, and the total royalty due. If no royalties are due, then the report shall so specify.

In addition, then Licensee shall instead provide such reports as may be reasonably requested by Licensor to perform the analysis and activities described below.

Licensor may use the information provided by Licensee to analyze and publish metrics and impact statistics related to the use of the Licensed Patent Rights and have others do so, as long as such information is used only in aggregated and anonymous form. Licensor may also use or disclose the information to enforce this Agreement, and/or to comply with a court order, or otherwise as required by law.

'''5. TERM'''

Unless otherwise specified, the Term of this Agreement commences on its execution and ends upon the expiration, abandonment, or final invalidity of all claims within the Licensed Patent Rights, unless earlier terminated as permitted below.

Licensor may terminate this Agreement in the event of a material breach of this Agreement that is not cured within thirty (30) days after Licensor provides written notice to Licensee specifying such breach.

To the extent permitted by applicable law, Licensor may terminate this Agreement immediately in the event Licensee becomes insolvent, files for bankruptcy protection, makes an assignment for the benefit of creditors, or becomes the subject of involuntary bankruptcy proceedings. Licensee shall immediately notify Licensor upon the occurrence of one of these conditions.

Licensor may terminate this Agreement upon written notice to Licensee in the event that Licensee asserts a claim of patent infringement against Licensor or any third party with respect to products or services of Licensor, unless (a) such claim is first asserted after Licensor has asserted a claim of patent infringement against Licensee or any third party with respect to products or services of Licensee, or (b) Licensee fully withdraws such claim within ten (10) days after being notified by Licensor. For purposes of this paragraph, “Licensor” and “Licensee” shall also include their respective affiliates.

Licensee may terminate this Agreement by providing Licensor with at least thirty (30) days prior written notice, provided that if Licensee terminates this Agreement, it shall not be eligible to reinstate this license or accept any other general license offer with respect to the subject matter of this Agreement, unless the Licensor specifically agrees otherwise in writing.
Upon any termination of this Agreement, Licensee shall provide Licensor with a final royalty report within thirty (30) days after termination, along with full payment of all amounts due. The following sections shall also survive termination of this Agreement: 6, 7, 8, 9, and 10.

'''6. WARRANTIES'''

Licensor warrants that it has the right and authority to grant the rights and licenses granted in this Agreement.

Licensor disclaims all other warranties, representations, and conditions, whether express, implied, or statutory, including, but not limited to, the warranties of merchantability, fitness for a particular purpose, or non-infringement.

Without limiting the generality of the above disclaimer, Licensor makes no representation or warranties that: a) it will prosecute or continue to prosecute, maintain, or defend any patent or patent application, b) it will bring an infringement suit, assert any claim against third parties accused of infringement, or otherwise enforce any patent or patent application, c) it will join as a party to any suit or legal action, d) it will provide Licensee with know-how or assistance necessary or useful to practice the Licensed Patent Rights, e) the Licensed Patent Rights are valid or enforceable, or f) the Licensed Products or Licensed Processes may be exploited or practiced without infringing third party patents.

'''7. INDEMNIFICATION'''

Licensee shall indemnify and hold Licensor, and its officers, directors, employees, representatives, agents, and affiliates harmless from any and all damages, liabilities, costs, and expenses (including reasonable attorneys’ fees) arising out of or caused by Licensee’s practice or exploitation of the license granted by this Agreement or by the sale, use, or exploitation of Licensed Products or Licensed Processes by or under the authority of Licensee.

Licensor shall notify Licensee promptly of any claim of which Licensor is aware and for which Licensor seeks indemnification. Licensee shall have the right to control the defense of such claims, except to the extent that the scope or validity of the Licensed Patent Rights are at issue, in which case Licensor may assume the sole control and defense of such claims at its own expense.

'''8. TRADEMARKS AND ATTRIBUTION'''

At Licensor’s request, Licensee agrees to mark Licensed Products and their packaging with patent markings as required by applicable law to preserve Licensor’s rights and otherwise enforce the Licensed Patents.

At Licensor’s request, Licensee shall reasonably cooperate with Licensor and provide such information as may be necessary for Licensor to prepare use case studies that document Licensee’s use of the Licensed Patent Rights and related usage or impact metrics. Each party may copy, distribute, and publish such use case studies, including by means of its Web sites, and authorize others to do so, to demonstrate the uses and impact of the technology.

Except solely as permitted above, neither party may use the other’s trademarks, service marks, trade names, company names, or logos (“Marks”) to offer, market, sell, or otherwise endorse any product or service or to engage in any other trademark usage, unless with the prior written authorization of the owner. Any uses of a party’s Marks shall inure solely to the benefit of that party, along with all goodwill associated therewith.

'''9. GENERAL PROVISIONS'''

Notices to the parties shall be provided at the address set forth in the License Data Record, unless a party provides written notice to the other party of a change of address. Notices may be provided by personal delivery, express delivery service, or registered mail. Notices shall be effective on the date received.

Nothing in this Agreement constitutes the parties as partners, joint venturers, principal and agent, or fiduciaries of each other.

A delay or failure in enforcing a right or obligation under this Agreement shall not be construed as an implied waiver of that right or obligation or of any other provision or breach under this Agreement. A waiver under this Agreement is only effective if made in writing and signed by the party granting the waiver.

An amendment or modification of this Agreement is effective only if made in writing and signed by the duly authorized representatives of the parties.
This Agreement constitutes the entire agreement between the parties as to the subject matter herein and supersedes all prior or contemporaneous negotiations, agreements, representations, memorandums, and understandings.

If any provision of this Agreement is deemed to be invalid or unenforceable, then that provision, to the extent unenforceable, is severable and the remainder of this Agreement shall continue in full force and effect.

Licensee may not assign any of its rights under this Agreement, delegate any of its obligations under this Agreement, or otherwise transfer this Agreement, without the prior written consent of Licensor, and any attempted assignment, transfer, or delegation shall be voidable by Licensor. Any change of control of Licensee shall be deemed an attempted transfer of this Agreement. Licensor may assign this Agreement in connection with a sale, merger, or transfer of the assets to which this Agreement relates, provided that the assignee assumes all rights and obligations under this Agreement.

Licensee agrees to maintain insurance in amounts prudent for Licensee’s operations and adequate to discharge Licensee’s obligations under Section 7.

This Agreement is governed by and interpreted in accordance with the laws of the jurisdiction set forth in the License Data Record, if any. The parties agree that the proper jurisdiction and venue for any disputes arising out of this Agreement shall be in the courts of the venue specified in the License Data Record, if any. If none are specified, then jurisdiction and venue shall be deemed to be in the relevant jurisdiction for Licensor’s address, as stated in the License Data Record.

No rights or forbearances are granted, or may arise (whether through implication, estoppel, exhaustion or otherwise) other than those expressly granted in this Agreement.

EXCEPT FOR THE OBLIGATION TO RENDER CONSIDERATION (IF ANY) IN SECTION 3, THE INDEMNIFICATION OBLIGATIONS IN SECTION 7, AND INFRINGEMENT OF ANY TRADEMARK OR INTELLECTUAL PROPERTY RIGHT, IN NO EVENT WILL EITHER PARTY HAVE ANY LIABILITY OF ANY KIND WHATSOEVER TO THE OTHER ARISING OUT OF THIS AGREEMENT, INCLUDING BUT NOT LIMITED TO, FOR INDIRECT, INCIDENTAL, CONSEQUENTIAL OR SPECIAL DAMAGES, EVEN IF ADVISED OF THE POSSIBILITY OF SUCH DAMAGES.

'''10. ADDITIONAL CLAUSES'''

Additional Clauses (if any) contained in the Licensed Data Record are hereby incorporated into this Agreement by reference. In the event of any conflict between the terms of this Agreement and the Additional Clauses, the terms of the Additional Clauses shall prevail.

'''Addendum A'''

The purpose of this Addendum is to provide guidelines for a License Data Record, which may be either in paper or electronic form. This License Data Record is unique to each transaction and must specify a minimum information set in order to give effect to the Patent License Agreement.

To constitute an agreement that incorporates the terms of the Patent License Agreement, a License Data Record must:

1) reference this Agreement by linking to the URL of the Patent License Agreement deed or legal code, attaching a copy of it, referencing it by name, or by any other means that uniquely and unambiguously identifies it; AND

2) provide the following information:

a. Name of Licensor: the name of the person or entities offering this license,

b. Licensor Contact Information: address, contact person, phone number, fax, and/or email,

c. Name of Licensee: the name of the person or entities accepting this license,

d. Licensee Contact Information: address, contact person, phone number, fax, and/or email,

e. Licensed Patent Rights: a list of patents and patent applications to be licensed,

OR

Specification: a written specification of the invention or technology to be licensed.

f. License Fees, Royalties, and other consideration (optional): a description of any required fees, royalties, or other consideration, including without limitation any requirements relating to improvements or innovations,

g. Field of Use (optional): a description of any scope of use limitations associated with the license,

h. “Have Made” Limitations (optional): any limitations to the license to “have made,”

i. Choice of Law (optional): jurisdiction for choice of law,

j. Choice of Venue (optional) jurisdiction for legal venue,

k. Territory (optional): geographic limitations of the license,

l. Offer Limitations (optional): any limitations associated with the offer, and

m. Additional Clauses

'''Sample License Data Record'''

This License Data Record references and incorporates the GX Model Patent License Agreement (located at URL: _________)

Licensor Name:
Licensor Contact Address:

_____________________________

_____________________________

_____________________________

Phone: _______________________

Fax: _________________________

Email: ________________________

Licensee Name:

Licensee Contact Address:

_____________________________

_____________________________

_____________________________

Phone: _______________________

Fax: _________________________

Email: _____________________________

Licensed Patents Rights:

Patent No. ____________________________

Patent Application No.__________________ …

OR

Specification (attached a detailed specification or provide a URL):

License Fees & Royalties (optional):

Field of Use (optional):

Have Made Limitations (optional):

Choice of Law (optional) City_____________, State_____________

Choice of Venue (optional) City_____________, State_____________

Territory (Optional)

Offer Limitations (Optional)

Additional Clauses (Optional)

CC Public Patent License

2010-08-23T21:15:27Z

Thinh:

'''CC Public Patent License'''
Also see [[Patent License Drafter's Notes]] and [[Patent License Change Log]]

'''How to Use this CC Public Patent License'''

This CC Public Patent License is intended to be used as part of a public license offer to license patent rights. A public license offer provides two main benefits:

a) it is publicly accessible on the Internet: anyone can read the full terms of the offer;
b) it is an “live” offer so that anyone can accept it if they agree to all its terms.

To have these benefits, the offer must be openly published, and it must be capable of being accepted by anyone on a non-discriminatory basis and without additional negotiation. Used in the right context, this type of offer can provide benefits for both licensor and licensee. A licensor can use a public license offer to publicize its willingness to license patent rights on reasonable and non-discriminatory terms, thus attracting innovators and potential licensees who might otherwise not have been either aware that such patent rights were available for license or who might otherwise be unwilling to approach the licensor due to anticipated, significant transaction costs typically associated with negotiating a favorable license. A potential licensee can rely on the public and non-discriminatory availability of this public license offer to make plans and decisions about technology implementation, which in the absence of such offers, would be complicated or impossible.

Patent licenses can be very complicated, particularly when complex commercialization and licensing strategies are involved. So it would be impossible for anyone to write a license that addresses everyone’s needs or fits every scenario. Instead, we developed this Model Patent License Agreement to be simple and easy to understand. It is intended to provide a simple standard model license to make patents available on reasonable and non-discriminatory terms: preferably free of charge and without unnecessary field limitations. If you need to implement a more complex licensing strategy, then this may not be the right tool for you. In any case, please consult your own attorney before making an offer. Creative Commons is not a law firm, so we cannot provide you with advice on whether to use this instrument or how to tailor it to suit your needs or business strategy.

To use this Model Patent License Agreement, you need to supply some basic information, which is found in the License Data Record (see Addendum A). This information should be supplied in a standard electronic format for ease of reference, but you can use other formats if you wish. Some basic information is required in order to make a complete public license offer, while other fields may be optional. If you do not fill out the optional fields, then they will be defined by default provisions in the license. IN MOST CASES, THE DEFAULT OPTION ALLOWS FOR THE MOST PERMISSIVE AND FREE USE BY THE LICENSEE. For example, by default, there are no field of use restrictions, fees, or royalties. You may also add limitations to the offer itself (for example, an expiration date for the offer). In addition, you may specify that the offer is not available to parties with whom you are engaged in patent litigation or parties who are or have been infringing the patents being offered. We do not encourage you to impose other offer limitations beyond this. However, in some circumstances, it may be reasonable to specify that anyone currently engaged in litigation with you that would otherwise give you grounds for terminating the license (see Section 5) may not accept the offer in the first place.

Together, the License Data Record and the CC Public Patent License will be become your public license offer. When such an offer is made available on your Web site, or through clearinghouses like GX, anyone eligible to accept the offer may accept it through a registration and acceptance process. As part of that process, the Licensee will supply the Licensee-specific information needed to complete the License Data Record. This process, and the transaction record, then completes the license agreement.

'''CC PUBLIC PATENT LICENSE'''

The owner of the Licensed Patent Rights, as defined below (the “Licensor”), grants a license on the terms and conditions set forth in this CC Public Patent License (the “Agreement”) to the person or entity accepting this Agreement (the “Licensee”).

'''1. DEFINITIONS'''

“Field of Use” means the fields of use specified in the License Data Record. If not so specified, Field of Use means all fields of use.

“License Data Record” means a written or electronic document that provides the information specified in Addendum A.

“Licensed Patent Rights” means (a) the patents and patent applications listed in the License Data Record, (b) all divisionals, continuations, and foreign counterpart applications claiming priority from any patent or patent application described in (a), (c) those claims of any continuations-in-parts that claim priority exclusively from the patents or patent applications described in (a) and (b); (d) all patents issuing from patent applications included in (a) through (c); and (e) all reissues, reexaminations, renewals, and extensions of any patents included in (a) through (d).

“Licensed Process(es)” means a process the practice of which would infringe, but for the license granted in this Agreement, one or more claims of the Licensed Patent Rights.

“Licensed Product(s)” means a machine, article of manufacture, composition of matter, or other product (a) the manufacture, use, sale, offer for sale, or import of which would infringe, but for the licenses granted in this Agreement, one or more claims of the Licensed Patent Rights, or (b) made or directly obtained by a Licensed Process.

“Necessary Patent Claims” means any patent claim(s), now owned, controlled, or hereafter acquired by Licensor in any patent that Licensor has the right to license, that would be infringed, but for the license granted in Section 2.2, by the making, using, selling, or importation of processes or products that implement the specific features or teachings of Specification, but excluding any claims that are not necessary to implement the Specification as written or that may enable the Specification but are not the principle subject matter of the Specification.

“Specification” means the specification, if any, set forth in the License Data Record by the "Specification" entry.

“Territory” means a geographical or jurisdictional designation, as specified in the License Data Record. If not so specified, Territory means worldwide.

“Term” means the period of time specified in Section 5.

'''2. GRANT OF LICENSE'''

2.1 Subject to the terms and conditions of this Agreement and the License Data Record, Licensor grants to Licensee under the Licensed Patent Rights, in the Territory, and during the Term, a non-exclusive, non-transferable (except as expressly permitted in Section 9) license, without a right to sublicense, to make, use, sell, offer for sale, and import Licensed Products and to practice Licensed Processes, in each case, in the Field of Use.

2.2 If the License Data Record contains a Specification, then subject to the terms and conditions of this Agreement and the License Data Record, Licensor grants to Licensee under the Necessary Patent Claims, in the Territory, and during the Term, a non-exclusive, non-transferable (except as expressly permitted in Section 9) license, without a right to sublicense, to make, use, sell, offer for sale, and import products that implement the Specification and to practice processes that implement the Specification, in each case, in the Field of Use.

2.3 The above licenses include the right to have made, except as otherwise specified by the License Data Record.

2.4 The exclusive rights referenced above (such as make, sell, and use) shall also be interpreted to include substantially similar exclusive patent rights (such as disposal and offer to dispose) in other countries, when applicable.

'''3. FEES AND OTHER CONSIDERATION'''

Fees, royalties, or other consideration, if any, shall be specified in the “License Fees and Royalties” section of License Data Record. If none are specified, then no payment is required under this Agreement.

'''4. REPORTING'''

Licensee shall provide quarterly reports to Licensor, along with any required payments, in sufficient detail to verify the calculation of royalties owed, including without limitation, gross receipts from the use, sale, or other disposition of Licensed Products and/or from the practice of a Licensed Process, deductions taken for calculating revenues, and the total royalty due. If no royalties are due, then the report shall so specify.
In addition, then Licensee shall instead provide such reports as may be reasonably requested by Licensor to perform the analysis and activities described below.

Licensor may use the information provided by Licensee to analyze and publish metrics and impact statistics related to the use of the Licensed Patent Rights and have others do so, as long as such information is used only in aggregated and anonymous form. Licensor may also use or disclose the information to enforce this Agreement, and/or to comply with a court order, or otherwise as required by law.

'''5. TERM'''

Unless otherwise specified, the Term of this Agreement commences on its execution and ends upon the expiration, abandonment, or final invalidity of all claims within the Licensed Patent Rights, unless earlier terminated as permitted below.

Licensor may terminate this Agreement in the event of a material breach of this Agreement that is not cured within thirty (30) days after Licensor provides written notice to Licensee specifying such breach.

To the extent permitted by applicable law, Licensor may terminate this Agreement immediately in the event Licensee becomes insolvent, files for bankruptcy protection, makes an assignment for the benefit of creditors, or becomes the subject of involuntary bankruptcy proceedings. Licensee shall immediately notify Licensor upon the occurrence of one of these conditions.

Licensor may terminate this Agreement upon written notice to Licensee in the event that Licensee asserts a claim of patent infringement against Licensor or any third party with respect to products or services of Licensor, unless (a) such claim is first asserted after Licensor has asserted a claim of patent infringement against Licensee or any third party with respect to products or services of Licensee, or (b) Licensee fully withdraws such claim within ten (10) days after being notified by Licensor. For purposes of this paragraph, “Licensor” and “Licensee” shall also include their respective affiliates.

Licensee may terminate this Agreement by providing Licensor with at least thirty (30) days prior written notice, provided that if Licensee terminates this Agreement, it shall not be eligible to reinstate this license or accept any other general license offer with respect to the subject matter of this Agreement, unless the Licensor specifically agrees otherwise in writing.
Upon any termination of this Agreement, Licensee shall provide Licensor with a final royalty report within thirty (30) days after termination, along with full payment of all amounts due. The following sections shall also survive termination of this Agreement: 6, 7, 8, 9, and 10.

'''6. WARRANTIES'''

Licensor warrants that it has the right and authority to grant the rights and licenses granted in this Agreement.

Licensor disclaims all other warranties, representations, and conditions, whether express, implied, or statutory, including, but not limited to, the warranties of merchantability, fitness for a particular purpose, or non-infringement.

Without limiting the generality of the above disclaimer, Licensor makes no representation or warranties that: a) it will prosecute or continue to prosecute, maintain, or defend any patent or patent application, b) it will bring an infringement suit, assert any claim against third parties accused of infringement, or otherwise enforce any patent or patent application, c) it will join as a party to any suit or legal action, d) it will provide Licensee with know-how or assistance necessary or useful to practice the Licensed Patent Rights, e) the Licensed Patent Rights are valid or enforceable, or f) the Licensed Products or Licensed Processes may be exploited or practiced without infringing third party patents.

'''7. INDEMNIFICATION'''

Licensee shall indemnify and hold Licensor, and its officers, directors, employees, representatives, agents, and affiliates harmless from any and all damages, liabilities, costs, and expenses (including reasonable attorneys’ fees) arising out of or caused by Licensee’s practice or exploitation of the license granted by this Agreement or by the sale, use, or exploitation of Licensed Products or Licensed Processes by or under the authority of Licensee.

Licensor shall notify Licensee promptly of any claim of which Licensor is aware and for which Licensor seeks indemnification. Licensee shall have the right to control the defense of such claims, except to the extent that the scope or validity of the Licensed Patent Rights are at issue, in which case Licensor may assume the sole control and defense of such claims at its own expense.

'''8. TRADEMARKS AND ATTRIBUTION'''

At Licensor’s request, Licensee agrees to mark Licensed Products and their packaging with patent markings as required by applicable law to preserve Licensor’s rights and otherwise enforce the Licensed Patents.

At Licensor’s request, Licensee shall reasonably cooperate with Licensor and provide such information as may be necessary for Licensor to prepare use case studies that document Licensee’s use of the Licensed Patent Rights and related usage or impact metrics. Each party may copy, distribute, and publish such use case studies, including by means of its Web sites, and authorize others to do so, to demonstrate the uses and impact of the technology.

Except solely as permitted above, neither party may use the other’s trademarks, service marks, trade names, company names, or logos (“Marks”) to offer, market, sell, or otherwise endorse any product or service or to engage in any other trademark usage, unless with the prior written authorization of the owner. Any uses of a party’s Marks shall inure solely to the benefit of that party, along with all goodwill associated therewith.

'''9. GENERAL PROVISIONS'''

Notices to the parties shall be provided at the address set forth in the License Data Record, unless a party provides written notice to the other party of a change of address. Notices may be provided by personal delivery, express delivery service, or registered mail. Notices shall be effective on the date received.

Nothing in this Agreement constitutes the parties as partners, joint venturers, principal and agent, or fiduciaries of each other.

A delay or failure in enforcing a right or obligation under this Agreement shall not be construed as an implied waiver of that right or obligation or of any other provision or breach under this Agreement. A waiver under this Agreement is only effective if made in writing and signed by the party granting the waiver.

An amendment or modification of this Agreement is effective only if made in writing and signed by the duly authorized representatives of the parties.
This Agreement constitutes the entire agreement between the parties as to the subject matter herein and supersedes all prior or contemporaneous negotiations, agreements, representations, memorandums, and understandings.

If any provision of this Agreement is deemed to be invalid or unenforceable, then that provision, to the extent unenforceable, is severable and the remainder of this Agreement shall continue in full force and effect.

Licensee may not assign any of its rights under this Agreement, delegate any of its obligations under this Agreement, or otherwise transfer this Agreement, without the prior written consent of Licensor, and any attempted assignment, transfer, or delegation shall be voidable by Licensor. Any change of control of Licensee shall be deemed an attempted transfer of this Agreement. Licensor may assign this Agreement in connection with a sale, merger, or transfer of the assets to which this Agreement relates, provided that the assignee assumes all rights and obligations under this Agreement.

Licensee agrees to maintain insurance in amounts prudent for Licensee’s operations and adequate to discharge Licensee’s obligations under Section 7.

This Agreement is governed by and interpreted in accordance with the laws of the jurisdiction set forth in the License Data Record, if any. The parties agree that the proper jurisdiction and venue for any disputes arising out of this Agreement shall be in the courts of the venue specified in the License Data Record, if any. If none are specified, then jurisdiction and venue shall be deemed to be in the relevant jurisdiction for Licensor’s address, as stated in the License Data Record.

No rights or forbearances are granted, or may arise (whether through implication, estoppel, exhaustion or otherwise) other than those expressly granted in this Agreement.

EXCEPT FOR THE OBLIGATION TO RENDER CONSIDERATION (IF ANY) IN SECTION 3, THE INDEMNIFICATION OBLIGATIONS IN SECTION 7, AND INFRINGEMENT OF ANY TRADEMARK OR INTELLECTUAL PROPERTY RIGHT, IN NO EVENT WILL EITHER PARTY HAVE ANY LIABILITY OF ANY KIND WHATSOEVER TO THE OTHER ARISING OUT OF THIS AGREEMENT, INCLUDING BUT NOT LIMITED TO, FOR INDIRECT, INCIDENTAL, CONSEQUENTIAL OR SPECIAL DAMAGES, EVEN IF ADVISED OF THE POSSIBILITY OF SUCH DAMAGES.

'''10. ADDITIONAL CLAUSES'''

Additional Clauses (if any) contained in the Licensed Data Record are hereby incorporated into this Agreement by reference. In the event of any conflict between the terms of this Agreement and the Additional Clauses, the terms of the Additional Clauses shall prevail.

'''Addendum A'''

The purpose of this Addendum is to provide guidelines for a License Data Record, which may be either in paper or electronic form. This License Data Record is unique to each transaction and must specify a minimum information set in order to give effect to the Patent License Agreement.

To constitute an agreement that incorporates the terms of the Patent License Agreement, a License Data Record must:

1) reference this Agreement by linking to the URL of the Patent License Agreement deed or legal code, attaching a copy of it, referencing it by name, or by any other means that uniquely and unambiguously identifies it; AND

2) provide the following information:

a. Name of Licensor: the name of the person or entities offering this license,

b. Licensor Contact Information: address, contact person, phone number, fax, and/or email,

c. Name of Licensee: the name of the person or entities accepting this license,

d. Licensee Contact Information: address, contact person, phone number, fax, and/or email,

e. Licensed Patent Rights: a list of patents and patent applications to be licensed,

OR

Specification: a written specification of the invention or technology to be licensed.

f. License Fees, Royalties, and other consideration (optional): a description of any required fees, royalties, or other consideration, including without limitation any requirements relating to improvements or innovations,

g. Field of Use (optional): a description of any scope of use limitations associated with the license,

h. “Have Made” Limitations (optional): any limitations to the license to “have made,”

i. Choice of Law (optional): jurisdiction for choice of law,

j. Choice of Venue (optional) jurisdiction for legal venue,

k. Territory (optional): geographic limitations of the license,

l. Offer Limitations (optional): any limitations associated with the offer, and

m. Additional Clauses

'''Sample License Data Record'''

This License Data Record references and incorporates the GX Model Patent License Agreement (located at URL: _________)

Licensor Name:
Licensor Contact Address:

_____________________________

_____________________________

_____________________________

Phone: _______________________

Fax: _________________________

Email: ________________________

Licensee Name:

Licensee Contact Address:

_____________________________

_____________________________

_____________________________

Phone: _______________________

Fax: _________________________

Email: _____________________________

Licensed Patents Rights:

Patent No. ____________________________

Patent Application No.__________________ …

OR

Specification (attached a detailed specification or provide a URL):

License Fees & Royalties (optional):

Field of Use (optional):

Have Made Limitations (optional):

Choice of Law (optional) City_____________, State_____________

Choice of Venue (optional) City_____________, State_____________

Territory (Optional)

Offer Limitations (Optional)

Additional Clauses (Optional)

Patent License Drafter's Notes

2010-08-23T21:13:36Z

Thinh:

'''Drafter’s Notes'''

See also [[Model Patent License]] which is superseded by [[CC Public Patent License]]

'''Purpose:'''

These Drafter’s Notes (“Notes”) capture many of the comments that were received during the Public Comment Period, explain how those comments are reflected in the final Public Patent License (“License”), and describe how other policy considerations shaped the drafting of the License. You may refer to these Notes to help understand our views of the issues presented by the comments and how I attempted to resolve those issues. These Notes are not intended to be part of the License and may not be used to change or add additional terms to the License, although they may be helpful in interpretation of the License when there is ambiguity. These Notes are not intended to provide legal advice or substitute for legal counsel. However, you may wish to consider them, with the aid of your legal counsel, prior to using the License.

The commentary is arranged in an order corresponding to the sections that appear in the License. In order to protect the anonymity of commentators, I do not identify the source of particular comments, and in some cases, multiple comments are summarized together for ease of reference. Some comments that resulted in minor or clarifying changes to the draft of the License during the Public Comment Period are not discussed in detail here, but are reflected in the Change Log. You do not have to review the Change Log in order to review the final License, but if you have been following the drafting process or if you have already reviewed an earlier version of the License, you may wish to refer to the Change Log for a quick summary of changes made leading to the final draft.

'''Title'''

A number of commentators suggested changing the title of the License. One commentator expressed the concern that the name “Model Patent License” implies that the License has broader applicability or acceptance than is warranted or that it is more specifically suitable than other patent licenses that already exist. This was not our intention. The current working title is “CC Public Patent License.”

'''Preamble'''

Some commentators expressed concern with the statement in the preamble that this License is intended for users who are maintaining their patents primarily for defensive purposes. They point out that in some cases, a public offer to license a patent may reduce the effectiveness or deterrent effect of such defensive use by establishing a presumptive measure (cap) on economic damages that may be proven in the event of infringement. They suggest that high-value or core business patents, even if held defensively, should be reserved. I think it is best that you consult with your attorney on the most effective patent licensing and portfolio management strategy for your unique situation, and I do not intend to recommend a particular patent licensing approach for every situation. Accordingly, I have deleted the reference to defensive use of patents.

Some commentators also suggested that our comment regarding the “offer conditions” are too narrow. For example, they suggested that an offeror could specify that those parties who are currently in patent litigation with the offeror or who have infringed the offeror’s patents be excluded from the offer. Otherwise, it is pointed out, an infringer could wait until its infringement is discovered and then take a license, with the result that it would only be liable for past infringement but it could avoid an injunction against future infringement by accepting a license. I agree with this and so added an additional sentence that the offer may be so limited.

'''Definitions'''

One of the issues that arose early in the drafting process was what type of model to use for identifying those patents that are being licensed. The simplest model is enumeration—a list of patents that are being offered for license. However, one concern expressed by several commentators was that this would be too narrow: there might be daughter applications such as continuations, continuations-in-part, and divisionals that issue later and that may not be readily discoverable by a licensee through due diligence. For this reason, we added continuations, continuations-in-part, divisionals, foreign counterparts, etc. to the definition of “Licensed Patent Rights” to supplement the enumeration approach. Nevertheless, a related issue arose with respect to so-called “grandparent” applications or prior dominant patents that may block the use of the licensed patents. For example, a licensor may license an improvement patent without including the dominant patent required to practice that improvement patent. In that case, an unwary licensee may wrongly conclude that it is obtaining all rights needed from the licensor to practice the invention, only to be confronted with an infringement claim from the licensor later for a dominant patent. Some courts have addressed the inequitable effects of this type of problem by finding implied licenses. However, for drafting purposes, I did not want to rely on implied license theories.

One suggestion was to include grandparent applications, just like daughter applications. However, this has some interpretive problems, insofar as the claims of a grandparent application cannot be directly related to the claims of daughter applications using clear rules such as priority, because the priority rules allow only the claims of a daughter application to claim back through the grandparent application’s specifications, not its own claims. This imperfect mapping would produce ambiguities in terms of what is being licensed, and I want to avoid any ambiguity that would result in future undesirable surprises for licensees and licensors. The virtues of clarity and predictability argue against such an approach.

Other commentators suggested that we should not overstate the problem about grandparent applications or dominant patents because unlike daughter applications, which may be yet unpublished, grandparent applications and dominant patents are discoverable by the licensee with a modest degree of due diligence, since they will either have been published or would be referenced by the licensed patents. While this is true of transactions between sophisticated licensors and licensees, there may be other situations where the licensee lacks the sophistication or resources to conduct adequate patent due diligence.

Therefore, a second alternative licensing approach is needed for those situations where the licensor wants to assure the licensee that it has licensed all claims necessary to practice (and that are owned or controlled by the licensor). Under this approach, the licensor designates a “Specification” that it wishes to license—this could be a technical disclosure, a patent specification, or a technical standard, for example—and that all claims covering that specification will be licensed as “Necessary Patent Claims”. To prevent “scope creep” caused by an overly expansive interpretation of the Specification, a clarification is made that only claims that are taught by the Specification are licensed and not merely enabling claims that are not the principle subject matter of the specification. (For example, a purely software specification does not include computer hardware claims merely because a computer is eventually needed to run the software. However, if a Specification has both specific hardware and software teachings, then both types of claims would be within scope).

With these two alternative ways of licensing patents, a licensor may either choose to be very specific with the patents it wishes to license by taking the enumeration approach (in which case, the licensee should be warned to conduct thorough patent diligence prior to accepting the license or practicing the invention), or it may seek to assure the licensee that it has indeed licensed all necessary claims by taking the “Specification” route. Thus, these two approaches should be seen as representing two ways of allocating the due diligence burden between the licensor and licensee.

Several commentators suggested that we added more specific branding requirements (similar to attribution requirements) for licensed products or services. Other commentators argued that it is unusual for licensees to agree to branding requirements as part of a patent license. Yet others argued that licensors would not necessarily want to impose branding requirements (which would involve granting a trademark license) unless it has some assurance of quality control. A trademark license without adequate policing (sometimes called a “naked license”) can result in loss of a trademark right. Furthermore, these commentators point out that trademark licensing accompanied by certain forms of technical guidance or assistance can result in a finding of a “franchise” in some states. Franchises are generally trademark licenses that are accompanied by consideration and a business plan (here, the patent license itself and associated know-how may supply the “business plan,” which is sometimes interpreted broadly). Franchise rules are complex, may require state-by-state registration formalities, and carry penalties including rescission and treble damages for failure to follow formalities. Due to these considerations, I consider a “branding” clause to be a “high risk” clause, and therefore I will leave open the possibility of implementing it through the “Additional Clauses” (see below), rather than providing a standard default.

'''Grant of License'''

2.1 One commentator suggested adding the phrase “under the Licensed Patent Rights” to make clear that this license is restricted in scope to the enumerated patents. This clarification is useful, so I made the change.

Several commentators suggested that the original paragraph was awkwardly worded and suggested a re-arrangement of clauses to make it flow better. I agreed and made the change. In particular, the phrase “under the Licensed Patent Rights, in the Territory, and during the Term” should be interpreted to apply to the whole paragraph.

2.2 This parallel license grant was added in order to implement the alternative, “Specification” mode of licensing discussed above. While it is technically possible to include both types of license grants (the enumeration approach of 2.1 and the specification approach of 2.2), and they would operate a two separate types of licenses that do not limit each other, for simplicity and ease of reference, it is recommended that the licensor pick one or the other. This can be accomplished simply by choosing whether to fill out the Licensed Patent Rights list or the Specification in the License Data Record (but not both). If the licensor fills both fields, then it will be granting two separate licenses, but the enumerated list does not operate as an additional limitation on the claims licensed under the Specification.

2.3 One commentator suggested that the ability to limit the “have made” right be extended to each of the other rights under patent. However, due to the unusual and complex nature of such limitations, I decided to leave this sentence unchanged and recommend that such additional limitations, if required, be implemented via the “Additional Clauses” mechanism.

2.4 One commentator suggested that the treatment of exclusive patent rights is centered on U.S. law. For example, under U.K. law, the terms “disposal” and “offer to dispose of” are used in place of “sale” and “offer for sale.” However, rather than extend the list of exclusive rights terminology to include variations from every country, I have opted to make the clarification that these rights include their foreign equivalents in order to generalize to all jurisdictions.

'''4. Reports'''

A number of commentators questioned why any reports would be necessary for non-royalty licenses. Other commentators expressed concerns that only low-value or insignificant patents would be offered under this license, limiting its impact. In order to provide empirical evidence for impact, licensors are encouraged to work with licensees to collect statistics and empirical measures of impact so that the impact of offering public patent licenses through clearinghouses can be measured and reported. In order to accomplish this goal, there must be an obligation on licensees to report impact statistics back to the licensor, and this section provides a mechanism to do that.

Some commentators expressed concern that the data reported by the licensee may contain confidential business information or plans. This section contemplates that only publicly available information will be reported by the licensor as impact statistics, or if confidential information is involved, that the licensor would work with the licensee to remove any confidential information prior to publishing any statistics, thus reporting only anonymous or aggregated data that does not identify the licensee if possible. The level of aggregation or de-identification will depend on the specific circumstances and the sensitivity of the data provided. Thus, licensees and licensors may wish to enter into supplementary confidentiality agreements when warranted regarding treatment of sensitive information. In any event, this section should be interpreted as requiring the licensee to provide at least publicly available data and providing the licensor with reasonable cooperation in documenting public or social impact.

Some commentators asked whether the licensee or the licensor will create use case studies to highlight the impact of patent licensing. Both licensees and licensors may publish such studies. However, at a minimum, it is contemplated that the licensee will cooperate with the licensor so that the licensor may publish such impact studies, if the licensor so chooses. Nothing prevents both parties from independently publishing their own use cases and studies. However, the parties should keep in mind their obligations not to imply endorsement or make other use of the other party’s trademarks under Section 8.

'''5. Term'''

A number of commentators suggested that the Term of the agreement be made flexible in order to accommodate expiration of the license before the expiration of the patents themselves. Other commentators, however, expressed the concern that this could cause a trap for the unwary, causing some licensees to rely on a license that has a date certain expiration without taking this into account. I think that this concern would be lessened if the fact that the license expires before the patents is specifically called out. As a result, I added the qualification “Unless otherwise specified,” in order to leave open the possibility of future support for date certain expirations. For now, neither the License Data Record nor the metadata will specifically support such early expiration. However, it is possible to implement such a condition via the “Additional Clauses” mechanism discussed below.

Some commentators pointed out that 11 U.S.C. § 365(e)(1) prevents a licensor from automatically terminating a license in the event of the licensee’s bankruptcy. This would invalidate the third paragraph of this section. Note that this paragraph has been qualified by “to the extent permitted by applicable law.” This qualification saves this clause from invalidity (where contrary to applicable law) but cannot make it enforceable. Therefore, a licensor is cautioned against relying on the enforceability of this provision in all jurisdictions. When this is an important issue, further research on country-specific bankruptcy laws is necessary.

Commentators disagreed over the inclusion of clause (a) of paragraph 4 (defensive termination). Clause (a) reads “unless (a) such claim is first asserted after Licensor has asserted a claim of patent infringement against Licensee or any third party with respect to products or services of Licensee.” Those who support the inclusion of this clause argue that defensive use of patents by the licensee should be allowed, without triggering termination rights of the licensor, when it is asserted in response to a licensor’s first offensive use of a patent unrelated to the license. This fits best with their intuition of what “defensive” termination means. Others, however, opined that it is customary that once patent litigation has been initiated, whether by the licensee or licensor, the licensor should have the option of terminating all licenses, whether or not such license is related to the patents that are the subject of the suit, and regardless of who initiated the lawsuit, so that the licensor may make maximum use of its patent portfolio for litigation purposes.

Given that my goal is to strike a fair balance between the interests of the licensor and licensee, I have to consider the effect of removing this clause. If removed, it would allow the licensor to terminate the license whenever the licensee asserts a patent-based counter-claim, even if the licensor first sued the licensee on an unrelated patent. While it is not my intention to preclude the licensor from pursuing other patent claims against the licensee, if it chooses to do so, it should not be able to also “pile on” patent rights that it has already licensed if the licensee does what it normally must in order to seek a compromise—namely, to assert those patents that it has maintained defensively by way of counterclaim. To do otherwise would be to make licensing a high-risk activity for licensee, that is, either give up its right to assert its patents defensively in the event that the licensor chooses to pursue a patent lawsuit against it, or risk losing a patent license that it has relied upon to build and market products and possibly face an injunction. Such a dilemma would not be consistent with our goal of providing a dependable license that can be relied upon to make investment and technology adoption decisions.

A few commentators suggested that if the licensee terminates the license for convenience, it should not have the right to take a new license under a general public patent license offer unless the licensor specifically agrees. This is in order to avoid certain types of strategic behavior intended to avoid paying maintenance fees or other types of annual fees. I agree with this and have made the corresponding change to the license.

'''6. Warranties'''

Some commentators noted the absence of any licensee warranties. An early version of the draft did contain licensee warranties, but other commentators suggested that those warranties (such as compliance with law and applicable regulations) were best dealt with through indemnification, because violation of such warranties should not necessarily lead to license termination provided that the licensee fully carries out its obligations to indemnify. I agreed with this and thus removed licensee warranties.

Other commentators suggested that the licensor should provide warranties that it has licensed all necessary rights or that it is unaware of any infringement. However, opposing commentators noted that such warranties are very unusual, and it is customary for a patent license to assume that the license itself does not give any assurance of the right to practice (i.e., freedom from infringement of dominant patents). Furthermore, issues regarding the possible existence of the licensor’s own dominant or related patents have been discussed above and need not be dealt with through the warranty section (or through breach of warranty remedies, which would create a chilling effect on licensor participation).

'''7. Indemnification'''

Some commentators suggested making the indemnification provision mutual (i.e., provide for an indemnification right for the licensee as well as licensor). However, this is very unusual and goes against industry custom, in which the licensor’s primary “obligation” under a patent license is to refrain from suing the licensee for infringement. Typically, the licensor does not warrant that its rights are valid or that it will take other affirmative duties. Therefore, there is very little basis for the licensor indemnifying a licensee.

Several commentators noted with approval the right of the licensor to take over the defense of any claim (at its own expense) that involves an adjudication of the licensor’s patent rights. Given the importance of these rights, most licensors would not want to leave their defense or settlement in the hands of a non-exclusive licensee.

'''8. Trademark and Attribution'''

One commentator noted that some patent owners would not want their non-exclusive licensees to be marking products with patent markings without their permission. Therefore, this should be made at the option of the licensor, but not automatic. I agreed with this and added a corresponding qualification: “At Licensor’s request”.

One issue that commentators requested clarification about was whether the licensor or the licensee would be preparing the use cases that document the impact of the licensed patents. As discussed above, while there is nothing to prevent both parties from creating and publishing their own use cases, the intention here is require the licensee to provide reasonable data and statistics that the licensor would need in order to compile use cases and statistics that provide empirical evidence for the impact of its licensing strategy. Therefore, this provision contemplates that the licensor will be preparing a use case with data and support from the licensee. Once published, such use cases may be distributed by both parties. However, aside from the distribution of such case studies in unmodified form, neither party may use the trademarks of the other or otherwise imply an endorsement by the other. No general trademark license is implied.

'''9. General'''

A number of commentators suggested that the insurance requirement be made more specific. However, as the size of licensees and the extent, nature, risks, and markets of the possible exploitation of patent rights vary considerably, there is no “one-size fits all” approach to determining the appropriate amount of insurance. Thus, I define it at a “prudent” level so that the above factors can be taken into account.

'''10. Additional Clauses'''

I added this clause in order to anticipate future extensions of the license through CC-supported modular clauses as well as to make it possible to use the core license with unsupported “custom” clauses, when the licensor chooses to do so.

The CC-supported use case involves adding additional clauses in the future that we may discuss with the community and that we are convinced will make the license better or add additional options for which there is community demand. Such clauses could include, for example, date-certain expiration of the Term, options for additional limitations to the license scope, or alternative reporting requirements. Such supported additional clauses would be added after consultation with our board and our community through a public feedback process.

The unsupported use case involves a licensor who wishes to implement a feature that we do not currently support in our standard license. These could include certain “high-risk” clauses such as branding and grant-backs, that a licensor may wish to implement only after careful consultation with its attorneys or other types of clauses that CC chooses not to support.

For example, I have already discussed above why branding and trademark license clauses should be reviewed carefully in light of trademark licensing practices, policies, and franchise law. Due to the complex nature of this analysis, it may be appropriate for some licensors to provide such branding or trademark licenses, while doing so may raise serious problems for other licensors. Creative Commons would not want to implement this as check-the-box option, because it poses a risk about which some licensors may not be aware. On the other hand, a licensor who chooses to draft their own clause and implement it through the Additional Clauses mechanism is more likely to have considered the issue carefully and is prepared to take the risks involved.

Another example of such a clause is a grant back. Several commentators have suggested that we implement some kind of grant back. Some have suggested that we implement a type of “share alike” for patents that would require licensees to grant rights in improvement patents under the same license, whether to the original licensor or to the community as a whole. Prior experiments with such share-alike licensing mechanisms in a community licensing context (or patent pools) have met with decidedly mixed results. Nevertheless, a grant-back is a well-known and accepted practice in traditional patent licenses in order to ensure that the licensor has access to improvements and freedom to operate. However, the use of grant back clauses carries some antitrust risk. The 1995 Federal Antitrust Guidelines for Licensing Intellectual Property recognizes that certain grant-backs can pose antitrust concerns where the licensor has market power. Grant backs are analyzed under a rule of reason standard, and courts have also found some grant backs to lead to antitrust violations (i.e., the use of grant back clauses by licensors having market power to achieve a monopoly) (see, e.g., U.S. vs. Alumina and U.S. vs. General Electric). Compulsory grant back clauses raise antitrust concerns because they may reduce the licensee’s incentive innovate relating to improvements. Thus, grant backs are appropriate for some licensors but no necessarily “safe” for everybody, and they deserve special analysis and review by appropriate antitrust counsel. For this reason, I decline to implement a standard check-the-box grant back option, but I leave open the possibility that a licensor may supply such an obligation through the Additional Clauses mechanism.

Licensees should also be alert whenever there are Additional Clauses that are not supported or endorsed by Creative Commons that such clause may require special scrutiny because they have not been reviewed by Creative Common or subjected to public comment, and licenses which contain unsupported Additional Clauses may not be branded or labeled as standard CC licenses.

CC Public Patent License

2010-08-23T21:11:18Z

Thinh:

'''CC Public Patent License'''
Also see [[Patent License Drafter's Notes]] and [[Patent License Change Log]]

'''How to Use this CC Public Patent License'''

This CC Public Patent License is intended to be used as part of a public license offer to license patent rights. A public license offer provides two main benefits:

a) it is publicly accessible on the Internet: anyone can read the full terms of the offer;
b) it is an “live” offer so that anyone can accept it if they agree to all its terms.

To have these benefits, the offer must be openly published, and it must be capable of being accepted by anyone on a non-discriminatory basis and without additional negotiation. Used in the right context, this type of offer can provide benefits for both licensor and licensee. A licensor can use a public license offer to publicize its willingness to license patent rights on reasonable and non-discriminatory terms, thus attracting innovators and potential licensees who might otherwise not have been either aware that such patent rights were available for license or who might otherwise be unwilling to approach the licensor due to anticipated, significant transaction costs typically associated with negotiating a favorable license. A potential licensee can rely on the public and non-discriminatory availability of this public license offer to make plans and decisions about technology implementation, which in the absence of such offers, would be complicated or impossible.

Patent licenses can be very complicated, particularly when complex commercialization and licensing strategies are involved. So it would be impossible for anyone to write a license that addresses everyone’s needs or fits every scenario. Instead, we developed this Model Patent License Agreement to be simple and easy to understand. It is intended to provide a simple standard model license to make patents available on reasonable and non-discriminatory terms: preferably free of charge and without unnecessary field limitations. If you need to implement a more complex licensing strategy, then this may not be the right tool for you. In any case, please consult your own attorney before making an offer. Creative Commons is not a law firm, so we cannot provide you with advice on whether to use this instrument or how to tailor it to suit your needs or business strategy.

To use this Model Patent License Agreement, you need to supply some basic information, which is found in the License Data Record (see Addendum A). This information should be supplied in a standard electronic format for ease of reference, but you can use other formats if you wish. Some basic information is required in order to make a complete public license offer, while other fields may be optional. If you do not fill out the optional fields, then they will be defined by default provisions in the license. IN MOST CASES, THE DEFAULT OPTION ALLOWS FOR THE MOST PERMISSIVE AND FREE USE BY THE LICENSEE. For example, by default, there are no field of use restrictions, fees, or royalties. You may also add limitations to the offer itself (for example, an expiration date for the offer). In addition, you may specify that the offer is not available to parties with whom you are engaged in patent litigation or parties who are or have been infringing the patents being offered. We do not encourage you to impose other offer limitations beyond this. However, in some circumstances, it may be reasonable to specify that anyone currently engaged in litigation with you that would otherwise give you grounds for terminating the license (see Section 5) may not accept the offer in the first place.

Together, the License Data Record and the CC Public Patent License will be become your public license offer. When such an offer is made available on your Web site, or through clearinghouses like GX, anyone eligible to accept the offer may accept it through a registration and acceptance process. As part of that process, the Licensee will supply the Licensee-specific information needed to complete the License Data Record. This process, and the transaction record, then completes the license agreement.

'''CC PUBLIC PATENT LICENSE'''

The owner of the Licensed Patent Rights, as defined below (the “Licensor”), grants a license on the terms and conditions set forth in this CC Public Patent License (the “Agreement”) to the person or entity accepting this Agreement (the “Licensee”).

'''1. DEFINITIONS'''

“Field of Use” means the fields of use specified in the License Data Record. If not so specified, Field of Use means all fields of use.

“License Data Record” means a written or electronic document that provides the information specified in Addendum A.

“Licensed Patent Rights” means (a) the patents and patent applications listed in the License Data Record, (b) all divisionals, continuations, and foreign counterpart applications claiming priority from any patent or patent application described in (a), (c) those claims of any continuations-in-parts that claim priority exclusively from the patents or patent applications described in (a) and (b); (d) all patents issuing from patent applications included in (a) through (c); and (e) all reissues, reexaminations, renewals, and extensions of any patents included in (a) through (d).

“Licensed Process(es)” means a process the practice of which would infringe, but for the license granted in this Agreement, one or more claims of the Licensed Patent Rights.

“Licensed Product(s)” means a machine, article of manufacture, composition of matter, or other product (a) the manufacture, use, sale, offer for sale, or import of which would infringe, but for the licenses granted in this Agreement, one or more claims of the Licensed Patent Rights, or (b) made or directly obtained by a Licensed Process.

“Necessary Patent Claims” means any patent claim(s), now owned, controlled, or hereafter acquired by Licensor in any patent that Licensor has the right to license, that would be infringed, but for the license granted in Section 2.2, by the making, using, selling, or importation of processes or products that implement the specific features or teachings of Specification, but excluding any claims that are not necessary to implement the Specification as written or that may enable the Specification but are not the principle subject matter of the Specification.

“Specification” means the specification, if any, set forth in the License Data Record by the "Specification" entry.

“Territory” means a geographical or jurisdictional designation, as specified in the License Data Record. If not so specified, Territory means worldwide.

“Term” means the period of time specified in Section 5.

'''2. GRANT OF LICENSE'''

2.1 Subject to the terms and conditions of this Agreement and the License Data Record, Licensor grants to Licensee under the Licensed Patent Rights, in the Territory, and during the Term, a non-exclusive, non-transferable (except as expressly permitted in Section 9) license, without a right to sublicense, to make, use, sell, offer for sale, and import Licensed Products and to practice Licensed Processes, in each case, in the Field of Use.

2.2 If the License Data Record contains a Specification, then subject to the terms and conditions of this Agreement and the License Data Record, Licensor grants to Licensee under the Necessary Patent Claims, in the Territory, and during the Term, a non-exclusive, non-transferable (except as expressly permitted in Section 9) license, without a right to sublicense, to make, use, sell, offer for sale, and import products that implement the Specification and to practice processes that implement the Specification, in each case, in the Field of Use.

2.3 The above licenses include the right to have made, except as otherwise specified by the License Data Record.
2.4 The exclusive rights referenced above (such as make, sell, and use) shall also be interpreted to include substantially similar exclusive patent rights (such as disposal and offer to dispose) in other countries, when applicable.

'''3. FEES AND OTHER CONSIDERATION'''

Fees, royalties, or other consideration, if any, shall be specified in the “License Fees and Royalties” section of License Data Record. If none are specified, then no payment is required under this Agreement.

'''4. REPORTING'''

Licensee shall provide quarterly reports to Licensor, along with any required payments, in sufficient detail to verify the calculation of royalties owed, including without limitation, gross receipts from the use, sale, or other disposition of Licensed Products and/or from the practice of a Licensed Process, deductions taken for calculating revenues, and the total royalty due. If no royalties are due, then the report shall so specify.
In addition, then Licensee shall instead provide such reports as may be reasonably requested by Licensor to perform the analysis and activities described below.

Licensor may use the information provided by Licensee to analyze and publish metrics and impact statistics related to the use of the Licensed Patent Rights and have others do so, as long as such information is used only in aggregated and anonymous form. Licensor may also use or disclose the information to enforce this Agreement, and/or to comply with a court order, or otherwise as required by law.

'''5. TERM'''

Unless otherwise specified, the Term of this Agreement commences on its execution and ends upon the expiration, abandonment, or final invalidity of all claims within the Licensed Patent Rights, unless earlier terminated as permitted below.

Licensor may terminate this Agreement in the event of a material breach of this Agreement that is not cured within thirty (30) days after Licensor provides written notice to Licensee specifying such breach.

To the extent permitted by applicable law, Licensor may terminate this Agreement immediately in the event Licensee becomes insolvent, files for bankruptcy protection, makes an assignment for the benefit of creditors, or becomes the subject of involuntary bankruptcy proceedings. Licensee shall immediately notify Licensor upon the occurrence of one of these conditions.

Licensor may terminate this Agreement upon written notice to Licensee in the event that Licensee asserts a claim of patent infringement against Licensor or any third party with respect to products or services of Licensor, unless (a) such claim is first asserted after Licensor has asserted a claim of patent infringement against Licensee or any third party with respect to products or services of Licensee, or (b) Licensee fully withdraws such claim within ten (10) days after being notified by Licensor. For purposes of this paragraph, “Licensor” and “Licensee” shall also include their respective affiliates.

Licensee may terminate this Agreement by providing Licensor with at least thirty (30) days prior written notice, provided that if Licensee terminates this Agreement, it shall not be eligible to reinstate this license or accept any other general license offer with respect to the subject matter of this Agreement, unless the Licensor specifically agrees otherwise in writing.
Upon any termination of this Agreement, Licensee shall provide Licensor with a final royalty report within thirty (30) days after termination, along with full payment of all amounts due. The following sections shall also survive termination of this Agreement: 6, 7, 8, 9, and 10.

'''6. WARRANTIES'''

Licensor warrants that it has the right and authority to grant the rights and licenses granted in this Agreement.

Licensor disclaims all other warranties, representations, and conditions, whether express, implied, or statutory, including, but not limited to, the warranties of merchantability, fitness for a particular purpose, or non-infringement.

Without limiting the generality of the above disclaimer, Licensor makes no representation or warranties that: a) it will prosecute or continue to prosecute, maintain, or defend any patent or patent application, b) it will bring an infringement suit, assert any claim against third parties accused of infringement, or otherwise enforce any patent or patent application, c) it will join as a party to any suit or legal action, d) it will provide Licensee with know-how or assistance necessary or useful to practice the Licensed Patent Rights, e) the Licensed Patent Rights are valid or enforceable, or f) the Licensed Products or Licensed Processes may be exploited or practiced without infringing third party patents.

'''7. INDEMNIFICATION'''

Licensee shall indemnify and hold Licensor, and its officers, directors, employees, representatives, agents, and affiliates harmless from any and all damages, liabilities, costs, and expenses (including reasonable attorneys’ fees) arising out of or caused by Licensee’s practice or exploitation of the license granted by this Agreement or by the sale, use, or exploitation of Licensed Products or Licensed Processes by or under the authority of Licensee.

Licensor shall notify Licensee promptly of any claim of which Licensor is aware and for which Licensor seeks indemnification. Licensee shall have the right to control the defense of such claims, except to the extent that the scope or validity of the Licensed Patent Rights are at issue, in which case Licensor may assume the sole control and defense of such claims at its own expense.

'''8. TRADEMARKS AND ATTRIBUTION'''

At Licensor’s request, Licensee agrees to mark Licensed Products and their packaging with patent markings as required by applicable law to preserve Licensor’s rights and otherwise enforce the Licensed Patents.

At Licensor’s request, Licensee shall reasonably cooperate with Licensor and provide such information as may be necessary for Licensor to prepare use case studies that document Licensee’s use of the Licensed Patent Rights and related usage or impact metrics. Each party may copy, distribute, and publish such use case studies, including by means of its Web sites, and authorize others to do so, to demonstrate the uses and impact of the technology.

Except solely as permitted above, neither party may use the other’s trademarks, service marks, trade names, company names, or logos (“Marks”) to offer, market, sell, or otherwise endorse any product or service or to engage in any other trademark usage, unless with the prior written authorization of the owner. Any uses of a party’s Marks shall inure solely to the benefit of that party, along with all goodwill associated therewith.

'''9. GENERAL PROVISIONS'''

Notices to the parties shall be provided at the address set forth in the License Data Record, unless a party provides written notice to the other party of a change of address. Notices may be provided by personal delivery, express delivery service, or registered mail. Notices shall be effective on the date received.

Nothing in this Agreement constitutes the parties as partners, joint venturers, principal and agent, or fiduciaries of each other.

A delay or failure in enforcing a right or obligation under this Agreement shall not be construed as an implied waiver of that right or obligation or of any other provision or breach under this Agreement. A waiver under this Agreement is only effective if made in writing and signed by the party granting the waiver.

An amendment or modification of this Agreement is effective only if made in writing and signed by the duly authorized representatives of the parties.
This Agreement constitutes the entire agreement between the parties as to the subject matter herein and supersedes all prior or contemporaneous negotiations, agreements, representations, memorandums, and understandings.

If any provision of this Agreement is deemed to be invalid or unenforceable, then that provision, to the extent unenforceable, is severable and the remainder of this Agreement shall continue in full force and effect.

Licensee may not assign any of its rights under this Agreement, delegate any of its obligations under this Agreement, or otherwise transfer this Agreement, without the prior written consent of Licensor, and any attempted assignment, transfer, or delegation shall be voidable by Licensor. Any change of control of Licensee shall be deemed an attempted transfer of this Agreement. Licensor may assign this Agreement in connection with a sale, merger, or transfer of the assets to which this Agreement relates, provided that the assignee assumes all rights and obligations under this Agreement.

Licensee agrees to maintain insurance in amounts prudent for Licensee’s operations and adequate to discharge Licensee’s obligations under Section 7.

This Agreement is governed by and interpreted in accordance with the laws of the jurisdiction set forth in the License Data Record, if any. The parties agree that the proper jurisdiction and venue for any disputes arising out of this Agreement shall be in the courts of the venue specified in the License Data Record, if any. If none are specified, then jurisdiction and venue shall be deemed to be in the relevant jurisdiction for Licensor’s address, as stated in the License Data Record.

No rights or forbearances are granted, or may arise (whether through implication, estoppel, exhaustion or otherwise) other than those expressly granted in this Agreement.

EXCEPT FOR THE OBLIGATION TO RENDER CONSIDERATION (IF ANY) IN SECTION 3, THE INDEMNIFICATION OBLIGATIONS IN SECTION 7, AND INFRINGEMENT OF ANY TRADEMARK OR INTELLECTUAL PROPERTY RIGHT, IN NO EVENT WILL EITHER PARTY HAVE ANY LIABILITY OF ANY KIND WHATSOEVER TO THE OTHER ARISING OUT OF THIS AGREEMENT, INCLUDING BUT NOT LIMITED TO, FOR INDIRECT, INCIDENTAL, CONSEQUENTIAL OR SPECIAL DAMAGES, EVEN IF ADVISED OF THE POSSIBILITY OF SUCH DAMAGES.

'''10. ADDITIONAL CLAUSES'''

Additional Clauses (if any) contained in the Licensed Data Record are hereby incorporated into this Agreement by reference. In the event of any conflict between the terms of this Agreement and the Additional Clauses, the terms of the Additional Clauses shall prevail.

'''Addendum A'''

The purpose of this Addendum is to provide guidelines for a License Data Record, which may be either in paper or electronic form. This License Data Record is unique to each transaction and must specify a minimum information set in order to give effect to the Patent License Agreement.

To constitute an agreement that incorporates the terms of the Patent License Agreement, a License Data Record must:

1) reference this Agreement by linking to the URL of the Patent License Agreement deed or legal code, attaching a copy of it, referencing it by name, or by any other means that uniquely and unambiguously identifies it; AND

2) provide the following information:

a. Name of Licensor: the name of the person or entities offering this license,

b. Licensor Contact Information: address, contact person, phone number, fax, and/or email,

c. Name of Licensee: the name of the person or entities accepting this license,

d. Licensee Contact Information: address, contact person, phone number, fax, and/or email,

e. Licensed Patent Rights: a list of patents and patent applications to be licensed,

OR

Specification: a written specification of the invention or technology to be licensed.

f. License Fees, Royalties, and other consideration (optional): a description of any required fees, royalties, or other consideration, including without limitation any requirements relating to improvements or innovations,

g. Field of Use (optional): a description of any scope of use limitations associated with the license,

h. “Have Made” Limitations (optional): any limitations to the license to “have made,”

i. Choice of Law (optional): jurisdiction for choice of law,

j. Choice of Venue (optional) jurisdiction for legal venue,

k. Territory (optional): geographic limitations of the license,

l. Offer Limitations (optional): any limitations associated with the offer, and

m. Additional Clauses

'''Sample License Data Record'''

This License Data Record references and incorporates the GX Model Patent License Agreement (located at URL: _________)

Licensor Name:
Licensor Contact Address:

_____________________________

_____________________________

_____________________________

Phone: _______________________

Fax: _________________________

Email: ________________________

Licensee Name:

Licensee Contact Address:

_____________________________

_____________________________

_____________________________

Phone: _______________________

Fax: _________________________

Email: _____________________________

Licensed Patents Rights:

Patent No. ____________________________

Patent Application No.__________________ …

OR

Specification (attached a detailed specification or provide a URL):

License Fees & Royalties (optional):

Field of Use (optional):

Have Made Limitations (optional):

Choice of Law (optional) City_____________, State_____________

Choice of Venue (optional) City_____________, State_____________

Territory (Optional)

Offer Limitations (Optional)

Additional Clauses (Optional)

CC Public Patent License

2010-08-23T21:08:52Z

Thinh:

'''CC Public Patent License'''
Also see [[Patent License Drafter's Notes]] and [[Patent License Change Log]]

'''How to Use this CC Public Patent License'''

This CC Public Patent License is intended to be used as part of a public license offer to license patent rights. A public license offer provides two main benefits:

a) it is publicly accessible on the Internet: anyone can read the full terms of the offer;
b) it is an “live” offer so that anyone can accept it if they agree to all its terms.

To have these benefits, the offer must be openly published, and it must be capable of being accepted by anyone on a non-discriminatory basis and without additional negotiation. Used in the right context, this type of offer can provide benefits for both licensor and licensee. A licensor can use a public license offer to publicize its willingness to license patent rights on reasonable and non-discriminatory terms, thus attracting innovators and potential licensees who might otherwise not have been either aware that such patent rights were available for license or who might otherwise be unwilling to approach the licensor due to anticipated, significant transaction costs typically associated with negotiating a favorable license. A potential licensee can rely on the public and non-discriminatory availability of this public license offer to make plans and decisions about technology implementation, which in the absence of such offers, would be complicated or impossible.

Patent licenses can be very complicated, particularly when complex commercialization and licensing strategies are involved. So it would be impossible for anyone to write a license that addresses everyone’s needs or fits every scenario. Instead, we developed this Model Patent License Agreement to be simple and easy to understand. It is intended to provide a simple standard model license to make patents available on reasonable and non-discriminatory terms: preferably free of charge and without unnecessary field limitations. If you need to implement a more complex licensing strategy, then this may not be the right tool for you. In any case, please consult your own attorney before making an offer. Creative Commons is not a law firm, so we cannot provide you with advice on whether to use this instrument or how to tailor it to suit your needs or business strategy.

To use this Model Patent License Agreement, you need to supply some basic information, which is found in the License Data Record (see Addendum A). This information should be supplied in a standard electronic format for ease of reference, but you can use other formats if you wish. Some basic information is required in order to make a complete public license offer, while other fields may be optional. If you do not fill out the optional fields, then they will be defined by default provisions in the license. IN MOST CASES, THE DEFAULT OPTION ALLOWS FOR THE MOST PERMISSIVE AND FREE USE BY THE LICENSEE. For example, by default, there are no field of use restrictions, fees, or royalties. You may also add limitations to the offer itself (for example, an expiration date for the offer). In addition, you may specify that the offer is not available to parties with whom you are engaged in patent litigation or parties who are or have been infringing the patents being offered. We do not encourage you to impose other offer limitations beyond this. However, in some circumstances, it may be reasonable to specify that anyone currently engaged in litigation with you that would otherwise give you grounds for terminating the license (see Section 5) may not accept the offer in the first place.

Together, the License Data Record and the CC Public Patent License will be become your public license offer. When such an offer is made available on your Web site, or through clearinghouses like GX, anyone eligible to accept the offer may accept it through a registration and acceptance process. As part of that process, the Licensee will supply the Licensee-specific information needed to complete the License Data Record. This process, and the transaction record, then completes the license agreement.

'''CC PUBLIC PATENT LICENSE'''

The owner of the Licensed Patent Rights, as defined below (the “Licensor”), grants a license on the terms and conditions set forth in this CC Public Patent License (the “Agreement”) to the person or entity accepting this Agreement (the “Licensee”).

'''1. DEFINITIONS'''

“Field of Use” means the fields of use specified in the License Data Record. If not so specified, Field of Use means all fields of use.

“License Data Record” means a written or electronic document that provides the information specified in Addendum A.

“Licensed Patent Rights” means (a) the patents and patent applications listed in the License Data Record, (b) all divisionals, continuations, and foreign counterpart applications claiming priority from any patent or patent application described in (a), (c) those claims of any continuations-in-parts that claim priority exclusively from the patents or patent applications described in (a) and (b); (d) all patents issuing from patent applications included in (a) through (c); and (e) all reissues, reexaminations, renewals, and extensions of any patents included in (a) through (d).

“Licensed Process(es)” means a process the practice of which would infringe, but for the license granted in this Agreement, one or more claims of the Licensed Patent Rights.

“Licensed Product(s)” means a machine, article of manufacture, composition of matter, or other product (a) the manufacture, use, sale, offer for sale, or import of which would infringe, but for the licenses granted in this Agreement, one or more claims of the Licensed Patent Rights, or (b) made or directly obtained by a Licensed Process.

“Necessary Patent Claims” means any patent claim(s), now owned, controlled, or hereafter acquired by Licensor in any patent that Licensor has the right to license, that would be infringed, but for the license granted in Section 2.2, by the making, using, selling, or importation of processes or products that implement the specific features or teachings of Specification, but excluding any claims that are not necessary to implement the Specification as written or that may enable the Specification but are not the principle subject matter of the Specification.

“Specification” means the specification, if any, set forth in the License Data Record by the "Specification" entry.

“Territory” means a geographical or jurisdictional designation, as specified in the License Data Record. If not so specified, Territory means worldwide.
“Term” means the period of time specified in Section 5.

'''2. GRANT OF LICENSE'''

2.1 Subject to the terms and conditions of this Agreement and the License Data Record, Licensor grants to Licensee under the Licensed Patent Rights, in the Territory, and during the Term, a non-exclusive, non-transferable (except as expressly permitted in Section 9) license, without a right to sublicense, to make, use, sell, offer for sale, and import Licensed Products and to practice Licensed Processes, in each case, in the Field of Use.

2.2 If the License Data Record contains a Specification, then subject to the terms and conditions of this Agreement and the License Data Record, Licensor grants to Licensee under the Necessary Patent Claims, in the Territory, and during the Term, a non-exclusive, non-transferable (except as expressly permitted in Section 9) license, without a right to sublicense, to make, use, sell, offer for sale, and import products that implement the Specification and to practice processes that implement the Specification, in each case, in the Field of Use.

2.3 The above licenses include the right to have made, except as otherwise specified by the License Data Record.
2.4 The exclusive rights referenced above (such as make, sell, and use) shall also be interpreted to include substantially similar exclusive patent rights (such as disposal and offer to dispose) in other countries, when applicable.

'''3. FEES AND OTHER CONSIDERATION'''

Fees, royalties, or other consideration, if any, shall be specified in the “License Fees and Royalties” section of License Data Record. If none are specified, then no payment is required under this Agreement.

'''4. REPORTING'''

Licensee shall provide quarterly reports to Licensor, along with any required payments, in sufficient detail to verify the calculation of royalties owed, including without limitation, gross receipts from the use, sale, or other disposition of Licensed Products and/or from the practice of a Licensed Process, deductions taken for calculating revenues, and the total royalty due. If no royalties are due, then the report shall so specify.
In addition, then Licensee shall instead provide such reports as may be reasonably requested by Licensor to perform the analysis and activities described below.

Licensor may use the information provided by Licensee to analyze and publish metrics and impact statistics related to the use of the Licensed Patent Rights and have others do so, as long as such information is used only in aggregated and anonymous form. Licensor may also use or disclose the information to enforce this Agreement, and/or to comply with a court order, or otherwise as required by law.

'''5. TERM'''

Unless otherwise specified, the Term of this Agreement commences on its execution and ends upon the expiration, abandonment, or final invalidity of all claims within the Licensed Patent Rights, unless earlier terminated as permitted below.

Licensor may terminate this Agreement in the event of a material breach of this Agreement that is not cured within thirty (30) days after Licensor provides written notice to Licensee specifying such breach.

To the extent permitted by applicable law, Licensor may terminate this Agreement immediately in the event Licensee becomes insolvent, files for bankruptcy protection, makes an assignment for the benefit of creditors, or becomes the subject of involuntary bankruptcy proceedings. Licensee shall immediately notify Licensor upon the occurrence of one of these conditions.

Licensor may terminate this Agreement upon written notice to Licensee in the event that Licensee asserts a claim of patent infringement against Licensor or any third party with respect to products or services of Licensor, unless (a) such claim is first asserted after Licensor has asserted a claim of patent infringement against Licensee or any third party with respect to products or services of Licensee, or (b) Licensee fully withdraws such claim within ten (10) days after being notified by Licensor. For purposes of this paragraph, “Licensor” and “Licensee” shall also include their respective affiliates.

Licensee may terminate this Agreement by providing Licensor with at least thirty (30) days prior written notice, provided that if Licensee terminates this Agreement, it shall not be eligible to reinstate this license or accept any other general license offer with respect to the subject matter of this Agreement, unless the Licensor specifically agrees otherwise in writing.
Upon any termination of this Agreement, Licensee shall provide Licensor with a final royalty report within thirty (30) days after termination, along with full payment of all amounts due. The following sections shall also survive termination of this Agreement: 6, 7, 8, 9, and 10.

'''6. WARRANTIES'''

Licensor warrants that it has the right and authority to grant the rights and licenses granted in this Agreement.

Licensor disclaims all other warranties, representations, and conditions, whether express, implied, or statutory, including, but not limited to, the warranties of merchantability, fitness for a particular purpose, or non-infringement.

Without limiting the generality of the above disclaimer, Licensor makes no representation or warranties that: a) it will prosecute or continue to prosecute, maintain, or defend any patent or patent application, b) it will bring an infringement suit, assert any claim against third parties accused of infringement, or otherwise enforce any patent or patent application, c) it will join as a party to any suit or legal action, d) it will provide Licensee with know-how or assistance necessary or useful to practice the Licensed Patent Rights, e) the Licensed Patent Rights are valid or enforceable, or f) the Licensed Products or Licensed Processes may be exploited or practiced without infringing third party patents.

'''7. INDEMNIFICATION'''

Licensee shall indemnify and hold Licensor, and its officers, directors, employees, representatives, agents, and affiliates harmless from any and all damages, liabilities, costs, and expenses (including reasonable attorneys’ fees) arising out of or caused by Licensee’s practice or exploitation of the license granted by this Agreement or by the sale, use, or exploitation of Licensed Products or Licensed Processes by or under the authority of Licensee.

Licensor shall notify Licensee promptly of any claim of which Licensor is aware and for which Licensor seeks indemnification. Licensee shall have the right to control the defense of such claims, except to the extent that the scope or validity of the Licensed Patent Rights are at issue, in which case Licensor may assume the sole control and defense of such claims at its own expense.

'''8. TRADEMARKS AND ATTRIBUTION'''

At Licensor’s request, Licensee agrees to mark Licensed Products and their packaging with patent markings as required by applicable law to preserve Licensor’s rights and otherwise enforce the Licensed Patents.

At Licensor’s request, Licensee shall reasonably cooperate with Licensor and provide such information as may be necessary for Licensor to prepare use case studies that document Licensee’s use of the Licensed Patent Rights and related usage or impact metrics. Each party may copy, distribute, and publish such use case studies, including by means of its Web sites, and authorize others to do so, to demonstrate the uses and impact of the technology.

Except solely as permitted above, neither party may use the other’s trademarks, service marks, trade names, company names, or logos (“Marks”) to offer, market, sell, or otherwise endorse any product or service or to engage in any other trademark usage, unless with the prior written authorization of the owner. Any uses of a party’s Marks shall inure solely to the benefit of that party, along with all goodwill associated therewith.

'''9. GENERAL PROVISIONS'''

Notices to the parties shall be provided at the address set forth in the License Data Record, unless a party provides written notice to the other party of a change of address. Notices may be provided by personal delivery, express delivery service, or registered mail. Notices shall be effective on the date received.

Nothing in this Agreement constitutes the parties as partners, joint venturers, principal and agent, or fiduciaries of each other.

A delay or failure in enforcing a right or obligation under this Agreement shall not be construed as an implied waiver of that right or obligation or of any other provision or breach under this Agreement. A waiver under this Agreement is only effective if made in writing and signed by the party granting the waiver.

An amendment or modification of this Agreement is effective only if made in writing and signed by the duly authorized representatives of the parties.
This Agreement constitutes the entire agreement between the parties as to the subject matter herein and supersedes all prior or contemporaneous negotiations, agreements, representations, memorandums, and understandings.

If any provision of this Agreement is deemed to be invalid or unenforceable, then that provision, to the extent unenforceable, is severable and the remainder of this Agreement shall continue in full force and effect.

Licensee may not assign any of its rights under this Agreement, delegate any of its obligations under this Agreement, or otherwise transfer this Agreement, without the prior written consent of Licensor, and any attempted assignment, transfer, or delegation shall be voidable by Licensor. Any change of control of Licensee shall be deemed an attempted transfer of this Agreement. Licensor may assign this Agreement in connection with a sale, merger, or transfer of the assets to which this Agreement relates, provided that the assignee assumes all rights and obligations under this Agreement.

Licensee agrees to maintain insurance in amounts prudent for Licensee’s operations and adequate to discharge Licensee’s obligations under Section 7.

This Agreement is governed by and interpreted in accordance with the laws of the jurisdiction set forth in the License Data Record, if any. The parties agree that the proper jurisdiction and venue for any disputes arising out of this Agreement shall be in the courts of the venue specified in the License Data Record, if any. If none are specified, then jurisdiction and venue shall be deemed to be in the relevant jurisdiction for Licensor’s address, as stated in the License Data Record.

No rights or forbearances are granted, or may arise (whether through implication, estoppel, exhaustion or otherwise) other than those expressly granted in this Agreement.

EXCEPT FOR THE OBLIGATION TO RENDER CONSIDERATION (IF ANY) IN SECTION 3, THE INDEMNIFICATION OBLIGATIONS IN SECTION 7, AND INFRINGEMENT OF ANY TRADEMARK OR INTELLECTUAL PROPERTY RIGHT, IN NO EVENT WILL EITHER PARTY HAVE ANY LIABILITY OF ANY KIND WHATSOEVER TO THE OTHER ARISING OUT OF THIS AGREEMENT, INCLUDING BUT NOT LIMITED TO, FOR INDIRECT, INCIDENTAL, CONSEQUENTIAL OR SPECIAL DAMAGES, EVEN IF ADVISED OF THE POSSIBILITY OF SUCH DAMAGES.

'''10. ADDITIONAL CLAUSES'''

Additional Clauses (if any) contained in the Licensed Data Record are hereby incorporated into this Agreement by reference. In the event of any conflict between the terms of this Agreement and the Additional Clauses, the terms of the Additional Clauses shall prevail.

'''Addendum A'''

The purpose of this Addendum is to provide guidelines for a License Data Record, which may be either in paper or electronic form. This License Data Record is unique to each transaction and must specify a minimum information set in order to give effect to the Patent License Agreement.

To constitute an agreement that incorporates the terms of the Patent License Agreement, a License Data Record must:

1) reference this Agreement by linking to the URL of the Patent License Agreement deed or legal code, attaching a copy of it, referencing it by name, or by any other means that uniquely and unambiguously identifies it; AND

2) provide the following information:

a. Name of Licensor: the name of the person or entities offering this license,

b. Licensor Contact Information: address, contact person, phone number, fax, and/or email,

c. Name of Licensee: the name of the person or entities accepting this license,

d. Licensee Contact Information: address, contact person, phone number, fax, and/or email,

e. Licensed Patent Rights: a list of patents and patent applications to be licensed,

OR

Specification: a written specification of the invention or technology to be licensed.

f. License Fees, Royalties, and other consideration (optional): a description of any required fees, royalties, or other consideration, including without limitation any requirements relating to improvements or innovations,

g. Field of Use (optional): a description of any scope of use limitations associated with the license,

h. “Have Made” Limitations (optional): any limitations to the license to “have made,”

i. Choice of Law (optional): jurisdiction for choice of law,

j. Choice of Venue (optional) jurisdiction for legal venue,

k. Territory (optional): geographic limitations of the license,

l. Offer Limitations (optional): any limitations associated with the offer, and

m. Additional Clauses

'''Sample License Data Record'''

This License Data Record references and incorporates the GX Model Patent License Agreement (located at URL: _________)

Licensor Name:
Licensor Contact Address:

_____________________________

_____________________________

_____________________________

Phone: _______________________

Fax: _________________________

Email: ________________________

Licensee Name:

Licensee Contact Address:

_____________________________

_____________________________

_____________________________

Phone: _______________________

Fax: _________________________

Email: _____________________________

Licensed Patents Rights:

Patent No. ____________________________

Patent Application No.__________________ …

OR

Specification (attached a detailed specification or provide a URL):

License Fees & Royalties (optional):

Field of Use (optional):

Have Made Limitations (optional):

Choice of Law (optional) City_____________, State_____________

Choice of Venue (optional) City_____________, State_____________

Territory (Optional)

Offer Limitations (Optional)

Additional Clauses (Optional)

Patent License Change Log

2010-08-23T21:08:21Z

Thinh:

'''Change Log'''

This refers to changes from [[Model Patent License]] to the [[CC Public Patent License]]

Title:

The “Model Patent License” title has been changed to “CC Public Patent License”.

Preamble:

“How to Use this CC Public Patent License”:

- Added the phrase “on the Internet” to emphasize that the patent offers are Internet-enabled

- Changed “active” to “live”

- Deleted reference to “defensive” use in 3rd paragraph of preamble

- Deleted “or restrictions on the have made right”.

- Added “In addition, you may specify that the offer is not available to parties with whom you are engaged in patent litigation or parties who are or have been infringing the patents being offered.”

Definitions:

- Added: “Necessary Patent Claims” means any patent claim(s), now owned, controlled, or hereafter acquired by Licensor in any patent that Licensor has the right to license, that would be infringed, but for the license granted in Section 2.2, by the making, using, selling, or importation of processes or products that implement the specific teachings or features of Specification, but excluding any claims that are not necessary to implement the Specification as written or that may enable the Specification but are not the principle subject matter of the Specification.

- Added: “Specification” means the specification, if any, set forth in the License Data Record by the "Specification" entry.

2. Grant of License:

- 2.1: Added “under the Licensed Patent Rights”; added “have made”

- 2.2: Added new paragraph: “If the License Data Record contains a Specification, then subject to the terms and conditions of this Agreement and the License Data Record, Licensor grants to Licensee under the Necessary Patent Claims, in the Territory, and during the Term, a non-exclusive, non-transferable (except as expressly permitted in Section 9) license, without a right to sublicense, to make, use, sell, offer for sale, and import products that implement the Specification and to practice processes that implement the Specification.”; added “have made”

- 2.4: Added new paragraph: “The exclusive rights referenced above (such as make, sell, and use) shall also be interpreted to include substantially similar exclusive patent rights (such as disposal and offer to dispose) in other countries, when applicable.”

3. Fees:
- Added “And Other Consideration” to Section title

4. Reporting:
- Changed: “If no royalties are required,” to “In addition..”

5. Term:

- Added: “Unless otherwise specified..” to first paragraph

- Added: “provided that if Licensee terminates this Agreement, it shall not be eligible to reinstate this license or accept any other general license offer with respect to the subject matter of this Agreement, unless the Licensor specifically agrees otherwise in writing.”

- Added: “and 10” to last paragraph.

8. Trademark and Attribution

- Added: “At Licensor’s request” to first paragraph

10.

Added: “ADDITIONAL CLAUSES”

Additional Clauses (if any) contained in the Licensed Data Record are hereby incorporated into this Agreement by reference. In the event of any conflict between the terms of this Agreement and the Additional Clauses, the terms of the Additional Clauses shall prevail.

Patent Tools Public Discussion

2010-08-23T21:02:41Z

Thinh:

NOTE: We have closed the Public Comment Period. This has resulted in a number of changes to the draft. For the latest draft, please see [[CC Public Patent License]] and the accompanying [[Patent License Drafter's Notes]] and [[Patent License Change Log]].

==BACKGROUND==

These patent tools were first announced as beta prototypes at the World Economic Forum’s 2010 meeting in Davos, as part of the GX project (http://greenxchange.force.com/), a collaboration to promote the sharing of know-how and patent knowledge for solving sustainability and other pressing social problems.

As part of this effort, Creative Commons agreed to aid in developing and testing novel legal tools that will facilitate this kind of ambitious effort. CC’s role is not to run GX but to help create the legal and technical infrastructure that can help to reduce some of the “legal friction” involved when a community tries to share knowledge and IP.

Our intention is that these tools, while prototyped and tested in the specific context of GX, be ultimately available to the public and anyone who wants to use it—just like all our CC licenses. Thus, they should not be viewed as “GX tools”, but as generic “CC tools” that happen to be used by GX—but that can also be used by other users or communities. Please keep this in mind as you read and participate in this public comment process.

The two patent tools being published for public comment are:

* a [[Research Non-Assertion Pledge]], to be used by patent owners who wish to promote basic research by committing not to enforce patents against users engaged in basic non-profit research; and

* a [[Model Patent License]], to be used by patent owners who wish to make a public offer to license their patents on standard terms.

More information about the patent tools are posted on this Wiki (see links below).

* [[Patent License Design]]
* [[GX FAQ]]
* [[Research Pledge FAQ]]
* [[Patent Tools Feedback]]

==PROCESS==

The purpose of the public comment period is to gather feedback from as wide an audience as possible and to provide a forum for public comments from topics ranging from high level policy issues to specific comments about legal drafting. We hope that you will help us to further refine, improve, and build on the beta prototypes of these tools, so that they will be robust, clear, and usable. The public comment period is really part our “beta” development.

Our intention is to make this process quicker and more light-weight than the usual CC license versioning process, but still provide a meaningful time period to invite public comments. So here’s how it will work:

* Please review the current drafts of the [[Research Non-Assertion Pledge]] and the [[Model Patent License]].
* Review the [[Patent License Design]] document for additional topics and areas where we would like additional feedback.
* If you have any questions, see if they have already been answered in the [[GX FAQ]] or [[Research Pledge FAQ]].
* We invite you to join our moderated public mailing list (cc-patents@lists.ibiblio.org) to participate in the discussion. This list is created for this particular purpose.
* As we receive comments, we will try to group and summarize topics and comments and provide a response to them when appropriate.
* If we make decide to make changes or revisions to our drafts, we will post those revisions on this Wiki under [[Patent Tools Feedback]] on a rolling basis through the comment period.
* We intend to keep this process open for 2-3 months. The exact time period depends on the volume of comments received and the nature of issues raised. For example, if there are many unresolved issues, we may keep it open longer. But if things are wrapping up, we may close the process earlier. We will make announcements to update you on the timing after 60 days.

==IMPORTANT PRINCIPLES TO KEEP IN MIND ABOUT THIS PROCESS==

* The Research Non-Assertion Pledge and Model Patent License forms will be published by CC as generic legal tools available for use by the public, like all CC licenses. They are not intended to be exclusive to the GX community or its members.

* '''Creative Commons does not have any authority to make binding offers or pledges on behalf of GX members.''' Nothing on this Web site or any statement made in this process should be interpreted as actual offers or commitments from GX or its members companies to grant any license or make any pledge. (Those can only be made through the individual company’s Web sites or its designees).

* '''The views expressed by us here are exclusively those of CC and not those of GX or its members.'''

Patent License Change Log

2010-08-23T21:00:47Z

Thinh:

'''Change Log'''

This refers to changes from [[Model Patent License]] to the [[CC Public Patent License]]

Title:

The “Model Patent License” title has been changed to “CC Public Patent License”.

Preamble:

“How to Use this CC Public Patent License”:

- Added the phrase “on the Internet” to emphasize that the patent offers are Internet-enabled

- Changed “active” to “live”

- Deleted reference to “defensive” use in 3rd paragraph of preamble

- Deleted “or restrictions on the have made right”.

- Added “In addition, you may specify that the offer is not available to parties with whom you are engaged in patent litigation or parties who are or have been infringing the patents being offered.”

Definitions:

- Added: “Necessary Patent Claims” means any patent claim(s), now owned, controlled, or hereafter acquired by Licensor in any patent that Licensor has the right to license, that would be infringed, but for the license granted in Section 2.2, by the making, using, selling, or importation of processes or products that implement the specific teachings of Specification, but excluding any claims that are not necessary to implement the Specification as written or that may enable the Specification but are not the principle subject matter of the Specification.

- Added: “Specification” means the specification, if any, set forth in the License Data Record by the "Specification" entry.

2. Grant of License:

- 2.1: Added “under the Licensed Patent Rights”; added “have made”

- 2.2: Added new paragraph: “If the License Data Record contains a Specification, then subject to the terms and conditions of this Agreement and the License Data Record, Licensor grants to Licensee under the Necessary Patent Claims, in the Territory, and during the Term, a non-exclusive, non-transferable (except as expressly permitted in Section 9) license, without a right to sublicense, to make, use, sell, offer for sale, and import products that implement the Specification and to practice processes that implement the Specification.”; added “have made”

- 2.4: Added new paragraph: “The exclusive rights referenced above (such as make, sell, and use) shall also be interpreted to include substantially similar exclusive patent rights (such as disposal and offer to dispose) in other countries, when applicable.”

3. Fees:
- Added “And Other Consideration” to Section title

4. Reporting:
- Changed: “If no royalties are required,” to “In addition..”

5. Term:

- Added: “Unless otherwise specified..” to first paragraph

- Added: “provided that if Licensee terminates this Agreement, it shall not be eligible to reinstate this license or accept any other general license offer with respect to the subject matter of this Agreement, unless the Licensor specifically agrees otherwise in writing.”

- Added: “and 10” to last paragraph.

8. Trademark and Attribution

- Added: “At Licensor’s request” to first paragraph

10.

Added: “ADDITIONAL CLAUSES”

Additional Clauses (if any) contained in the Licensed Data Record are hereby incorporated into this Agreement by reference. In the event of any conflict between the terms of this Agreement and the Additional Clauses, the terms of the Additional Clauses shall prevail.

Patent License Drafter's Notes

2010-08-23T20:59:58Z

Thinh:

'''Drafter’s Notes'''

See also [[Model Patent License]] which is superseded by [[CC Public Patent License]]

'''Purpose:'''

These Drafter’s Notes (“Notes”) capture many of the comments that were received during the Public Comment Period, explain how those comments are reflected in the final Public Patent License (“License”), and describe how other policy considerations shaped the drafting of the License. You may refer to these Notes to help understand our views of the issues presented by the comments and how I attempted to resolve those issues. These Notes are not intended to be part of the License and may not be used to change or add additional terms to the License, although they may be helpful in interpretation of the License when there is ambiguity. These Notes are not intended to provide legal advice or substitute for legal counsel. However, you may wish to consider them, with the aid of your legal counsel, prior to using the License.

The commentary is arranged in an order corresponding to the sections that appear in the License. In order to protect the anonymity of commentators, I do not identify the source of particular comments, and in some cases, multiple comments are summarized together for ease of reference. Some comments that resulted in minor or clarifying changes to the draft of the License during the Public Comment Period are not discussed in detail here, but are reflected in the Change Log. You do not have to review the Change Log in order to review the final License, but if you have been following the drafting process or if you have already reviewed an earlier version of the License, you may wish to refer to the Change Log for a quick summary of changes made leading to the final draft.

'''Title'''

A number of commentators suggested changing the title of the License. One commentator expressed the concern that the name “Model Patent License” implies that the License has broader applicability or acceptance than is warranted or that it is more specifically suitable than other patent licenses that already exist. This was not our intention. The current working title is “CC Public Patent License.”

'''Preamble'''

Some commentators expressed concern with the statement in the preamble that this License is intended for users who are maintaining their patents primarily for defensive purposes. They point out that in some cases, a public offer to license a patent may reduce the effectiveness or deterrent effect of such defensive use by establishing a presumptive measure (cap) on economic damages that may be proven in the event of infringement. They suggest that high-value or core business patents, even if held defensively, should be reserved. I think it is best that you consult with your attorney on the most effective patent licensing and portfolio management strategy for your unique situation, and I do not intend to recommend a particular patent licensing approach for every situation. Accordingly, I have deleted the reference to defensive use of patents.

Some commentators also suggested that our comment regarding the “offer conditions” are too narrow. For example, they suggested that an offeror could specify that those parties who are currently in patent litigation with the offeror or who have infringed the offeror’s patents be excluded from the offer. Otherwise, it is pointed out, an infringer could wait until its infringement is discovered and then take a license, with the result that it would only be liable for past infringement but it could avoid an injunction against future infringement by accepting a license. I agree with this and so added an additional sentence that the offer may be so limited.

'''Definitions'''

One of the issues that arose early in the drafting process was what type of model to use for identifying those patents that are being licensed. The simplest model is enumeration—a list of patents that are being offered for license. However, one concern expressed by several commentators was that this would be too narrow: there might be daughter applications such as continuations, continuations-in-part, and divisionals that issue later and that may not be readily discoverable by a licensee through due diligence. For this reason, we added continuations, continuations-in-part, divisionals, foreign counterparts, etc. to the definition of “Licensed Patent Rights” to supplement the enumeration approach. Nevertheless, a related issue arose with respect to so-called “grandparent” applications or prior dominant patents that may block the use of the licensed patents. For example, a licensor may license an improvement patent without including the dominant patent required to practice that improvement patent. In that case, an unwary licensee may wrongly conclude that it is obtaining all rights needed from the licensor to practice the invention, only to be confronted with an infringement claim from the licensor later for a dominant patent. Some courts have addressed the inequitable effects of this type of problem by finding implied licenses. However, for drafting purposes, I did not want to rely on implied license theories.

One suggestion was to include grandparent applications, just like daughter applications. However, this has some interpretive problems, insofar as the claims of a grandparent application cannot be directly related to the claims of daughter applications using clear rules such as priority, because the priority rules allow only the claims of a daughter application to claim back through the grandparent application’s specifications, not its own claims. This imperfect mapping would produce ambiguities in terms of what is being licensed, and I want to avoid any ambiguity that would result in future undesirable surprises for licensees and licensors. The virtues of clarity and predictability argue against such an approach.

Other commentators suggested that we should not overstate the problem about grandparent applications or dominant patents because unlike daughter applications, which may be yet unpublished, grandparent applications and dominant patents are discoverable by the licensee with a modest degree of due diligence, since they will either have been published or would be referenced by the licensed patents. While this is true of transactions between sophisticated licensors and licensees, there may be other situations where the licensee lacks the sophistication or resources to conduct adequate patent due diligence.

Therefore, a second alternative licensing approach is needed for those situations where the licensor wants to assure the licensee that it has licensed all claims necessary to practice (and that are owned or controlled by the licensor). Under this approach, the licensor designates a “Specification” that it wishes to license—this could be a technical disclosure, a patent specification, or a technical standard, for example—and that all claims that are taught by that specification will be licensed as “Necessary Patent Claims”. To prevent “scope creep” caused by an overly expansive interpretation of the Specification, a clarification is made that only claims that are taught by the Specification are licensed and not merely enabling claims that are not the principle subject matter of the specification. (For example, a purely software specification does not include computer hardware claims merely because a computer is eventually needed to run the software. However, if a Specification has both specific hardware and software teachings, then both types of claims would be within scope).

With these two alternative ways of licensing patents, a licensor may either choose to be very specific with the patents it wishes to license by taking the enumeration approach (in which case, the licensee should be warned to conduct thorough patent diligence prior to accepting the license or practicing the invention), or it may seek to assure the licensee that it has indeed licensed all necessary claims by taking the “Specification” route. Thus, these two approaches should be seen as representing two ways of allocating the due diligence burden between the licensor and licensee.

Several commentators suggested that we added more specific branding requirements (similar to attribution requirements) for licensed products or services. Other commentators argued that it is unusual for licensees to agree to branding requirements as part of a patent license. Yet others argued that licensors would not necessarily want to impose branding requirements (which would involve granting a trademark license) unless it has some assurance of quality control. A trademark license without adequate policing (sometimes called a “naked license”) can result in loss of a trademark right. Furthermore, these commentators point out that trademark licensing accompanied by certain forms of technical guidance or assistance can result in a finding of a “franchise” in some states. Franchises are generally trademark licenses that are accompanied by consideration and a business plan (here, the patent license itself and associated know-how may supply the “business plan,” which is sometimes interpreted broadly). Franchise rules are complex, may require state-by-state registration formalities, and carry penalties including rescission and treble damages for failure to follow formalities. Due to these considerations, I consider a “branding” clause to be a “high risk” clause, and therefore I will leave open the possibility of implementing it through the “Additional Clauses” (see below), rather than providing a standard default.

'''Grant of License'''

2.1 One commentator suggested adding the phrase “under the Licensed Patent Rights” to make clear that this license is restricted in scope to the enumerated patents. This clarification is useful, so I made the change.

Several commentators suggested that the original paragraph was awkwardly worded and suggested a re-arrangement of clauses to make it flow better. I agreed and made the change. In particular, the phrase “under the Licensed Patent Rights, in the Territory, and during the Term” should be interpreted to apply to the whole paragraph.

2.2 This parallel license grant was added in order to implement the alternative, “Specification” mode of licensing discussed above. While it is technically possible to include both types of license grants (the enumeration approach of 2.1 and the specification approach of 2.2), and they would operate a two separate types of licenses that do not limit each other, for simplicity and ease of reference, it is recommended that the licensor pick one or the other. This can be accomplished simply by choosing whether to fill out the Licensed Patent Rights list or the Specification in the License Data Record (but not both). If the licensor fills both fields, then it will be granting two separate licenses, but the enumerated list does not operate as an additional limitation on the claims licensed under the Specification.

2.3 One commentator suggested that the ability to limit the “have made” right be extended to each of the other rights under patent. However, due to the unusual and complex nature of such limitations, I decided to leave this sentence unchanged and recommend that such additional limitations, if required, be implemented via the “Additional Clauses” mechanism.

2.4 One commentator suggested that the treatment of exclusive patent rights is centered on U.S. law. For example, under U.K. law, the terms “disposal” and “offer to dispose of” are used in place of “sale” and “offer for sale.” However, rather than extend the list of exclusive rights terminology to include variations from every country, I have opted to make the clarification that these rights include their foreign equivalents in order to generalize to all jurisdictions.

'''4. Reports'''

A number of commentators questioned why any reports would be necessary for non-royalty licenses. Other commentators expressed concerns that only low-value or insignificant patents would be offered under this license, limiting its impact. In order to provide empirical evidence for impact, licensors are encouraged to work with licensees to collect statistics and empirical measures of impact so that the impact of offering public patent licenses through clearinghouses can be measured and reported. In order to accomplish this goal, there must be an obligation on licensees to report impact statistics back to the licensor, and this section provides a mechanism to do that.

Some commentators expressed concern that the data reported by the licensee may contain confidential business information or plans. This section contemplates that only publicly available information will be reported by the licensor as impact statistics, or if confidential information is involved, that the licensor would work with the licensee to remove any confidential information prior to publishing any statistics, thus reporting only anonymous or aggregated data that does not identify the licensee if possible. The level of aggregation or de-identification will depend on the specific circumstances and the sensitivity of the data provided. Thus, licensees and licensors may wish to enter into supplementary confidentiality agreements when warranted regarding treatment of sensitive information. In any event, this section should be interpreted as requiring the licensee to provide at least publicly available data and providing the licensor with reasonable cooperation in documenting public or social impact.

Some commentators asked whether the licensee or the licensor will create use case studies to highlight the impact of patent licensing. Both licensees and licensors may publish such studies. However, at a minimum, it is contemplated that the licensee will cooperate with the licensor so that the licensor may publish such impact studies, if the licensor so chooses. Nothing prevents both parties from independently publishing their own use cases and studies. However, the parties should keep in mind their obligations not to imply endorsement or make other use of the other party’s trademarks under Section 8.

'''5. Term'''

A number of commentators suggested that the Term of the agreement be made flexible in order to accommodate expiration of the license before the expiration of the patents themselves. Other commentators, however, expressed the concern that this could cause a trap for the unwary, causing some licensees to rely on a license that has a date certain expiration without taking this into account. I think that this concern would be lessened if the fact that the license expires before the patents is specifically called out. As a result, I added the qualification “Unless otherwise specified,” in order to leave open the possibility of future support for date certain expirations. For now, neither the License Data Record nor the metadata will specifically support such early expiration. However, it is possible to implement such a condition via the “Additional Clauses” mechanism discussed below.

Some commentators pointed out that 11 U.S.C. § 365(e)(1) prevents a licensor from automatically terminating a license in the event of the licensee’s bankruptcy. This would invalidate the third paragraph of this section. Note that this paragraph has been qualified by “to the extent permitted by applicable law.” This qualification saves this clause from invalidity (where contrary to applicable law) but cannot make it enforceable. Therefore, a licensor is cautioned against relying on the enforceability of this provision in all jurisdictions. When this is an important issue, further research on country-specific bankruptcy laws is necessary.

Commentators disagreed over the inclusion of clause (a) of paragraph 4 (defensive termination). Clause (a) reads “unless (a) such claim is first asserted after Licensor has asserted a claim of patent infringement against Licensee or any third party with respect to products or services of Licensee.” Those who support the inclusion of this clause argue that defensive use of patents by the licensee should be allowed, without triggering termination rights of the licensor, when it is asserted in response to a licensor’s first offensive use of a patent unrelated to the license. This fits best with their intuition of what “defensive” termination means. Others, however, opined that it is customary that once patent litigation has been initiated, whether by the licensee or licensor, the licensor should have the option of terminating all licenses, whether or not such license is related to the patents that are the subject of the suit, and regardless of who initiated the lawsuit, so that the licensor may make maximum use of its patent portfolio for litigation purposes.

Given that my goal is to strike a fair balance between the interests of the licensor and licensee, I have to consider the effect of removing this clause. If removed, it would allow the licensor to terminate the license whenever the licensee asserts a patent-based counter-claim, even if the licensor first sued the licensee on an unrelated patent. While it is not my intention to preclude the licensor from pursuing other patent claims against the licensee, if it chooses to do so, it should not be able to also “pile on” patent rights that it has already licensed if the licensee does what it normally must in order to seek a compromise—namely, to assert those patents that it has maintained defensively by way of counterclaim. To do otherwise would be to make licensing a high-risk activity for licensee, that is, either give up its right to assert its patents defensively in the event that the licensor chooses to pursue a patent lawsuit against it, or risk losing a patent license that it has relied upon to build and market products and possibly face an injunction. Such a dilemma would not be consistent with our goal of providing a dependable license that can be relied upon to make investment and technology adoption decisions.

A few commentators suggested that if the licensee terminates the license for convenience, it should not have the right to take a new license under a general public patent license offer unless the licensor specifically agrees. This is in order to avoid certain types of strategic behavior intended to avoid paying maintenance fees or other types of annual fees. I agree with this and have made the corresponding change to the license.

'''6. Warranties'''

Some commentators noted the absence of any licensee warranties. An early version of the draft did contain licensee warranties, but other commentators suggested that those warranties (such as compliance with law and applicable regulations) were best dealt with through indemnification, because violation of such warranties should not necessarily lead to license termination provided that the licensee fully carries out its obligations to indemnify. I agreed with this and thus removed licensee warranties.

Other commentators suggested that the licensor should provide warranties that it has licensed all necessary rights or that it is unaware of any infringement. However, opposing commentators noted that such warranties are very unusual, and it is customary for a patent license to assume that the license itself does not give any assurance of the right to practice (i.e., freedom from infringement of dominant patents). Furthermore, issues regarding the possible existence of the licensor’s own dominant or related patents have been discussed above and need not be dealt with through the warranty section (or through breach of warranty remedies, which would create a chilling effect on licensor participation).

'''7. Indemnification'''

Some commentators suggested making the indemnification provision mutual (i.e., provide for an indemnification right for the licensee as well as licensor). However, this is very unusual and goes against industry custom, in which the licensor’s primary “obligation” under a patent license is to refrain from suing the licensee for infringement. Typically, the licensor does not warrant that its rights are valid or that it will take other affirmative duties. Therefore, there is very little basis for the licensor indemnifying a licensee.

Several commentators noted with approval the right of the licensor to take over the defense of any claim (at its own expense) that involves an adjudication of the licensor’s patent rights. Given the importance of these rights, most licensors would not want to leave their defense or settlement in the hands of a non-exclusive licensee.

'''8. Trademark and Attribution'''

One commentator noted that some patent owners would not want their non-exclusive licensees to be marking products with patent markings without their permission. Therefore, this should be made at the option of the licensor, but not automatic. I agreed with this and added a corresponding qualification: “At Licensor’s request”.

One issue that commentators requested clarification about was whether the licensor or the licensee would be preparing the use cases that document the impact of the licensed patents. As discussed above, while there is nothing to prevent both parties from creating and publishing their own use cases, the intention here is require the licensee to provide reasonable data and statistics that the licensor would need in order to compile use cases and statistics that provide empirical evidence for the impact of its licensing strategy. Therefore, this provision contemplates that the licensor will be preparing a use case with data and support from the licensee. Once published, such use cases may be distributed by both parties. However, aside from the distribution of such case studies in unmodified form, neither party may use the trademarks of the other or otherwise imply an endorsement by the other. No general trademark license is implied.

'''9. General'''

A number of commentators suggested that the insurance requirement be made more specific. However, as the size of licensees and the extent, nature, risks, and markets of the possible exploitation of patent rights vary considerably, there is no “one-size fits all” approach to determining the appropriate amount of insurance. Thus, I define it at a “prudent” level so that the above factors can be taken into account.

'''10. Additional Clauses'''

I added this clause in order to anticipate future extensions of the license through CC-supported modular clauses as well as to make it possible to use the core license with unsupported “custom” clauses, when the licensor chooses to do so.

The CC-supported use case involves adding additional clauses in the future that we may discuss with the community and that we are convinced will make the license better or add additional options for which there is community demand. Such clauses could include, for example, date-certain expiration of the Term, options for additional limitations to the license scope, or alternative reporting requirements. Such supported additional clauses would be added after consultation with our board and our community through a public feedback process.

The unsupported use case involves a licensor who wishes to implement a feature that we do not currently support in our standard license. These could include certain “high-risk” clauses such as branding and grant-backs, that a licensor may wish to implement only after careful consultation with its attorneys or other types of clauses that CC chooses not to support.

For example, I have already discussed above why branding and trademark license clauses should be reviewed carefully in light of trademark licensing practices, policies, and franchise law. Due to the complex nature of this analysis, it may be appropriate for some licensors to provide such branding or trademark licenses, while doing so may raise serious problems for other licensors. Creative Commons would not want to implement this as check-the-box option, because it poses a risk about which some licensors may not be aware. On the other hand, a licensor who chooses to draft their own clause and implement it through the Additional Clauses mechanism is more likely to have considered the issue carefully and is prepared to take the risks involved.

Another example of such a clause is a grant back. Several commentators have suggested that we implement some kind of grant back. Some have suggested that we implement a type of “share alike” for patents that would require licensees to grant rights in improvement patents under the same license, whether to the original licensor or to the community as a whole. Prior experiments with such share-alike licensing mechanisms in a community licensing context (or patent pools) have met with decidedly mixed results. Nevertheless, a grant-back is a well-known and accepted practice in traditional patent licenses in order to ensure that the licensor has access to improvements and freedom to operate. However, the use of grant back clauses carries some antitrust risk. The 1995 Federal Antitrust Guidelines for Licensing Intellectual Property recognizes that certain grant-backs can pose antitrust concerns where the licensor has market power. Grant backs are analyzed under a rule of reason standard, and courts have also found some grant backs to lead to antitrust violations (i.e., the use of grant back clauses by licensors having market power to achieve a monopoly) (see, e.g., U.S. vs. Alumina and U.S. vs. General Electric). Compulsory grant back clauses raise antitrust concerns because they may reduce the licensee’s incentive innovate relating to improvements. Thus, grant backs are appropriate for some licensors but no necessarily “safe” for everybody, and they deserve special analysis and review by appropriate antitrust counsel. For this reason, I decline to implement a standard check-the-box grant back option, but I leave open the possibility that a licensor may supply such an obligation through the Additional Clauses mechanism.

Licensees should also be alert whenever there are Additional Clauses that are not supported or endorsed by Creative Commons that such clause may require special scrutiny because they have not been reviewed by Creative Common or subjected to public comment, and licenses which contain unsupported Additional Clauses may not be branded or labeled as standard CC licenses.

CC Public Patent License

2010-08-23T20:58:47Z

Thinh:

'''CC Public Patent License'''
Also see [[Patent License Drafter's Notes]] and [[Patent License Change Log]]

'''How to Use this CC Public Patent License'''

This CC Public Patent License is intended to be used as part of a public license offer to license patent rights. A public license offer provides two main benefits:

a) it is publicly accessible on the Internet: anyone can read the full terms of the offer;
b) it is an “live” offer so that anyone can accept it if they agree to all its terms.

To have these benefits, the offer must be openly published, and it must be capable of being accepted by anyone on a non-discriminatory basis and without additional negotiation. Used in the right context, this type of offer can provide benefits for both licensor and licensee. A licensor can use a public license offer to publicize its willingness to license patent rights on reasonable and non-discriminatory terms, thus attracting innovators and potential licensees who might otherwise not have been either aware that such patent rights were available for license or who might otherwise be unwilling to approach the licensor due to anticipated, significant transaction costs typically associated with negotiating a favorable license. A potential licensee can rely on the public and non-discriminatory availability of this public license offer to make plans and decisions about technology implementation, which in the absence of such offers, would be complicated or impossible.

Patent licenses can be very complicated, particularly when complex commercialization and licensing strategies are involved. So it would be impossible for anyone to write a license that addresses everyone’s needs or fits every scenario. Instead, we developed this Model Patent License Agreement to be simple and easy to understand. It is intended to provide a simple standard model license to make patents available on reasonable and non-discriminatory terms: preferably free of charge and without unnecessary field limitations. If you need to implement a more complex licensing strategy, then this may not be the right tool for you. In any case, please consult your own attorney before making an offer. Creative Commons is not a law firm, so we cannot provide you with advice on whether to use this instrument or how to tailor it to suit your needs or business strategy.

To use this Model Patent License Agreement, you need to supply some basic information, which is found in the License Data Record (see Addendum A). This information should be supplied in a standard electronic format for ease of reference, but you can use other formats if you wish. Some basic information is required in order to make a complete public license offer, while other fields may be optional. If you do not fill out the optional fields, then they will be defined by default provisions in the license. IN MOST CASES, THE DEFAULT OPTION ALLOWS FOR THE MOST PERMISSIVE AND FREE USE BY THE LICENSEE. For example, by default, there are no field of use restrictions, fees, or royalties. You may also add limitations to the offer itself (for example, an expiration date for the offer). In addition, you may specify that the offer is not available to parties with whom you are engaged in patent litigation or parties who are or have been infringing the patents being offered. We do not encourage you to impose other offer limitations beyond this. However, in some circumstances, it may be reasonable to specify that anyone currently engaged in litigation with you that would otherwise give you grounds for terminating the license (see Section 5) may not accept the offer in the first place.

Together, the License Data Record and the CC Public Patent License will be become your public license offer. When such an offer is made available on your Web site, or through clearinghouses like GX, anyone eligible to accept the offer may accept it through a registration and acceptance process. As part of that process, the Licensee will supply the Licensee-specific information needed to complete the License Data Record. This process, and the transaction record, then completes the license agreement.

'''CC PUBLIC PATENT LICENSE'''

The owner of the Licensed Patent Rights, as defined below (the “Licensor”), grants a license on the terms and conditions set forth in this CC Public Patent License (the “Agreement”) to the person or entity accepting this Agreement (the “Licensee”).

'''1. DEFINITIONS'''

“Field of Use” means the fields of use specified in the License Data Record. If not so specified, Field of Use means all fields of use.

“License Data Record” means a written or electronic document that provides the information specified in Addendum A.

“Licensed Patent Rights” means (a) the patents and patent applications listed in the License Data Record, (b) all divisionals, continuations, and foreign counterpart applications claiming priority from any patent or patent application described in (a), (c) those claims of any continuations-in-parts that claim priority exclusively from the patents or patent applications described in (a) and (b); (d) all patents issuing from patent applications included in (a) through (c); and (e) all reissues, reexaminations, renewals, and extensions of any patents included in (a) through (d).

“Licensed Process(es)” means a process the practice of which would infringe, but for the license granted in this Agreement, one or more claims of the Licensed Patent Rights.

“Licensed Product(s)” means a machine, article of manufacture, composition of matter, or other product (a) the manufacture, use, sale, offer for sale, or import of which would infringe, but for the licenses granted in this Agreement, one or more claims of the Licensed Patent Rights, or (b) made or directly obtained by a Licensed Process.

“Necessary Patent Claims” means any patent claim(s), now owned, controlled, or hereafter acquired by Licensor in any patent that Licensor has the right to license, that would be infringed, but for the license granted in Section 2.2, by the making, using, selling, or importation of processes or products that implement the specific teachings of Specification, but excluding any claims that are not necessary to implement the Specification as written or that may enable the Specification but are not the principle subject matter of the Specification.

“Specification” means the specification, if any, set forth in the License Data Record by the "Specification" entry.

“Territory” means a geographical or jurisdictional designation, as specified in the License Data Record. If not so specified, Territory means worldwide.
“Term” means the period of time specified in Section 5.

'''2. GRANT OF LICENSE'''

2.1 Subject to the terms and conditions of this Agreement and the License Data Record, Licensor grants to Licensee under the Licensed Patent Rights, in the Territory, and during the Term, a non-exclusive, non-transferable (except as expressly permitted in Section 9) license, without a right to sublicense, to make, use, sell, offer for sale, and import Licensed Products and to practice Licensed Processes, in each case, in the Field of Use.

2.2 If the License Data Record contains a Specification, then subject to the terms and conditions of this Agreement and the License Data Record, Licensor grants to Licensee under the Necessary Patent Claims, in the Territory, and during the Term, a non-exclusive, non-transferable (except as expressly permitted in Section 9) license, without a right to sublicense, to make, use, sell, offer for sale, and import products that implement the Specification and to practice processes that implement the Specification, in each case, in the Field of Use.

2.3 The above licenses include the right to have made, except as otherwise specified by the License Data Record.
2.4 The exclusive rights referenced above (such as make, sell, and use) shall also be interpreted to include substantially similar exclusive patent rights (such as disposal and offer to dispose) in other countries, when applicable.

'''3. FEES AND OTHER CONSIDERATION'''

Fees, royalties, or other consideration, if any, shall be specified in the “License Fees and Royalties” section of License Data Record. If none are specified, then no payment is required under this Agreement.

'''4. REPORTING'''

Licensee shall provide quarterly reports to Licensor, along with any required payments, in sufficient detail to verify the calculation of royalties owed, including without limitation, gross receipts from the use, sale, or other disposition of Licensed Products and/or from the practice of a Licensed Process, deductions taken for calculating revenues, and the total royalty due. If no royalties are due, then the report shall so specify.
In addition, then Licensee shall instead provide such reports as may be reasonably requested by Licensor to perform the analysis and activities described below.

Licensor may use the information provided by Licensee to analyze and publish metrics and impact statistics related to the use of the Licensed Patent Rights and have others do so, as long as such information is used only in aggregated and anonymous form. Licensor may also use or disclose the information to enforce this Agreement, and/or to comply with a court order, or otherwise as required by law.

'''5. TERM'''

Unless otherwise specified, the Term of this Agreement commences on its execution and ends upon the expiration, abandonment, or final invalidity of all claims within the Licensed Patent Rights, unless earlier terminated as permitted below.

Licensor may terminate this Agreement in the event of a material breach of this Agreement that is not cured within thirty (30) days after Licensor provides written notice to Licensee specifying such breach.

To the extent permitted by applicable law, Licensor may terminate this Agreement immediately in the event Licensee becomes insolvent, files for bankruptcy protection, makes an assignment for the benefit of creditors, or becomes the subject of involuntary bankruptcy proceedings. Licensee shall immediately notify Licensor upon the occurrence of one of these conditions.

Licensor may terminate this Agreement upon written notice to Licensee in the event that Licensee asserts a claim of patent infringement against Licensor or any third party with respect to products or services of Licensor, unless (a) such claim is first asserted after Licensor has asserted a claim of patent infringement against Licensee or any third party with respect to products or services of Licensee, or (b) Licensee fully withdraws such claim within ten (10) days after being notified by Licensor. For purposes of this paragraph, “Licensor” and “Licensee” shall also include their respective affiliates.

Licensee may terminate this Agreement by providing Licensor with at least thirty (30) days prior written notice, provided that if Licensee terminates this Agreement, it shall not be eligible to reinstate this license or accept any other general license offer with respect to the subject matter of this Agreement, unless the Licensor specifically agrees otherwise in writing.
Upon any termination of this Agreement, Licensee shall provide Licensor with a final royalty report within thirty (30) days after termination, along with full payment of all amounts due. The following sections shall also survive termination of this Agreement: 6, 7, 8, 9, and 10.

'''6. WARRANTIES'''

Licensor warrants that it has the right and authority to grant the rights and licenses granted in this Agreement.

Licensor disclaims all other warranties, representations, and conditions, whether express, implied, or statutory, including, but not limited to, the warranties of merchantability, fitness for a particular purpose, or non-infringement.

Without limiting the generality of the above disclaimer, Licensor makes no representation or warranties that: a) it will prosecute or continue to prosecute, maintain, or defend any patent or patent application, b) it will bring an infringement suit, assert any claim against third parties accused of infringement, or otherwise enforce any patent or patent application, c) it will join as a party to any suit or legal action, d) it will provide Licensee with know-how or assistance necessary or useful to practice the Licensed Patent Rights, e) the Licensed Patent Rights are valid or enforceable, or f) the Licensed Products or Licensed Processes may be exploited or practiced without infringing third party patents.

'''7. INDEMNIFICATION'''

Licensee shall indemnify and hold Licensor, and its officers, directors, employees, representatives, agents, and affiliates harmless from any and all damages, liabilities, costs, and expenses (including reasonable attorneys’ fees) arising out of or caused by Licensee’s practice or exploitation of the license granted by this Agreement or by the sale, use, or exploitation of Licensed Products or Licensed Processes by or under the authority of Licensee.

Licensor shall notify Licensee promptly of any claim of which Licensor is aware and for which Licensor seeks indemnification. Licensee shall have the right to control the defense of such claims, except to the extent that the scope or validity of the Licensed Patent Rights are at issue, in which case Licensor may assume the sole control and defense of such claims at its own expense.

'''8. TRADEMARKS AND ATTRIBUTION'''

At Licensor’s request, Licensee agrees to mark Licensed Products and their packaging with patent markings as required by applicable law to preserve Licensor’s rights and otherwise enforce the Licensed Patents.

At Licensor’s request, Licensee shall reasonably cooperate with Licensor and provide such information as may be necessary for Licensor to prepare use case studies that document Licensee’s use of the Licensed Patent Rights and related usage or impact metrics. Each party may copy, distribute, and publish such use case studies, including by means of its Web sites, and authorize others to do so, to demonstrate the uses and impact of the technology.

Except solely as permitted above, neither party may use the other’s trademarks, service marks, trade names, company names, or logos (“Marks”) to offer, market, sell, or otherwise endorse any product or service or to engage in any other trademark usage, unless with the prior written authorization of the owner. Any uses of a party’s Marks shall inure solely to the benefit of that party, along with all goodwill associated therewith.

'''9. GENERAL PROVISIONS'''

Notices to the parties shall be provided at the address set forth in the License Data Record, unless a party provides written notice to the other party of a change of address. Notices may be provided by personal delivery, express delivery service, or registered mail. Notices shall be effective on the date received.

Nothing in this Agreement constitutes the parties as partners, joint venturers, principal and agent, or fiduciaries of each other.

A delay or failure in enforcing a right or obligation under this Agreement shall not be construed as an implied waiver of that right or obligation or of any other provision or breach under this Agreement. A waiver under this Agreement is only effective if made in writing and signed by the party granting the waiver.

An amendment or modification of this Agreement is effective only if made in writing and signed by the duly authorized representatives of the parties.
This Agreement constitutes the entire agreement between the parties as to the subject matter herein and supersedes all prior or contemporaneous negotiations, agreements, representations, memorandums, and understandings.

If any provision of this Agreement is deemed to be invalid or unenforceable, then that provision, to the extent unenforceable, is severable and the remainder of this Agreement shall continue in full force and effect.

Licensee may not assign any of its rights under this Agreement, delegate any of its obligations under this Agreement, or otherwise transfer this Agreement, without the prior written consent of Licensor, and any attempted assignment, transfer, or delegation shall be voidable by Licensor. Any change of control of Licensee shall be deemed an attempted transfer of this Agreement. Licensor may assign this Agreement in connection with a sale, merger, or transfer of the assets to which this Agreement relates, provided that the assignee assumes all rights and obligations under this Agreement.

Licensee agrees to maintain insurance in amounts prudent for Licensee’s operations and adequate to discharge Licensee’s obligations under Section 7.

This Agreement is governed by and interpreted in accordance with the laws of the jurisdiction set forth in the License Data Record, if any. The parties agree that the proper jurisdiction and venue for any disputes arising out of this Agreement shall be in the courts of the venue specified in the License Data Record, if any. If none are specified, then jurisdiction and venue shall be deemed to be in the relevant jurisdiction for Licensor’s address, as stated in the License Data Record.

No rights or forbearances are granted, or may arise (whether through implication, estoppel, exhaustion or otherwise) other than those expressly granted in this Agreement.

EXCEPT FOR THE OBLIGATION TO RENDER CONSIDERATION (IF ANY) IN SECTION 3, THE INDEMNIFICATION OBLIGATIONS IN SECTION 7, AND INFRINGEMENT OF ANY TRADEMARK OR INTELLECTUAL PROPERTY RIGHT, IN NO EVENT WILL EITHER PARTY HAVE ANY LIABILITY OF ANY KIND WHATSOEVER TO THE OTHER ARISING OUT OF THIS AGREEMENT, INCLUDING BUT NOT LIMITED TO, FOR INDIRECT, INCIDENTAL, CONSEQUENTIAL OR SPECIAL DAMAGES, EVEN IF ADVISED OF THE POSSIBILITY OF SUCH DAMAGES.

'''10. ADDITIONAL CLAUSES'''

Additional Clauses (if any) contained in the Licensed Data Record are hereby incorporated into this Agreement by reference. In the event of any conflict between the terms of this Agreement and the Additional Clauses, the terms of the Additional Clauses shall prevail.

'''Addendum A'''

The purpose of this Addendum is to provide guidelines for a License Data Record, which may be either in paper or electronic form. This License Data Record is unique to each transaction and must specify a minimum information set in order to give effect to the Patent License Agreement.

To constitute an agreement that incorporates the terms of the Patent License Agreement, a License Data Record must:

1) reference this Agreement by linking to the URL of the Patent License Agreement deed or legal code, attaching a copy of it, referencing it by name, or by any other means that uniquely and unambiguously identifies it; AND

2) provide the following information:

a. Name of Licensor: the name of the person or entities offering this license,

b. Licensor Contact Information: address, contact person, phone number, fax, and/or email,

c. Name of Licensee: the name of the person or entities accepting this license,

d. Licensee Contact Information: address, contact person, phone number, fax, and/or email,

e. Licensed Patent Rights: a list of patents and patent applications to be licensed,

OR

Specification: a written specification of the invention or technology to be licensed.

f. License Fees, Royalties, and other consideration (optional): a description of any required fees, royalties, or other consideration, including without limitation any requirements relating to improvements or innovations,

g. Field of Use (optional): a description of any scope of use limitations associated with the license,

h. “Have Made” Limitations (optional): any limitations to the license to “have made,”

i. Choice of Law (optional): jurisdiction for choice of law,

j. Choice of Venue (optional) jurisdiction for legal venue,

k. Territory (optional): geographic limitations of the license,

l. Offer Limitations (optional): any limitations associated with the offer, and

m. Additional Clauses

'''Sample License Data Record'''

This License Data Record references and incorporates the GX Model Patent License Agreement (located at URL: _________)

Licensor Name:
Licensor Contact Address:

_____________________________

_____________________________

_____________________________

Phone: _______________________

Fax: _________________________

Email: ________________________

Licensee Name:

Licensee Contact Address:

_____________________________

_____________________________

_____________________________

Phone: _______________________

Fax: _________________________

Email: _____________________________

Licensed Patents Rights:

Patent No. ____________________________

Patent Application No.__________________ …

OR

Specification (attached a detailed specification or provide a URL):

License Fees & Royalties (optional):

Field of Use (optional):

Have Made Limitations (optional):

Choice of Law (optional) City_____________, State_____________

Choice of Venue (optional) City_____________, State_____________

Territory (Optional)

Offer Limitations (Optional)

Additional Clauses (Optional)

CC Public Patent License

2010-08-23T20:58:23Z

Thinh:

'''CC Public Patent License'''
Also see [Patent License Drafter's Notes] and [Patent License Change Log]

'''How to Use this CC Public Patent License'''

This CC Public Patent License is intended to be used as part of a public license offer to license patent rights. A public license offer provides two main benefits:

a) it is publicly accessible on the Internet: anyone can read the full terms of the offer;
b) it is an “live” offer so that anyone can accept it if they agree to all its terms.

To have these benefits, the offer must be openly published, and it must be capable of being accepted by anyone on a non-discriminatory basis and without additional negotiation. Used in the right context, this type of offer can provide benefits for both licensor and licensee. A licensor can use a public license offer to publicize its willingness to license patent rights on reasonable and non-discriminatory terms, thus attracting innovators and potential licensees who might otherwise not have been either aware that such patent rights were available for license or who might otherwise be unwilling to approach the licensor due to anticipated, significant transaction costs typically associated with negotiating a favorable license. A potential licensee can rely on the public and non-discriminatory availability of this public license offer to make plans and decisions about technology implementation, which in the absence of such offers, would be complicated or impossible.

Patent licenses can be very complicated, particularly when complex commercialization and licensing strategies are involved. So it would be impossible for anyone to write a license that addresses everyone’s needs or fits every scenario. Instead, we developed this Model Patent License Agreement to be simple and easy to understand. It is intended to provide a simple standard model license to make patents available on reasonable and non-discriminatory terms: preferably free of charge and without unnecessary field limitations. If you need to implement a more complex licensing strategy, then this may not be the right tool for you. In any case, please consult your own attorney before making an offer. Creative Commons is not a law firm, so we cannot provide you with advice on whether to use this instrument or how to tailor it to suit your needs or business strategy.

To use this Model Patent License Agreement, you need to supply some basic information, which is found in the License Data Record (see Addendum A). This information should be supplied in a standard electronic format for ease of reference, but you can use other formats if you wish. Some basic information is required in order to make a complete public license offer, while other fields may be optional. If you do not fill out the optional fields, then they will be defined by default provisions in the license. IN MOST CASES, THE DEFAULT OPTION ALLOWS FOR THE MOST PERMISSIVE AND FREE USE BY THE LICENSEE. For example, by default, there are no field of use restrictions, fees, or royalties. You may also add limitations to the offer itself (for example, an expiration date for the offer). In addition, you may specify that the offer is not available to parties with whom you are engaged in patent litigation or parties who are or have been infringing the patents being offered. We do not encourage you to impose other offer limitations beyond this. However, in some circumstances, it may be reasonable to specify that anyone currently engaged in litigation with you that would otherwise give you grounds for terminating the license (see Section 5) may not accept the offer in the first place.

Together, the License Data Record and the CC Public Patent License will be become your public license offer. When such an offer is made available on your Web site, or through clearinghouses like GX, anyone eligible to accept the offer may accept it through a registration and acceptance process. As part of that process, the Licensee will supply the Licensee-specific information needed to complete the License Data Record. This process, and the transaction record, then completes the license agreement.

'''CC PUBLIC PATENT LICENSE'''

The owner of the Licensed Patent Rights, as defined below (the “Licensor”), grants a license on the terms and conditions set forth in this CC Public Patent License (the “Agreement”) to the person or entity accepting this Agreement (the “Licensee”).

'''1. DEFINITIONS'''

“Field of Use” means the fields of use specified in the License Data Record. If not so specified, Field of Use means all fields of use.

“License Data Record” means a written or electronic document that provides the information specified in Addendum A.

“Licensed Patent Rights” means (a) the patents and patent applications listed in the License Data Record, (b) all divisionals, continuations, and foreign counterpart applications claiming priority from any patent or patent application described in (a), (c) those claims of any continuations-in-parts that claim priority exclusively from the patents or patent applications described in (a) and (b); (d) all patents issuing from patent applications included in (a) through (c); and (e) all reissues, reexaminations, renewals, and extensions of any patents included in (a) through (d).

“Licensed Process(es)” means a process the practice of which would infringe, but for the license granted in this Agreement, one or more claims of the Licensed Patent Rights.

“Licensed Product(s)” means a machine, article of manufacture, composition of matter, or other product (a) the manufacture, use, sale, offer for sale, or import of which would infringe, but for the licenses granted in this Agreement, one or more claims of the Licensed Patent Rights, or (b) made or directly obtained by a Licensed Process.

“Necessary Patent Claims” means any patent claim(s), now owned, controlled, or hereafter acquired by Licensor in any patent that Licensor has the right to license, that would be infringed, but for the license granted in Section 2.2, by the making, using, selling, or importation of processes or products that implement the specific teachings of Specification, but excluding any claims that are not necessary to implement the Specification as written or that may enable the Specification but are not the principle subject matter of the Specification.

“Specification” means the specification, if any, set forth in the License Data Record by the "Specification" entry.

“Territory” means a geographical or jurisdictional designation, as specified in the License Data Record. If not so specified, Territory means worldwide.
“Term” means the period of time specified in Section 5.

'''2. GRANT OF LICENSE'''

2.1 Subject to the terms and conditions of this Agreement and the License Data Record, Licensor grants to Licensee under the Licensed Patent Rights, in the Territory, and during the Term, a non-exclusive, non-transferable (except as expressly permitted in Section 9) license, without a right to sublicense, to make, use, sell, offer for sale, and import Licensed Products and to practice Licensed Processes, in each case, in the Field of Use.

2.2 If the License Data Record contains a Specification, then subject to the terms and conditions of this Agreement and the License Data Record, Licensor grants to Licensee under the Necessary Patent Claims, in the Territory, and during the Term, a non-exclusive, non-transferable (except as expressly permitted in Section 9) license, without a right to sublicense, to make, use, sell, offer for sale, and import products that implement the Specification and to practice processes that implement the Specification, in each case, in the Field of Use.

2.3 The above licenses include the right to have made, except as otherwise specified by the License Data Record.
2.4 The exclusive rights referenced above (such as make, sell, and use) shall also be interpreted to include substantially similar exclusive patent rights (such as disposal and offer to dispose) in other countries, when applicable.

'''3. FEES AND OTHER CONSIDERATION'''

Fees, royalties, or other consideration, if any, shall be specified in the “License Fees and Royalties” section of License Data Record. If none are specified, then no payment is required under this Agreement.

'''4. REPORTING'''

Licensee shall provide quarterly reports to Licensor, along with any required payments, in sufficient detail to verify the calculation of royalties owed, including without limitation, gross receipts from the use, sale, or other disposition of Licensed Products and/or from the practice of a Licensed Process, deductions taken for calculating revenues, and the total royalty due. If no royalties are due, then the report shall so specify.
In addition, then Licensee shall instead provide such reports as may be reasonably requested by Licensor to perform the analysis and activities described below.

Licensor may use the information provided by Licensee to analyze and publish metrics and impact statistics related to the use of the Licensed Patent Rights and have others do so, as long as such information is used only in aggregated and anonymous form. Licensor may also use or disclose the information to enforce this Agreement, and/or to comply with a court order, or otherwise as required by law.

'''5. TERM'''

Unless otherwise specified, the Term of this Agreement commences on its execution and ends upon the expiration, abandonment, or final invalidity of all claims within the Licensed Patent Rights, unless earlier terminated as permitted below.

Licensor may terminate this Agreement in the event of a material breach of this Agreement that is not cured within thirty (30) days after Licensor provides written notice to Licensee specifying such breach.

To the extent permitted by applicable law, Licensor may terminate this Agreement immediately in the event Licensee becomes insolvent, files for bankruptcy protection, makes an assignment for the benefit of creditors, or becomes the subject of involuntary bankruptcy proceedings. Licensee shall immediately notify Licensor upon the occurrence of one of these conditions.

Licensor may terminate this Agreement upon written notice to Licensee in the event that Licensee asserts a claim of patent infringement against Licensor or any third party with respect to products or services of Licensor, unless (a) such claim is first asserted after Licensor has asserted a claim of patent infringement against Licensee or any third party with respect to products or services of Licensee, or (b) Licensee fully withdraws such claim within ten (10) days after being notified by Licensor. For purposes of this paragraph, “Licensor” and “Licensee” shall also include their respective affiliates.

Licensee may terminate this Agreement by providing Licensor with at least thirty (30) days prior written notice, provided that if Licensee terminates this Agreement, it shall not be eligible to reinstate this license or accept any other general license offer with respect to the subject matter of this Agreement, unless the Licensor specifically agrees otherwise in writing.
Upon any termination of this Agreement, Licensee shall provide Licensor with a final royalty report within thirty (30) days after termination, along with full payment of all amounts due. The following sections shall also survive termination of this Agreement: 6, 7, 8, 9, and 10.

'''6. WARRANTIES'''

Licensor warrants that it has the right and authority to grant the rights and licenses granted in this Agreement.

Licensor disclaims all other warranties, representations, and conditions, whether express, implied, or statutory, including, but not limited to, the warranties of merchantability, fitness for a particular purpose, or non-infringement.

Without limiting the generality of the above disclaimer, Licensor makes no representation or warranties that: a) it will prosecute or continue to prosecute, maintain, or defend any patent or patent application, b) it will bring an infringement suit, assert any claim against third parties accused of infringement, or otherwise enforce any patent or patent application, c) it will join as a party to any suit or legal action, d) it will provide Licensee with know-how or assistance necessary or useful to practice the Licensed Patent Rights, e) the Licensed Patent Rights are valid or enforceable, or f) the Licensed Products or Licensed Processes may be exploited or practiced without infringing third party patents.

'''7. INDEMNIFICATION'''

Licensee shall indemnify and hold Licensor, and its officers, directors, employees, representatives, agents, and affiliates harmless from any and all damages, liabilities, costs, and expenses (including reasonable attorneys’ fees) arising out of or caused by Licensee’s practice or exploitation of the license granted by this Agreement or by the sale, use, or exploitation of Licensed Products or Licensed Processes by or under the authority of Licensee.

Licensor shall notify Licensee promptly of any claim of which Licensor is aware and for which Licensor seeks indemnification. Licensee shall have the right to control the defense of such claims, except to the extent that the scope or validity of the Licensed Patent Rights are at issue, in which case Licensor may assume the sole control and defense of such claims at its own expense.

'''8. TRADEMARKS AND ATTRIBUTION'''

At Licensor’s request, Licensee agrees to mark Licensed Products and their packaging with patent markings as required by applicable law to preserve Licensor’s rights and otherwise enforce the Licensed Patents.

At Licensor’s request, Licensee shall reasonably cooperate with Licensor and provide such information as may be necessary for Licensor to prepare use case studies that document Licensee’s use of the Licensed Patent Rights and related usage or impact metrics. Each party may copy, distribute, and publish such use case studies, including by means of its Web sites, and authorize others to do so, to demonstrate the uses and impact of the technology.

Except solely as permitted above, neither party may use the other’s trademarks, service marks, trade names, company names, or logos (“Marks”) to offer, market, sell, or otherwise endorse any product or service or to engage in any other trademark usage, unless with the prior written authorization of the owner. Any uses of a party’s Marks shall inure solely to the benefit of that party, along with all goodwill associated therewith.

'''9. GENERAL PROVISIONS'''

Notices to the parties shall be provided at the address set forth in the License Data Record, unless a party provides written notice to the other party of a change of address. Notices may be provided by personal delivery, express delivery service, or registered mail. Notices shall be effective on the date received.

Nothing in this Agreement constitutes the parties as partners, joint venturers, principal and agent, or fiduciaries of each other.

A delay or failure in enforcing a right or obligation under this Agreement shall not be construed as an implied waiver of that right or obligation or of any other provision or breach under this Agreement. A waiver under this Agreement is only effective if made in writing and signed by the party granting the waiver.

An amendment or modification of this Agreement is effective only if made in writing and signed by the duly authorized representatives of the parties.
This Agreement constitutes the entire agreement between the parties as to the subject matter herein and supersedes all prior or contemporaneous negotiations, agreements, representations, memorandums, and understandings.

If any provision of this Agreement is deemed to be invalid or unenforceable, then that provision, to the extent unenforceable, is severable and the remainder of this Agreement shall continue in full force and effect.

Licensee may not assign any of its rights under this Agreement, delegate any of its obligations under this Agreement, or otherwise transfer this Agreement, without the prior written consent of Licensor, and any attempted assignment, transfer, or delegation shall be voidable by Licensor. Any change of control of Licensee shall be deemed an attempted transfer of this Agreement. Licensor may assign this Agreement in connection with a sale, merger, or transfer of the assets to which this Agreement relates, provided that the assignee assumes all rights and obligations under this Agreement.

Licensee agrees to maintain insurance in amounts prudent for Licensee’s operations and adequate to discharge Licensee’s obligations under Section 7.

This Agreement is governed by and interpreted in accordance with the laws of the jurisdiction set forth in the License Data Record, if any. The parties agree that the proper jurisdiction and venue for any disputes arising out of this Agreement shall be in the courts of the venue specified in the License Data Record, if any. If none are specified, then jurisdiction and venue shall be deemed to be in the relevant jurisdiction for Licensor’s address, as stated in the License Data Record.

No rights or forbearances are granted, or may arise (whether through implication, estoppel, exhaustion or otherwise) other than those expressly granted in this Agreement.

EXCEPT FOR THE OBLIGATION TO RENDER CONSIDERATION (IF ANY) IN SECTION 3, THE INDEMNIFICATION OBLIGATIONS IN SECTION 7, AND INFRINGEMENT OF ANY TRADEMARK OR INTELLECTUAL PROPERTY RIGHT, IN NO EVENT WILL EITHER PARTY HAVE ANY LIABILITY OF ANY KIND WHATSOEVER TO THE OTHER ARISING OUT OF THIS AGREEMENT, INCLUDING BUT NOT LIMITED TO, FOR INDIRECT, INCIDENTAL, CONSEQUENTIAL OR SPECIAL DAMAGES, EVEN IF ADVISED OF THE POSSIBILITY OF SUCH DAMAGES.

'''10. ADDITIONAL CLAUSES'''

Additional Clauses (if any) contained in the Licensed Data Record are hereby incorporated into this Agreement by reference. In the event of any conflict between the terms of this Agreement and the Additional Clauses, the terms of the Additional Clauses shall prevail.

'''Addendum A'''

The purpose of this Addendum is to provide guidelines for a License Data Record, which may be either in paper or electronic form. This License Data Record is unique to each transaction and must specify a minimum information set in order to give effect to the Patent License Agreement.

To constitute an agreement that incorporates the terms of the Patent License Agreement, a License Data Record must:

1) reference this Agreement by linking to the URL of the Patent License Agreement deed or legal code, attaching a copy of it, referencing it by name, or by any other means that uniquely and unambiguously identifies it; AND

2) provide the following information:

a. Name of Licensor: the name of the person or entities offering this license,

b. Licensor Contact Information: address, contact person, phone number, fax, and/or email,

c. Name of Licensee: the name of the person or entities accepting this license,

d. Licensee Contact Information: address, contact person, phone number, fax, and/or email,

e. Licensed Patent Rights: a list of patents and patent applications to be licensed,

OR

Specification: a written specification of the invention or technology to be licensed.

f. License Fees, Royalties, and other consideration (optional): a description of any required fees, royalties, or other consideration, including without limitation any requirements relating to improvements or innovations,

g. Field of Use (optional): a description of any scope of use limitations associated with the license,

h. “Have Made” Limitations (optional): any limitations to the license to “have made,”

i. Choice of Law (optional): jurisdiction for choice of law,

j. Choice of Venue (optional) jurisdiction for legal venue,

k. Territory (optional): geographic limitations of the license,

l. Offer Limitations (optional): any limitations associated with the offer, and

m. Additional Clauses

'''Sample License Data Record'''

This License Data Record references and incorporates the GX Model Patent License Agreement (located at URL: _________)

Licensor Name:
Licensor Contact Address:

_____________________________

_____________________________

_____________________________

Phone: _______________________

Fax: _________________________

Email: ________________________

Licensee Name:

Licensee Contact Address:

_____________________________

_____________________________

_____________________________

Phone: _______________________

Fax: _________________________

Email: _____________________________

Licensed Patents Rights:

Patent No. ____________________________

Patent Application No.__________________ …

OR

Specification (attached a detailed specification or provide a URL):

License Fees & Royalties (optional):

Field of Use (optional):

Have Made Limitations (optional):

Choice of Law (optional) City_____________, State_____________

Choice of Venue (optional) City_____________, State_____________

Territory (Optional)

Offer Limitations (Optional)

Additional Clauses (Optional)

Patent License Change Log

2010-08-23T20:56:12Z

Thinh:

'''Change Log'''

Title:

The “Model Patent License” title has been changed to “CC Public Patent License”.

Preamble:

“How to Use this CC Public Patent License”:

- Added the phrase “on the Internet” to emphasize that the patent offers are Internet-enabled

- Changed “active” to “live”

- Deleted reference to “defensive” use in 3rd paragraph of preamble

- Deleted “or restrictions on the have made right”.

- Added “In addition, you may specify that the offer is not available to parties with whom you are engaged in patent litigation or parties who are or have been infringing the patents being offered.”

Definitions:

- Added: “Necessary Patent Claims” means any patent claim(s), now owned, controlled, or hereafter acquired by Licensor in any patent that Licensor has the right to license, that would be infringed, but for the license granted in Section 2.2, by the making, using, selling, or importation of processes or products that implement the specific teachings of Specification, but excluding any claims that are not necessary to implement the Specification as written or that may enable the Specification but are not the principle subject matter of the Specification.

- Added: “Specification” means the specification, if any, set forth in the License Data Record by the "Specification" entry.

2. Grant of License:

- 2.1: Added “under the Licensed Patent Rights”; added “have made”

- 2.2: Added new paragraph: “If the License Data Record contains a Specification, then subject to the terms and conditions of this Agreement and the License Data Record, Licensor grants to Licensee under the Necessary Patent Claims, in the Territory, and during the Term, a non-exclusive, non-transferable (except as expressly permitted in Section 9) license, without a right to sublicense, to make, use, sell, offer for sale, and import products that implement the Specification and to practice processes that implement the Specification.”; added “have made”

- 2.4: Added new paragraph: “The exclusive rights referenced above (such as make, sell, and use) shall also be interpreted to include substantially similar exclusive patent rights (such as disposal and offer to dispose) in other countries, when applicable.”

3. Fees:
- Added “And Other Consideration” to Section title

4. Reporting:
- Changed: “If no royalties are required,” to “In addition..”

5. Term:

- Added: “Unless otherwise specified..” to first paragraph

- Added: “provided that if Licensee terminates this Agreement, it shall not be eligible to reinstate this license or accept any other general license offer with respect to the subject matter of this Agreement, unless the Licensor specifically agrees otherwise in writing.”

- Added: “and 10” to last paragraph.

8. Trademark and Attribution

- Added: “At Licensor’s request” to first paragraph

10.

Added: “ADDITIONAL CLAUSES”

Additional Clauses (if any) contained in the Licensed Data Record are hereby incorporated into this Agreement by reference. In the event of any conflict between the terms of this Agreement and the Additional Clauses, the terms of the Additional Clauses shall prevail.

Patent License Change Log

2010-08-23T20:55:07Z

Thinh:

'''Change Log'''

Title:

The “Model Patent License” title has been changed to “CC Public Patent License”.

Preamble:

“How to Use this CC Public Patent License”:
- Added the phrase “on the Internet” to emphasize that the patent offers are Internet-enabled
- Changed “active” to “live”
- Deleted reference to “defensive” use in 3rd paragraph of preamble
- Deleted “or restrictions on the have made right”.
- Added “In addition, you may specify that the offer is not available to parties with whom you are engaged in patent litigation or parties who are or have been infringing the patents being offered.”

Definitions:

- Added: “Necessary Patent Claims” means any patent claim(s), now owned, controlled, or hereafter acquired by Licensor in any patent that Licensor has the right to license, that would be infringed, but for the license granted in Section 2.2, by the making, using, selling, or importation of processes or products that implement the specific teachings of Specification, but excluding any claims that are not necessary to implement the Specification as written or that may enable the Specification but are not the principle subject matter of the Specification.

- Added: “Specification” means the specification, if any, set forth in the License Data Record by the "Specification" entry.

2. Grant of License:
- 2.1: Added “under the Licensed Patent Rights”; added “have made”
- 2.2: Added new paragraph: “If the License Data Record contains a Specification, then subject to the terms and conditions of this Agreement and the License Data Record, Licensor grants to Licensee under the Necessary Patent Claims, in the Territory, and during the Term, a non-exclusive, non-transferable (except as expressly permitted in Section 9) license, without a right to sublicense, to make, use, sell, offer for sale, and import products that implement the Specification and to practice processes that implement the Specification.”; added “have made”
- 2.4: Added new paragraph: “The exclusive rights referenced above (such as make, sell, and use) shall also be interpreted to include substantially similar exclusive patent rights (such as disposal and offer to dispose) in other countries, when applicable.”

3. Fees:
- Added “And Other Consideration” to Section title

4. Reporting:
- Changed: “If no royalties are required,” to “In addition..”

5. Term:
- Added: “Unless otherwise specified..” to first paragraph
- Added: “provided that if Licensee terminates this Agreement, it shall not be eligible to reinstate this license or accept any other general license offer with respect to the subject matter of this Agreement, unless the Licensor specifically agrees otherwise in writing.”
- Added: “and 10” to last paragraph.

8. Trademark and Attribution

- Added: “At Licensor’s request” to first paragraph

10.
Added: “ADDITIONAL CLAUSES”
Additional Clauses (if any) contained in the Licensed Data Record are hereby incorporated into this Agreement by reference. In the event of any conflict between the terms of this Agreement and the Additional Clauses, the terms of the Additional Clauses shall prevail.

Patent License Change Log

2010-08-23T20:54:07Z

Thinh: Created page with "Change Log Title: The “Model Patent License” title has been changed to “CC Public Patent License”. Preamble: “How to Use this CC Public Patent License”: - Added t..."

Change Log

Title:
The “Model Patent License” title has been changed to “CC Public Patent License”.

Preamble:
“How to Use this CC Public Patent License”:
- Added the phrase “on the Internet” to emphasize that the patent offers are Internet-enabled
- Changed “active” to “live”
- Deleted reference to “defensive” use in 3rd paragraph of preamble
- Deleted “or restrictions on the have made right”.
- Added “In addition, you may specify that the offer is not available to parties with whom you are engaged in patent litigation or parties who are or have been infringing the patents being offered.”

Definitions:

- Added: “Necessary Patent Claims” means any patent claim(s), now owned, controlled, or hereafter acquired by Licensor in any patent that Licensor has the right to license, that would be infringed, but for the license granted in Section 2.2, by the making, using, selling, or importation of processes or products that implement the specific teachings of Specification, but excluding any claims that are not necessary to implement the Specification as written or that may enable the Specification but are not the principle subject matter of the Specification.
- Added: “Specification” means the specification, if any, set forth in the License Data Record by the "Specification" entry.

2. Grant of License:
- 2.1: Added “under the Licensed Patent Rights”; added “have made”
- 2.2: Added new paragraph: “If the License Data Record contains a Specification, then subject to the terms and conditions of this Agreement and the License Data Record, Licensor grants to Licensee under the Necessary Patent Claims, in the Territory, and during the Term, a non-exclusive, non-transferable (except as expressly permitted in Section 9) license, without a right to sublicense, to make, use, sell, offer for sale, and import products that implement the Specification and to practice processes that implement the Specification.”; added “have made”
- 2.4: Added new paragraph: “The exclusive rights referenced above (such as make, sell, and use) shall also be interpreted to include substantially similar exclusive patent rights (such as disposal and offer to dispose) in other countries, when applicable.”

3. Fees:
- Added “And Other Consideration” to Section title

4. Reporting:

- Changed: “If no royalties are required,” to “In addition..”

5. Term:
- Added: “Unless otherwise specified..” to first paragraph
- Added: “provided that if Licensee terminates this Agreement, it shall not be eligible to reinstate this license or accept any other general license offer with respect to the subject matter of this Agreement, unless the Licensor specifically agrees otherwise in writing.”
- Added: “and 10” to last paragraph.

8. Trademark and Attribution

- Added: “At Licensor’s request” to first paragraph

10.
Added: “ADDITIONAL CLAUSES”
Additional Clauses (if any) contained in the Licensed Data Record are hereby incorporated into this Agreement by reference. In the event of any conflict between the terms of this Agreement and the Additional Clauses, the terms of the Additional Clauses shall prevail.

Patent License Drafter's Notes

2010-08-23T20:52:56Z

Thinh: Created page with "'''Drafter’s Notes''' '''Purpose:''' These Drafter’s Notes (“Notes”) capture many of the comments that were received during the Public Comment Period, explain how those..."

'''Drafter’s Notes'''

'''Purpose:'''

These Drafter’s Notes (“Notes”) capture many of the comments that were received during the Public Comment Period, explain how those comments are reflected in the final Public Patent License (“License”), and describe how other policy considerations shaped the drafting of the License. You may refer to these Notes to help understand our views of the issues presented by the comments and how I attempted to resolve those issues. These Notes are not intended to be part of the License and may not be used to change or add additional terms to the License, although they may be helpful in interpretation of the License when there is ambiguity. These Notes are not intended to provide legal advice or substitute for legal counsel. However, you may wish to consider them, with the aid of your legal counsel, prior to using the License.

The commentary is arranged in an order corresponding to the sections that appear in the License. In order to protect the anonymity of commentators, I do not identify the source of particular comments, and in some cases, multiple comments are summarized together for ease of reference. Some comments that resulted in minor or clarifying changes to the draft of the License during the Public Comment Period are not discussed in detail here, but are reflected in the Change Log. You do not have to review the Change Log in order to review the final License, but if you have been following the drafting process or if you have already reviewed an earlier version of the License, you may wish to refer to the Change Log for a quick summary of changes made leading to the final draft.

'''Title'''

A number of commentators suggested changing the title of the License. One commentator expressed the concern that the name “Model Patent License” implies that the License has broader applicability or acceptance than is warranted or that it is more specifically suitable than other patent licenses that already exist. This was not our intention. The current working title is “CC Public Patent License.”

'''Preamble'''

Some commentators expressed concern with the statement in the preamble that this License is intended for users who are maintaining their patents primarily for defensive purposes. They point out that in some cases, a public offer to license a patent may reduce the effectiveness or deterrent effect of such defensive use by establishing a presumptive measure (cap) on economic damages that may be proven in the event of infringement. They suggest that high-value or core business patents, even if held defensively, should be reserved. I think it is best that you consult with your attorney on the most effective patent licensing and portfolio management strategy for your unique situation, and I do not intend to recommend a particular patent licensing approach for every situation. Accordingly, I have deleted the reference to defensive use of patents.

Some commentators also suggested that our comment regarding the “offer conditions” are too narrow. For example, they suggested that an offeror could specify that those parties who are currently in patent litigation with the offeror or who have infringed the offeror’s patents be excluded from the offer. Otherwise, it is pointed out, an infringer could wait until its infringement is discovered and then take a license, with the result that it would only be liable for past infringement but it could avoid an injunction against future infringement by accepting a license. I agree with this and so added an additional sentence that the offer may be so limited.

'''Definitions'''

One of the issues that arose early in the drafting process was what type of model to use for identifying those patents that are being licensed. The simplest model is enumeration—a list of patents that are being offered for license. However, one concern expressed by several commentators was that this would be too narrow: there might be daughter applications such as continuations, continuations-in-part, and divisionals that issue later and that may not be readily discoverable by a licensee through due diligence. For this reason, we added continuations, continuations-in-part, divisionals, foreign counterparts, etc. to the definition of “Licensed Patent Rights” to supplement the enumeration approach. Nevertheless, a related issue arose with respect to so-called “grandparent” applications or prior dominant patents that may block the use of the licensed patents. For example, a licensor may license an improvement patent without including the dominant patent required to practice that improvement patent. In that case, an unwary licensee may wrongly conclude that it is obtaining all rights needed from the licensor to practice the invention, only to be confronted with an infringement claim from the licensor later for a dominant patent. Some courts have addressed the inequitable effects of this type of problem by finding implied licenses. However, for drafting purposes, I did not want to rely on implied license theories.

One suggestion was to include grandparent applications, just like daughter applications. However, this has some interpretive problems, insofar as the claims of a grandparent application cannot be directly related to the claims of daughter applications using clear rules such as priority, because the priority rules allow only the claims of a daughter application to claim back through the grandparent application’s specifications, not its own claims. This imperfect mapping would produce ambiguities in terms of what is being licensed, and I want to avoid any ambiguity that would result in future undesirable surprises for licensees and licensors. The virtues of clarity and predictability argue against such an approach.

Other commentators suggested that we should not overstate the problem about grandparent applications or dominant patents because unlike daughter applications, which may be yet unpublished, grandparent applications and dominant patents are discoverable by the licensee with a modest degree of due diligence, since they will either have been published or would be referenced by the licensed patents. While this is true of transactions between sophisticated licensors and licensees, there may be other situations where the licensee lacks the sophistication or resources to conduct adequate patent due diligence.

Therefore, a second alternative licensing approach is needed for those situations where the licensor wants to assure the licensee that it has licensed all claims necessary to practice (and that are owned or controlled by the licensor). Under this approach, the licensor designates a “Specification” that it wishes to license—this could be a technical disclosure, a patent specification, or a technical standard, for example—and that all claims that are taught by that specification will be licensed as “Necessary Patent Claims”. To prevent “scope creep” caused by an overly expansive interpretation of the Specification, a clarification is made that only claims that are taught by the Specification are licensed and not merely enabling claims that are not the principle subject matter of the specification. (For example, a purely software specification does not include computer hardware claims merely because a computer is eventually needed to run the software. However, if a Specification has both specific hardware and software teachings, then both types of claims would be within scope).

With these two alternative ways of licensing patents, a licensor may either choose to be very specific with the patents it wishes to license by taking the enumeration approach (in which case, the licensee should be warned to conduct thorough patent diligence prior to accepting the license or practicing the invention), or it may seek to assure the licensee that it has indeed licensed all necessary claims by taking the “Specification” route. Thus, these two approaches should be seen as representing two ways of allocating the due diligence burden between the licensor and licensee.

Several commentators suggested that we added more specific branding requirements (similar to attribution requirements) for licensed products or services. Other commentators argued that it is unusual for licensees to agree to branding requirements as part of a patent license. Yet others argued that licensors would not necessarily want to impose branding requirements (which would involve granting a trademark license) unless it has some assurance of quality control. A trademark license without adequate policing (sometimes called a “naked license”) can result in loss of a trademark right. Furthermore, these commentators point out that trademark licensing accompanied by certain forms of technical guidance or assistance can result in a finding of a “franchise” in some states. Franchises are generally trademark licenses that are accompanied by consideration and a business plan (here, the patent license itself and associated know-how may supply the “business plan,” which is sometimes interpreted broadly). Franchise rules are complex, may require state-by-state registration formalities, and carry penalties including rescission and treble damages for failure to follow formalities. Due to these considerations, I consider a “branding” clause to be a “high risk” clause, and therefore I will leave open the possibility of implementing it through the “Additional Clauses” (see below), rather than providing a standard default.

'''Grant of License'''

2.1 One commentator suggested adding the phrase “under the Licensed Patent Rights” to make clear that this license is restricted in scope to the enumerated patents. This clarification is useful, so I made the change.

Several commentators suggested that the original paragraph was awkwardly worded and suggested a re-arrangement of clauses to make it flow better. I agreed and made the change. In particular, the phrase “under the Licensed Patent Rights, in the Territory, and during the Term” should be interpreted to apply to the whole paragraph.

2.2 This parallel license grant was added in order to implement the alternative, “Specification” mode of licensing discussed above. While it is technically possible to include both types of license grants (the enumeration approach of 2.1 and the specification approach of 2.2), and they would operate a two separate types of licenses that do not limit each other, for simplicity and ease of reference, it is recommended that the licensor pick one or the other. This can be accomplished simply by choosing whether to fill out the Licensed Patent Rights list or the Specification in the License Data Record (but not both). If the licensor fills both fields, then it will be granting two separate licenses, but the enumerated list does not operate as an additional limitation on the claims licensed under the Specification.

2.3 One commentator suggested that the ability to limit the “have made” right be extended to each of the other rights under patent. However, due to the unusual and complex nature of such limitations, I decided to leave this sentence unchanged and recommend that such additional limitations, if required, be implemented via the “Additional Clauses” mechanism.

2.4 One commentator suggested that the treatment of exclusive patent rights is centered on U.S. law. For example, under U.K. law, the terms “disposal” and “offer to dispose of” are used in place of “sale” and “offer for sale.” However, rather than extend the list of exclusive rights terminology to include variations from every country, I have opted to make the clarification that these rights include their foreign equivalents in order to generalize to all jurisdictions.

'''4. Reports'''

A number of commentators questioned why any reports would be necessary for non-royalty licenses. Other commentators expressed concerns that only low-value or insignificant patents would be offered under this license, limiting its impact. In order to provide empirical evidence for impact, licensors are encouraged to work with licensees to collect statistics and empirical measures of impact so that the impact of offering public patent licenses through clearinghouses can be measured and reported. In order to accomplish this goal, there must be an obligation on licensees to report impact statistics back to the licensor, and this section provides a mechanism to do that.

Some commentators expressed concern that the data reported by the licensee may contain confidential business information or plans. This section contemplates that only publicly available information will be reported by the licensor as impact statistics, or if confidential information is involved, that the licensor would work with the licensee to remove any confidential information prior to publishing any statistics, thus reporting only anonymous or aggregated data that does not identify the licensee if possible. The level of aggregation or de-identification will depend on the specific circumstances and the sensitivity of the data provided. Thus, licensees and licensors may wish to enter into supplementary confidentiality agreements when warranted regarding treatment of sensitive information. In any event, this section should be interpreted as requiring the licensee to provide at least publicly available data and providing the licensor with reasonable cooperation in documenting public or social impact.

Some commentators asked whether the licensee or the licensor will create use case studies to highlight the impact of patent licensing. Both licensees and licensors may publish such studies. However, at a minimum, it is contemplated that the licensee will cooperate with the licensor so that the licensor may publish such impact studies, if the licensor so chooses. Nothing prevents both parties from independently publishing their own use cases and studies. However, the parties should keep in mind their obligations not to imply endorsement or make other use of the other party’s trademarks under Section 8.

'''5. Term'''

A number of commentators suggested that the Term of the agreement be made flexible in order to accommodate expiration of the license before the expiration of the patents themselves. Other commentators, however, expressed the concern that this could cause a trap for the unwary, causing some licensees to rely on a license that has a date certain expiration without taking this into account. I think that this concern would be lessened if the fact that the license expires before the patents is specifically called out. As a result, I added the qualification “Unless otherwise specified,” in order to leave open the possibility of future support for date certain expirations. For now, neither the License Data Record nor the metadata will specifically support such early expiration. However, it is possible to implement such a condition via the “Additional Clauses” mechanism discussed below.

Some commentators pointed out that 11 U.S.C. § 365(e)(1) prevents a licensor from automatically terminating a license in the event of the licensee’s bankruptcy. This would invalidate the third paragraph of this section. Note that this paragraph has been qualified by “to the extent permitted by applicable law.” This qualification saves this clause from invalidity (where contrary to applicable law) but cannot make it enforceable. Therefore, a licensor is cautioned against relying on the enforceability of this provision in all jurisdictions. When this is an important issue, further research on country-specific bankruptcy laws is necessary.

Commentators disagreed over the inclusion of clause (a) of paragraph 4 (defensive termination). Clause (a) reads “unless (a) such claim is first asserted after Licensor has asserted a claim of patent infringement against Licensee or any third party with respect to products or services of Licensee.” Those who support the inclusion of this clause argue that defensive use of patents by the licensee should be allowed, without triggering termination rights of the licensor, when it is asserted in response to a licensor’s first offensive use of a patent unrelated to the license. This fits best with their intuition of what “defensive” termination means. Others, however, opined that it is customary that once patent litigation has been initiated, whether by the licensee or licensor, the licensor should have the option of terminating all licenses, whether or not such license is related to the patents that are the subject of the suit, and regardless of who initiated the lawsuit, so that the licensor may make maximum use of its patent portfolio for litigation purposes.

Given that my goal is to strike a fair balance between the interests of the licensor and licensee, I have to consider the effect of removing this clause. If removed, it would allow the licensor to terminate the license whenever the licensee asserts a patent-based counter-claim, even if the licensor first sued the licensee on an unrelated patent. While it is not my intention to preclude the licensor from pursuing other patent claims against the licensee, if it chooses to do so, it should not be able to also “pile on” patent rights that it has already licensed if the licensee does what it normally must in order to seek a compromise—namely, to assert those patents that it has maintained defensively by way of counterclaim. To do otherwise would be to make licensing a high-risk activity for licensee, that is, either give up its right to assert its patents defensively in the event that the licensor chooses to pursue a patent lawsuit against it, or risk losing a patent license that it has relied upon to build and market products and possibly face an injunction. Such a dilemma would not be consistent with our goal of providing a dependable license that can be relied upon to make investment and technology adoption decisions.

A few commentators suggested that if the licensee terminates the license for convenience, it should not have the right to take a new license under a general public patent license offer unless the licensor specifically agrees. This is in order to avoid certain types of strategic behavior intended to avoid paying maintenance fees or other types of annual fees. I agree with this and have made the corresponding change to the license.

'''6. Warranties'''

Some commentators noted the absence of any licensee warranties. An early version of the draft did contain licensee warranties, but other commentators suggested that those warranties (such as compliance with law and applicable regulations) were best dealt with through indemnification, because violation of such warranties should not necessarily lead to license termination provided that the licensee fully carries out its obligations to indemnify. I agreed with this and thus removed licensee warranties.

Other commentators suggested that the licensor should provide warranties that it has licensed all necessary rights or that it is unaware of any infringement. However, opposing commentators noted that such warranties are very unusual, and it is customary for a patent license to assume that the license itself does not give any assurance of the right to practice (i.e., freedom from infringement of dominant patents). Furthermore, issues regarding the possible existence of the licensor’s own dominant or related patents have been discussed above and need not be dealt with through the warranty section (or through breach of warranty remedies, which would create a chilling effect on licensor participation).

'''7. Indemnification'''

Some commentators suggested making the indemnification provision mutual (i.e., provide for an indemnification right for the licensee as well as licensor). However, this is very unusual and goes against industry custom, in which the licensor’s primary “obligation” under a patent license is to refrain from suing the licensee for infringement. Typically, the licensor does not warrant that its rights are valid or that it will take other affirmative duties. Therefore, there is very little basis for the licensor indemnifying a licensee.

Several commentators noted with approval the right of the licensor to take over the defense of any claim (at its own expense) that involves an adjudication of the licensor’s patent rights. Given the importance of these rights, most licensors would not want to leave their defense or settlement in the hands of a non-exclusive licensee.

'''8. Trademark and Attribution'''

One commentator noted that some patent owners would not want their non-exclusive licensees to be marking products with patent markings without their permission. Therefore, this should be made at the option of the licensor, but not automatic. I agreed with this and added a corresponding qualification: “At Licensor’s request”.

One issue that commentators requested clarification about was whether the licensor or the licensee would be preparing the use cases that document the impact of the licensed patents. As discussed above, while there is nothing to prevent both parties from creating and publishing their own use cases, the intention here is require the licensee to provide reasonable data and statistics that the licensor would need in order to compile use cases and statistics that provide empirical evidence for the impact of its licensing strategy. Therefore, this provision contemplates that the licensor will be preparing a use case with data and support from the licensee. Once published, such use cases may be distributed by both parties. However, aside from the distribution of such case studies in unmodified form, neither party may use the trademarks of the other or otherwise imply an endorsement by the other. No general trademark license is implied.

'''9. General'''

A number of commentators suggested that the insurance requirement be made more specific. However, as the size of licensees and the extent, nature, risks, and markets of the possible exploitation of patent rights vary considerably, there is no “one-size fits all” approach to determining the appropriate amount of insurance. Thus, I define it at a “prudent” level so that the above factors can be taken into account.

'''10. Additional Clauses'''

I added this clause in order to anticipate future extensions of the license through CC-supported modular clauses as well as to make it possible to use the core license with unsupported “custom” clauses, when the licensor chooses to do so.

The CC-supported use case involves adding additional clauses in the future that we may discuss with the community and that we are convinced will make the license better or add additional options for which there is community demand. Such clauses could include, for example, date-certain expiration of the Term, options for additional limitations to the license scope, or alternative reporting requirements. Such supported additional clauses would be added after consultation with our board and our community through a public feedback process.

The unsupported use case involves a licensor who wishes to implement a feature that we do not currently support in our standard license. These could include certain “high-risk” clauses such as branding and grant-backs, that a licensor may wish to implement only after careful consultation with its attorneys or other types of clauses that CC chooses not to support.

For example, I have already discussed above why branding and trademark license clauses should be reviewed carefully in light of trademark licensing practices, policies, and franchise law. Due to the complex nature of this analysis, it may be appropriate for some licensors to provide such branding or trademark licenses, while doing so may raise serious problems for other licensors. Creative Commons would not want to implement this as check-the-box option, because it poses a risk about which some licensors may not be aware. On the other hand, a licensor who chooses to draft their own clause and implement it through the Additional Clauses mechanism is more likely to have considered the issue carefully and is prepared to take the risks involved.

Another example of such a clause is a grant back. Several commentators have suggested that we implement some kind of grant back. Some have suggested that we implement a type of “share alike” for patents that would require licensees to grant rights in improvement patents under the same license, whether to the original licensor or to the community as a whole. Prior experiments with such share-alike licensing mechanisms in a community licensing context (or patent pools) have met with decidedly mixed results. Nevertheless, a grant-back is a well-known and accepted practice in traditional patent licenses in order to ensure that the licensor has access to improvements and freedom to operate. However, the use of grant back clauses carries some antitrust risk. The 1995 Federal Antitrust Guidelines for Licensing Intellectual Property recognizes that certain grant-backs can pose antitrust concerns where the licensor has market power. Grant backs are analyzed under a rule of reason standard, and courts have also found some grant backs to lead to antitrust violations (i.e., the use of grant back clauses by licensors having market power to achieve a monopoly) (see, e.g., U.S. vs. Alumina and U.S. vs. General Electric). Compulsory grant back clauses raise antitrust concerns because they may reduce the licensee’s incentive innovate relating to improvements. Thus, grant backs are appropriate for some licensors but no necessarily “safe” for everybody, and they deserve special analysis and review by appropriate antitrust counsel. For this reason, I decline to implement a standard check-the-box grant back option, but I leave open the possibility that a licensor may supply such an obligation through the Additional Clauses mechanism.

Licensees should also be alert whenever there are Additional Clauses that are not supported or endorsed by Creative Commons that such clause may require special scrutiny because they have not been reviewed by Creative Common or subjected to public comment, and licenses which contain unsupported Additional Clauses may not be branded or labeled as standard CC licenses.

CC Public Patent License

2010-08-23T20:00:23Z

Thinh:

'''CC Public Patent License'''

'''How to Use this CC Public Patent License'''

This CC Public Patent License is intended to be used as part of a public license offer to license patent rights. A public license offer provides two main benefits:

a) it is publicly accessible on the Internet: anyone can read the full terms of the offer;
b) it is an “live” offer so that anyone can accept it if they agree to all its terms.

To have these benefits, the offer must be openly published, and it must be capable of being accepted by anyone on a non-discriminatory basis and without additional negotiation. Used in the right context, this type of offer can provide benefits for both licensor and licensee. A licensor can use a public license offer to publicize its willingness to license patent rights on reasonable and non-discriminatory terms, thus attracting innovators and potential licensees who might otherwise not have been either aware that such patent rights were available for license or who might otherwise be unwilling to approach the licensor due to anticipated, significant transaction costs typically associated with negotiating a favorable license. A potential licensee can rely on the public and non-discriminatory availability of this public license offer to make plans and decisions about technology implementation, which in the absence of such offers, would be complicated or impossible.

Patent licenses can be very complicated, particularly when complex commercialization and licensing strategies are involved. So it would be impossible for anyone to write a license that addresses everyone’s needs or fits every scenario. Instead, we developed this Model Patent License Agreement to be simple and easy to understand. It is intended to provide a simple standard model license to make patents available on reasonable and non-discriminatory terms: preferably free of charge and without unnecessary field limitations. If you need to implement a more complex licensing strategy, then this may not be the right tool for you. In any case, please consult your own attorney before making an offer. Creative Commons is not a law firm, so we cannot provide you with advice on whether to use this instrument or how to tailor it to suit your needs or business strategy.

To use this Model Patent License Agreement, you need to supply some basic information, which is found in the License Data Record (see Addendum A). This information should be supplied in a standard electronic format for ease of reference, but you can use other formats if you wish. Some basic information is required in order to make a complete public license offer, while other fields may be optional. If you do not fill out the optional fields, then they will be defined by default provisions in the license. IN MOST CASES, THE DEFAULT OPTION ALLOWS FOR THE MOST PERMISSIVE AND FREE USE BY THE LICENSEE. For example, by default, there are no field of use restrictions, fees, or royalties. You may also add limitations to the offer itself (for example, an expiration date for the offer). In addition, you may specify that the offer is not available to parties with whom you are engaged in patent litigation or parties who are or have been infringing the patents being offered. We do not encourage you to impose other offer limitations beyond this. However, in some circumstances, it may be reasonable to specify that anyone currently engaged in litigation with you that would otherwise give you grounds for terminating the license (see Section 5) may not accept the offer in the first place.

Together, the License Data Record and the CC Public Patent License will be become your public license offer. When such an offer is made available on your Web site, or through clearinghouses like GX, anyone eligible to accept the offer may accept it through a registration and acceptance process. As part of that process, the Licensee will supply the Licensee-specific information needed to complete the License Data Record. This process, and the transaction record, then completes the license agreement.

'''CC PUBLIC PATENT LICENSE'''

The owner of the Licensed Patent Rights, as defined below (the “Licensor”), grants a license on the terms and conditions set forth in this CC Public Patent License (the “Agreement”) to the person or entity accepting this Agreement (the “Licensee”).

'''1. DEFINITIONS'''

“Field of Use” means the fields of use specified in the License Data Record. If not so specified, Field of Use means all fields of use.

“License Data Record” means a written or electronic document that provides the information specified in Addendum A.

“Licensed Patent Rights” means (a) the patents and patent applications listed in the License Data Record, (b) all divisionals, continuations, and foreign counterpart applications claiming priority from any patent or patent application described in (a), (c) those claims of any continuations-in-parts that claim priority exclusively from the patents or patent applications described in (a) and (b); (d) all patents issuing from patent applications included in (a) through (c); and (e) all reissues, reexaminations, renewals, and extensions of any patents included in (a) through (d).

“Licensed Process(es)” means a process the practice of which would infringe, but for the license granted in this Agreement, one or more claims of the Licensed Patent Rights.

“Licensed Product(s)” means a machine, article of manufacture, composition of matter, or other product (a) the manufacture, use, sale, offer for sale, or import of which would infringe, but for the licenses granted in this Agreement, one or more claims of the Licensed Patent Rights, or (b) made or directly obtained by a Licensed Process.

“Necessary Patent Claims” means any patent claim(s), now owned, controlled, or hereafter acquired by Licensor in any patent that Licensor has the right to license, that would be infringed, but for the license granted in Section 2.2, by the making, using, selling, or importation of processes or products that implement the specific teachings of Specification, but excluding any claims that are not necessary to implement the Specification as written or that may enable the Specification but are not the principle subject matter of the Specification.

“Specification” means the specification, if any, set forth in the License Data Record by the "Specification" entry.

“Territory” means a geographical or jurisdictional designation, as specified in the License Data Record. If not so specified, Territory means worldwide.
“Term” means the period of time specified in Section 5.

'''2. GRANT OF LICENSE'''

2.1 Subject to the terms and conditions of this Agreement and the License Data Record, Licensor grants to Licensee under the Licensed Patent Rights, in the Territory, and during the Term, a non-exclusive, non-transferable (except as expressly permitted in Section 9) license, without a right to sublicense, to make, use, sell, offer for sale, and import Licensed Products and to practice Licensed Processes, in each case, in the Field of Use.

2.2 If the License Data Record contains a Specification, then subject to the terms and conditions of this Agreement and the License Data Record, Licensor grants to Licensee under the Necessary Patent Claims, in the Territory, and during the Term, a non-exclusive, non-transferable (except as expressly permitted in Section 9) license, without a right to sublicense, to make, use, sell, offer for sale, and import products that implement the Specification and to practice processes that implement the Specification, in each case, in the Field of Use.

2.3 The above licenses include the right to have made, except as otherwise specified by the License Data Record.
2.4 The exclusive rights referenced above (such as make, sell, and use) shall also be interpreted to include substantially similar exclusive patent rights (such as disposal and offer to dispose) in other countries, when applicable.

'''3. FEES AND OTHER CONSIDERATION'''

Fees, royalties, or other consideration, if any, shall be specified in the “License Fees and Royalties” section of License Data Record. If none are specified, then no payment is required under this Agreement.

'''4. REPORTING'''

Licensee shall provide quarterly reports to Licensor, along with any required payments, in sufficient detail to verify the calculation of royalties owed, including without limitation, gross receipts from the use, sale, or other disposition of Licensed Products and/or from the practice of a Licensed Process, deductions taken for calculating revenues, and the total royalty due. If no royalties are due, then the report shall so specify.
In addition, then Licensee shall instead provide such reports as may be reasonably requested by Licensor to perform the analysis and activities described below.

Licensor may use the information provided by Licensee to analyze and publish metrics and impact statistics related to the use of the Licensed Patent Rights and have others do so, as long as such information is used only in aggregated and anonymous form. Licensor may also use or disclose the information to enforce this Agreement, and/or to comply with a court order, or otherwise as required by law.

'''5. TERM'''

Unless otherwise specified, the Term of this Agreement commences on its execution and ends upon the expiration, abandonment, or final invalidity of all claims within the Licensed Patent Rights, unless earlier terminated as permitted below.

Licensor may terminate this Agreement in the event of a material breach of this Agreement that is not cured within thirty (30) days after Licensor provides written notice to Licensee specifying such breach.

To the extent permitted by applicable law, Licensor may terminate this Agreement immediately in the event Licensee becomes insolvent, files for bankruptcy protection, makes an assignment for the benefit of creditors, or becomes the subject of involuntary bankruptcy proceedings. Licensee shall immediately notify Licensor upon the occurrence of one of these conditions.

Licensor may terminate this Agreement upon written notice to Licensee in the event that Licensee asserts a claim of patent infringement against Licensor or any third party with respect to products or services of Licensor, unless (a) such claim is first asserted after Licensor has asserted a claim of patent infringement against Licensee or any third party with respect to products or services of Licensee, or (b) Licensee fully withdraws such claim within ten (10) days after being notified by Licensor. For purposes of this paragraph, “Licensor” and “Licensee” shall also include their respective affiliates.

Licensee may terminate this Agreement by providing Licensor with at least thirty (30) days prior written notice, provided that if Licensee terminates this Agreement, it shall not be eligible to reinstate this license or accept any other general license offer with respect to the subject matter of this Agreement, unless the Licensor specifically agrees otherwise in writing.
Upon any termination of this Agreement, Licensee shall provide Licensor with a final royalty report within thirty (30) days after termination, along with full payment of all amounts due. The following sections shall also survive termination of this Agreement: 6, 7, 8, 9, and 10.

'''6. WARRANTIES'''

Licensor warrants that it has the right and authority to grant the rights and licenses granted in this Agreement.

Licensor disclaims all other warranties, representations, and conditions, whether express, implied, or statutory, including, but not limited to, the warranties of merchantability, fitness for a particular purpose, or non-infringement.

Without limiting the generality of the above disclaimer, Licensor makes no representation or warranties that: a) it will prosecute or continue to prosecute, maintain, or defend any patent or patent application, b) it will bring an infringement suit, assert any claim against third parties accused of infringement, or otherwise enforce any patent or patent application, c) it will join as a party to any suit or legal action, d) it will provide Licensee with know-how or assistance necessary or useful to practice the Licensed Patent Rights, e) the Licensed Patent Rights are valid or enforceable, or f) the Licensed Products or Licensed Processes may be exploited or practiced without infringing third party patents.

'''7. INDEMNIFICATION'''

Licensee shall indemnify and hold Licensor, and its officers, directors, employees, representatives, agents, and affiliates harmless from any and all damages, liabilities, costs, and expenses (including reasonable attorneys’ fees) arising out of or caused by Licensee’s practice or exploitation of the license granted by this Agreement or by the sale, use, or exploitation of Licensed Products or Licensed Processes by or under the authority of Licensee.

Licensor shall notify Licensee promptly of any claim of which Licensor is aware and for which Licensor seeks indemnification. Licensee shall have the right to control the defense of such claims, except to the extent that the scope or validity of the Licensed Patent Rights are at issue, in which case Licensor may assume the sole control and defense of such claims at its own expense.

'''8. TRADEMARKS AND ATTRIBUTION'''

At Licensor’s request, Licensee agrees to mark Licensed Products and their packaging with patent markings as required by applicable law to preserve Licensor’s rights and otherwise enforce the Licensed Patents.

At Licensor’s request, Licensee shall reasonably cooperate with Licensor and provide such information as may be necessary for Licensor to prepare use case studies that document Licensee’s use of the Licensed Patent Rights and related usage or impact metrics. Each party may copy, distribute, and publish such use case studies, including by means of its Web sites, and authorize others to do so, to demonstrate the uses and impact of the technology.

Except solely as permitted above, neither party may use the other’s trademarks, service marks, trade names, company names, or logos (“Marks”) to offer, market, sell, or otherwise endorse any product or service or to engage in any other trademark usage, unless with the prior written authorization of the owner. Any uses of a party’s Marks shall inure solely to the benefit of that party, along with all goodwill associated therewith.

'''9. GENERAL PROVISIONS'''

Notices to the parties shall be provided at the address set forth in the License Data Record, unless a party provides written notice to the other party of a change of address. Notices may be provided by personal delivery, express delivery service, or registered mail. Notices shall be effective on the date received.

Nothing in this Agreement constitutes the parties as partners, joint venturers, principal and agent, or fiduciaries of each other.

A delay or failure in enforcing a right or obligation under this Agreement shall not be construed as an implied waiver of that right or obligation or of any other provision or breach under this Agreement. A waiver under this Agreement is only effective if made in writing and signed by the party granting the waiver.

An amendment or modification of this Agreement is effective only if made in writing and signed by the duly authorized representatives of the parties.
This Agreement constitutes the entire agreement between the parties as to the subject matter herein and supersedes all prior or contemporaneous negotiations, agreements, representations, memorandums, and understandings.

If any provision of this Agreement is deemed to be invalid or unenforceable, then that provision, to the extent unenforceable, is severable and the remainder of this Agreement shall continue in full force and effect.

Licensee may not assign any of its rights under this Agreement, delegate any of its obligations under this Agreement, or otherwise transfer this Agreement, without the prior written consent of Licensor, and any attempted assignment, transfer, or delegation shall be voidable by Licensor. Any change of control of Licensee shall be deemed an attempted transfer of this Agreement. Licensor may assign this Agreement in connection with a sale, merger, or transfer of the assets to which this Agreement relates, provided that the assignee assumes all rights and obligations under this Agreement.

Licensee agrees to maintain insurance in amounts prudent for Licensee’s operations and adequate to discharge Licensee’s obligations under Section 7.

This Agreement is governed by and interpreted in accordance with the laws of the jurisdiction set forth in the License Data Record, if any. The parties agree that the proper jurisdiction and venue for any disputes arising out of this Agreement shall be in the courts of the venue specified in the License Data Record, if any. If none are specified, then jurisdiction and venue shall be deemed to be in the relevant jurisdiction for Licensor’s address, as stated in the License Data Record.

No rights or forbearances are granted, or may arise (whether through implication, estoppel, exhaustion or otherwise) other than those expressly granted in this Agreement.

EXCEPT FOR THE OBLIGATION TO RENDER CONSIDERATION (IF ANY) IN SECTION 3, THE INDEMNIFICATION OBLIGATIONS IN SECTION 7, AND INFRINGEMENT OF ANY TRADEMARK OR INTELLECTUAL PROPERTY RIGHT, IN NO EVENT WILL EITHER PARTY HAVE ANY LIABILITY OF ANY KIND WHATSOEVER TO THE OTHER ARISING OUT OF THIS AGREEMENT, INCLUDING BUT NOT LIMITED TO, FOR INDIRECT, INCIDENTAL, CONSEQUENTIAL OR SPECIAL DAMAGES, EVEN IF ADVISED OF THE POSSIBILITY OF SUCH DAMAGES.

'''10. ADDITIONAL CLAUSES'''

Additional Clauses (if any) contained in the Licensed Data Record are hereby incorporated into this Agreement by reference. In the event of any conflict between the terms of this Agreement and the Additional Clauses, the terms of the Additional Clauses shall prevail.

'''Addendum A'''

The purpose of this Addendum is to provide guidelines for a License Data Record, which may be either in paper or electronic form. This License Data Record is unique to each transaction and must specify a minimum information set in order to give effect to the Patent License Agreement.

To constitute an agreement that incorporates the terms of the Patent License Agreement, a License Data Record must:

1) reference this Agreement by linking to the URL of the Patent License Agreement deed or legal code, attaching a copy of it, referencing it by name, or by any other means that uniquely and unambiguously identifies it; AND

2) provide the following information:

a. Name of Licensor: the name of the person or entities offering this license,

b. Licensor Contact Information: address, contact person, phone number, fax, and/or email,

c. Name of Licensee: the name of the person or entities accepting this license,

d. Licensee Contact Information: address, contact person, phone number, fax, and/or email,

e. Licensed Patent Rights: a list of patents and patent applications to be licensed,

OR

Specification: a written specification of the invention or technology to be licensed.

f. License Fees, Royalties, and other consideration (optional): a description of any required fees, royalties, or other consideration, including without limitation any requirements relating to improvements or innovations,

g. Field of Use (optional): a description of any scope of use limitations associated with the license,

h. “Have Made” Limitations (optional): any limitations to the license to “have made,”

i. Choice of Law (optional): jurisdiction for choice of law,

j. Choice of Venue (optional) jurisdiction for legal venue,

k. Territory (optional): geographic limitations of the license,

l. Offer Limitations (optional): any limitations associated with the offer, and

m. Additional Clauses

'''Sample License Data Record'''

This License Data Record references and incorporates the GX Model Patent License Agreement (located at URL: _________)

Licensor Name:
Licensor Contact Address:

_____________________________

_____________________________

_____________________________

Phone: _______________________

Fax: _________________________

Email: ________________________

Licensee Name:

Licensee Contact Address:

_____________________________

_____________________________

_____________________________

Phone: _______________________

Fax: _________________________

Email: _____________________________

Licensed Patents Rights:

Patent No. ____________________________

Patent Application No.__________________ …

OR

Specification (attached a detailed specification or provide a URL):

License Fees & Royalties (optional):

Field of Use (optional):

Have Made Limitations (optional):

Choice of Law (optional) City_____________, State_____________

Choice of Venue (optional) City_____________, State_____________

Territory (Optional)

Offer Limitations (Optional)

Additional Clauses (Optional)

CC Public Patent License

2010-08-23T19:59:38Z

Thinh:

'''CC Public Patent License'''

'''How to Use this CC Public Patent License'''

This CC Public Patent License is intended to be used as part of a public license offer to license patent rights. A public license offer provides two main benefits:

a) it is publicly accessible on the Internet: anyone can read the full terms of the offer;
b) it is an “live” offer so that anyone can accept it if they agree to all its terms.

To have these benefits, the offer must be openly published, and it must be capable of being accepted by anyone on a non-discriminatory basis and without additional negotiation. Used in the right context, this type of offer can provide benefits for both licensor and licensee. A licensor can use a public license offer to publicize its willingness to license patent rights on reasonable and non-discriminatory terms, thus attracting innovators and potential licensees who might otherwise not have been either aware that such patent rights were available for license or who might otherwise be unwilling to approach the licensor due to anticipated, significant transaction costs typically associated with negotiating a favorable license. A potential licensee can rely on the public and non-discriminatory availability of this public license offer to make plans and decisions about technology implementation, which in the absence of such offers, would be complicated or impossible.

Patent licenses can be very complicated, particularly when complex commercialization and licensing strategies are involved. So it would be impossible for anyone to write a license that addresses everyone’s needs or fits every scenario. Instead, we developed this Model Patent License Agreement to be simple and easy to understand. It is intended to provide a simple standard model license to make patents available on reasonable and non-discriminatory terms: preferably free of charge and without unnecessary field limitations. If you need to implement a more complex licensing strategy, then this may not be the right tool for you. In any case, please consult your own attorney before making an offer. Creative Commons is not a law firm, so we cannot provide you with advice on whether to use this instrument or how to tailor it to suit your needs or business strategy.

To use this Model Patent License Agreement, you need to supply some basic information, which is found in the License Data Record (see Addendum A). This information should be supplied in a standard electronic format for ease of reference, but you can use other formats if you wish. Some basic information is required in order to make a complete public license offer, while other fields may be optional. If you do not fill out the optional fields, then they will be defined by default provisions in the license. IN MOST CASES, THE DEFAULT OPTION ALLOWS FOR THE MOST PERMISSIVE AND FREE USE BY THE LICENSEE. For example, by default, there are no field of use restrictions, fees, or royalties. You may also add limitations to the offer itself (for example, an expiration date for the offer). In addition, you may specify that the offer is not available to parties with whom you are engaged in patent litigation or parties who are or have been infringing the patents being offered. We do not encourage you to impose other offer limitations beyond this. However, in some circumstances, it may be reasonable to specify that anyone currently engaged in litigation with you that would otherwise give you grounds for terminating the license (see Section 5) may not accept the offer in the first place.

Together, the License Data Record and the CC Public Patent License will be become your public license offer. When such an offer is made available on your Web site, or through clearinghouses like GX, anyone eligible to accept the offer may accept it through a registration and acceptance process. As part of that process, the Licensee will supply the Licensee-specific information needed to complete the License Data Record. This process, and the transaction record, then completes the license agreement.

'''CC PUBLIC PATENT LICENSE'''

The owner of the Licensed Patent Rights, as defined below (the “Licensor”), grants a license on the terms and conditions set forth in this CC Public Patent License (the “Agreement”) to the person or entity accepting this Agreement (the “Licensee”).

'''1. DEFINITIONS'''

“Field of Use” means the fields of use specified in the License Data Record. If not so specified, Field of Use means all fields of use.

“License Data Record” means a written or electronic document that provides the information specified in Addendum A.

“Licensed Patent Rights” means (a) the patents and patent applications listed in the License Data Record, (b) all divisionals, continuations, and foreign counterpart applications claiming priority from any patent or patent application described in (a), (c) those claims of any continuations-in-parts that claim priority exclusively from the patents or patent applications described in (a) and (b); (d) all patents issuing from patent applications included in (a) through (c); and (e) all reissues, reexaminations, renewals, and extensions of any patents included in (a) through (d).

“Licensed Process(es)” means a process the practice of which would infringe, but for the license granted in this Agreement, one or more claims of the Licensed Patent Rights.

“Licensed Product(s)” means a machine, article of manufacture, composition of matter, or other product (a) the manufacture, use, sale, offer for sale, or import of which would infringe, but for the licenses granted in this Agreement, one or more claims of the Licensed Patent Rights, or (b) made or directly obtained by a Licensed Process.

“Necessary Patent Claims” means any patent claim(s), now owned, controlled, or hereafter acquired by Licensor in any patent that Licensor has the right to license, that would be infringed, but for the license granted in Section 2.2, by the making, using, selling, or importation of processes or products that implement the specific teachings of Specification, but excluding any claims that are not necessary to implement the Specification as written or that may enable the Specification but are not the principle subject matter of the Specification.

“Specification” means the specification, if any, set forth in the License Data Record by the "Specification" entry.

“Territory” means a geographical or jurisdictional designation, as specified in the License Data Record. If not so specified, Territory means worldwide.
“Term” means the period of time specified in Section 5.

'''2. GRANT OF LICENSE'''

2.1 Subject to the terms and conditions of this Agreement and the License Data Record, Licensor grants to Licensee under the Licensed Patent Rights, in the Territory, and during the Term, a non-exclusive, non-transferable (except as expressly permitted in Section 9) license, without a right to sublicense, to make, use, sell, offer for sale, and import Licensed Products and to practice Licensed Processes, in each case, in the Field of Use.

2.2 If the License Data Record contains a Specification, then subject to the terms and conditions of this Agreement and the License Data Record, Licensor grants to Licensee under the Necessary Patent Claims, in the Territory, and during the Term, a non-exclusive, non-transferable (except as expressly permitted in Section 9) license, without a right to sublicense, to make, use, sell, offer for sale, and import products that implement the Specification and to practice processes that implement the Specification, in each case, in the Field of Use.

2.3 The above licenses include the right to have made, except as otherwise specified by the License Data Record.
2.4 The exclusive rights referenced above (such as make, sell, and use) shall also be interpreted to include substantially similar exclusive patent rights (such as disposal and offer to dispose) in other countries, when applicable.

'''3. FEES AND OTHER CONSIDERATION'''

Fees, royalties, or other consideration, if any, shall be specified in the “License Fees and Royalties” section of License Data Record. If none are specified, then no payment is required under this Agreement.

'''4. REPORTING'''

Licensee shall provide quarterly reports to Licensor, along with any required payments, in sufficient detail to verify the calculation of royalties owed, including without limitation, gross receipts from the use, sale, or other disposition of Licensed Products and/or from the practice of a Licensed Process, deductions taken for calculating revenues, and the total royalty due. If no royalties are due, then the report shall so specify.
In addition, then Licensee shall instead provide such reports as may be reasonably requested by Licensor to perform the analysis and activities described below.

Licensor may use the information provided by Licensee to analyze and publish metrics and impact statistics related to the use of the Licensed Patent Rights and have others do so, as long as such information is used only in aggregated and anonymous form. Licensor may also use or disclose the information to enforce this Agreement, and/or to comply with a court order, or otherwise as required by law.

'''5. TERM'''

Unless otherwise specified, the Term of this Agreement commences on its execution and ends upon the expiration, abandonment, or final invalidity of all claims within the Licensed Patent Rights, unless earlier terminated as permitted below.

Licensor may terminate this Agreement in the event of a material breach of this Agreement that is not cured within thirty (30) days after Licensor provides written notice to Licensee specifying such breach.

To the extent permitted by applicable law, Licensor may terminate this Agreement immediately in the event Licensee becomes insolvent, files for bankruptcy protection, makes an assignment for the benefit of creditors, or becomes the subject of involuntary bankruptcy proceedings. Licensee shall immediately notify Licensor upon the occurrence of one of these conditions.

Licensor may terminate this Agreement upon written notice to Licensee in the event that Licensee asserts a claim of patent infringement against Licensor or any third party with respect to products or services of Licensor, unless (a) such claim is first asserted after Licensor has asserted a claim of patent infringement against Licensee or any third party with respect to products or services of Licensee, or (b) Licensee fully withdraws such claim within ten (10) days after being notified by Licensor. For purposes of this paragraph, “Licensor” and “Licensee” shall also include their respective affiliates.

Licensee may terminate this Agreement by providing Licensor with at least thirty (30) days prior written notice, provided that if Licensee terminates this Agreement, it shall not be eligible to reinstate this license or accept any other general license offer with respect to the subject matter of this Agreement, unless the Licensor specifically agrees otherwise in writing.
Upon any termination of this Agreement, Licensee shall provide Licensor with a final royalty report within thirty (30) days after termination, along with full payment of all amounts due. The following sections shall also survive termination of this Agreement: 6, 7, 8, 9, and 10.

'''6. WARRANTIES'''

Licensor warrants that it has the right and authority to grant the rights and licenses granted in this Agreement.

Licensor disclaims all other warranties, representations, and conditions, whether express, implied, or statutory, including, but not limited to, the warranties of merchantability, fitness for a particular purpose, or non-infringement.

Without limiting the generality of the above disclaimer, Licensor makes no representation or warranties that: a) it will prosecute or continue to prosecute, maintain, or defend any patent or patent application, b) it will bring an infringement suit, assert any claim against third parties accused of infringement, or otherwise enforce any patent or patent application, c) it will join as a party to any suit or legal action, d) it will provide Licensee with know-how or assistance necessary or useful to practice the Licensed Patent Rights, e) the Licensed Patent Rights are valid or enforceable, or f) the Licensed Products or Licensed Processes may be exploited or practiced without infringing third party patents.

'''7. INDEMNIFICATION'''

Licensee shall indemnify and hold Licensor, and its officers, directors, employees, representatives, agents, and affiliates harmless from any and all damages, liabilities, costs, and expenses (including reasonable attorneys’ fees) arising out of or caused by Licensee’s practice or exploitation of the license granted by this Agreement or by the sale, use, or exploitation of Licensed Products or Licensed Processes by or under the authority of Licensee.

Licensor shall notify Licensee promptly of any claim of which Licensor is aware and for which Licensor seeks indemnification. Licensee shall have the right to control the defense of such claims, except to the extent that the scope or validity of the Licensed Patent Rights are at issue, in which case Licensor may assume the sole control and defense of such claims at its own expense.

'''8. TRADEMARKS AND ATTRIBUTION'''

At Licensor’s request, Licensee agrees to mark Licensed Products and their packaging with patent markings as required by applicable law to preserve Licensor’s rights and otherwise enforce the Licensed Patents.

At Licensor’s request, Licensee shall reasonably cooperate with Licensor and provide such information as may be necessary for Licensor to prepare use case studies that document Licensee’s use of the Licensed Patent Rights and related usage or impact metrics. Each party may copy, distribute, and publish such use case studies, including by means of its Web sites, and authorize others to do so, to demonstrate the uses and impact of the technology.

Except solely as permitted above, neither party may use the other’s trademarks, service marks, trade names, company names, or logos (“Marks”) to offer, market, sell, or otherwise endorse any product or service or to engage in any other trademark usage, unless with the prior written authorization of the owner. Any uses of a party’s Marks shall inure solely to the benefit of that party, along with all goodwill associated therewith.

'''9. GENERAL PROVISIONS'''

Notices to the parties shall be provided at the address set forth in the License Data Record, unless a party provides written notice to the other party of a change of address. Notices may be provided by personal delivery, express delivery service, or registered mail. Notices shall be effective on the date received.

Nothing in this Agreement constitutes the parties as partners, joint venturers, principal and agent, or fiduciaries of each other.

A delay or failure in enforcing a right or obligation under this Agreement shall not be construed as an implied waiver of that right or obligation or of any other provision or breach under this Agreement. A waiver under this Agreement is only effective if made in writing and signed by the party granting the waiver.

An amendment or modification of this Agreement is effective only if made in writing and signed by the duly authorized representatives of the parties.
This Agreement constitutes the entire agreement between the parties as to the subject matter herein and supersedes all prior or contemporaneous negotiations, agreements, representations, memorandums, and understandings.

If any provision of this Agreement is deemed to be invalid or unenforceable, then that provision, to the extent unenforceable, is severable and the remainder of this Agreement shall continue in full force and effect.

Licensee may not assign any of its rights under this Agreement, delegate any of its obligations under this Agreement, or otherwise transfer this Agreement, without the prior written consent of Licensor, and any attempted assignment, transfer, or delegation shall be voidable by Licensor. Any change of control of Licensee shall be deemed an attempted transfer of this Agreement. Licensor may assign this Agreement in connection with a sale, merger, or transfer of the assets to which this Agreement relates, provided that the assignee assumes all rights and obligations under this Agreement.

Licensee agrees to maintain insurance in amounts prudent for Licensee’s operations and adequate to discharge Licensee’s obligations under Section 7.

This Agreement is governed by and interpreted in accordance with the laws of the jurisdiction set forth in the License Data Record, if any. The parties agree that the proper jurisdiction and venue for any disputes arising out of this Agreement shall be in the courts of the venue specified in the License Data Record, if any. If none are specified, then jurisdiction and venue shall be deemed to be in the relevant jurisdiction for Licensor’s address, as stated in the License Data Record.

No rights or forbearances are granted, or may arise (whether through implication, estoppel, exhaustion or otherwise) other than those expressly granted in this Agreement.

EXCEPT FOR THE OBLIGATION TO RENDER CONSIDERATION (IF ANY) IN SECTION 3, THE INDEMNIFICATION OBLIGATIONS IN SECTION 7, AND INFRINGEMENT OF ANY TRADEMARK OR INTELLECTUAL PROPERTY RIGHT, IN NO EVENT WILL EITHER PARTY HAVE ANY LIABILITY OF ANY KIND WHATSOEVER TO THE OTHER ARISING OUT OF THIS AGREEMENT, INCLUDING BUT NOT LIMITED TO, FOR INDIRECT, INCIDENTAL, CONSEQUENTIAL OR SPECIAL DAMAGES, EVEN IF ADVISED OF THE POSSIBILITY OF SUCH DAMAGES.

'''10. ADDITIONAL CLAUSES'''

Additional Clauses (if any) contained in the Licensed Data Record are hereby incorporated into this Agreement by reference. In the event of any conflict between the terms of this Agreement and the Additional Clauses, the terms of the Additional Clauses shall prevail.

'''Addendum A'''

The purpose of this Addendum is to provide guidelines for a License Data Record, which may be either in paper or electronic form. This License Data Record is unique to each transaction and must specify a minimum information set in order to give effect to the Patent License Agreement.

To constitute an agreement that incorporates the terms of the Patent License Agreement, a License Data Record must:

1) reference this Agreement by linking to the URL of the Patent License Agreement deed or legal code, attaching a copy of it, referencing it by name, or by any other means that uniquely and unambiguously identifies it; AND

2) provide the following information:

a. Name of Licensor: the name of the person or entities offering this license,

b. Licensor Contact Information: address, contact person, phone number, fax, and/or email,

c. Name of Licensee: the name of the person or entities accepting this license,

d. Licensee Contact Information: address, contact person, phone number, fax, and/or email,

e. Licensed Patent Rights: a list of patents and patent applications to be licensed,

OR
Specification: a written specification of the invention or technology to be licensed.

f. License Fees, Royalties, and other consideration (optional): a description of any required fees, royalties, or other consideration, including without limitation any requirements relating to improvements or innovations,

g. Field of Use (optional): a description of any scope of use limitations associated with the license,

h. “Have Made” Limitations (optional): any limitations to the license to “have made,”

i. Choice of Law (optional): jurisdiction for choice of law,

j. Choice of Venue (optional) jurisdiction for legal venue,

k. Territory (optional): geographic limitations of the license,

l. Offer Limitations (optional): any limitations associated with the offer, and

m. Additional Clauses

'''Sample License Data Record'''

This License Data Record references and incorporates the GX Model Patent License Agreement (located at URL: _________)

Licensor Name:
Licensor Contact Address:

_____________________________

_____________________________

_____________________________

Phone: _______________________

Fax: _________________________

Email: ________________________

Licensee Name:

Licensee Contact Address:

_____________________________

_____________________________

_____________________________

Phone: _______________________

Fax: _________________________

Email: _____________________________

Licensed Patents Rights:

Patent No. ____________________________

Patent Application No.__________________ …

OR

Specification (attached a detailed specification or provide a URL):

License Fees & Royalties (optional):

Field of Use (optional):

Have Made Limitations (optional):

Choice of Law (optional) City_____________, State_____________

Choice of Venue (optional) City_____________, State_____________

Territory (Optional)

Offer Limitations (Optional)

Additional Clauses (Optional)

CC Public Patent License

2010-08-23T19:54:29Z

Thinh: Created page with "'''CC Public Patent License''' ''' How to Use this CC Public Patent License''' This CC Public Patent License is intended to be used as part of a public license offer to license..."

'''CC Public Patent License'''
'''
How to Use this CC Public Patent License'''

This CC Public Patent License is intended to be used as part of a public license offer to license patent rights. A public license offer provides two main benefits:
a) it is publicly accessible on the Internet: anyone can read the full terms of the offer;
b) it is an “live” offer so that anyone can accept it if they agree to all its terms.

To have these benefits, the offer must be openly published, and it must be capable of being accepted by anyone on a non-discriminatory basis and without additional negotiation. Used in the right context, this type of offer can provide benefits for both licensor and licensee. A licensor can use a public license offer to publicize its willingness to license patent rights on reasonable and non-discriminatory terms, thus attracting innovators and potential licensees who might otherwise not have been either aware that such patent rights were available for license or who might otherwise be unwilling to approach the licensor due to anticipated, significant transaction costs typically associated with negotiating a favorable license. A potential licensee can rely on the public and non-discriminatory availability of this public license offer to make plans and decisions about technology implementation, which in the absence of such offers, would be complicated or impossible.

Patent licenses can be very complicated, particularly when complex commercialization and licensing strategies are involved. So it would be impossible for anyone to write a license that addresses everyone’s needs or fits every scenario. Instead, we developed this Model Patent License Agreement to be simple and easy to understand. It is intended to provide a simple standard model license to make patents available on reasonable and non-discriminatory terms: preferably free of charge and without unnecessary field limitations. If you need to implement a more complex licensing strategy, then this may not be the right tool for you. In any case, please consult your own attorney before making an offer. Creative Commons is not a law firm, so we cannot provide you with advice on whether to use this instrument or how to tailor it to suit your needs or business strategy.

To use this Model Patent License Agreement, you need to supply some basic information, which is found in the License Data Record (see Addendum A). This information should be supplied in a standard electronic format for ease of reference, but you can use other formats if you wish. Some basic information is required in order to make a complete public license offer, while other fields may be optional. If you do not fill out the optional fields, then they will be defined by default provisions in the license. IN MOST CASES, THE DEFAULT OPTION ALLOWS FOR THE MOST PERMISSIVE AND FREE USE BY THE LICENSEE. For example, by default, there are no field of use restrictions, fees, or royalties. You may also add limitations to the offer itself (for example, an expiration date for the offer). In addition, you may specify that the offer is not available to parties with whom you are engaged in patent litigation or parties who are or have been infringing the patents being offered. We do not encourage you to impose other offer limitations beyond this. However, in some circumstances, it may be reasonable to specify that anyone currently engaged in litigation with you that would otherwise give you grounds for terminating the license (see Section 5) may not accept the offer in the first place.

Together, the License Data Record and the CC Public Patent License will be become your public license offer. When such an offer is made available on your Web site, or through clearinghouses like GX, anyone eligible to accept the offer may accept it through a registration and acceptance process. As part of that process, the Licensee will supply the Licensee-specific information needed to complete the License Data Record. This process, and the transaction record, then completes the license agreement.

'''CC PUBLIC PATENT LICENSE'''

The owner of the Licensed Patent Rights, as defined below (the “Licensor”), grants a license on the terms and conditions set forth in this CC Public Patent License (the “Agreement”) to the person or entity accepting this Agreement (the “Licensee”).
'''1. DEFINITIONS'''
“Field of Use” means the fields of use specified in the License Data Record. If not so specified, Field of Use means all fields of use.
“License Data Record” means a written or electronic document that provides the information specified in Addendum A.
“Licensed Patent Rights” means (a) the patents and patent applications listed in the License Data Record, (b) all divisionals, continuations, and foreign counterpart applications claiming priority from any patent or patent application described in (a), (c) those claims of any continuations-in-parts that claim priority exclusively from the patents or patent applications described in (a) and (b); (d) all patents issuing from patent applications included in (a) through (c); and (e) all reissues, reexaminations, renewals, and extensions of any patents included in (a) through (d).
“Licensed Process(es)” means a process the practice of which would infringe, but for the license granted in this Agreement, one or more claims of the Licensed Patent Rights.
“Licensed Product(s)” means a machine, article of manufacture, composition of matter, or other product (a) the manufacture, use, sale, offer for sale, or import of which would infringe, but for the licenses granted in this Agreement, one or more claims of the Licensed Patent Rights, or (b) made or directly obtained by a Licensed Process.
“Necessary Patent Claims” means any patent claim(s), now owned, controlled, or hereafter acquired by Licensor in any patent that Licensor has the right to license, that would be infringed, but for the license granted in Section 2.2, by the making, using, selling, or importation of processes or products that implement the specific teachings of Specification, but excluding any claims that are not necessary to implement the Specification as written or that may enable the Specification but are not the principle subject matter of the Specification.

“Specification” means the specification, if any, set forth in the License Data Record by the "Specification" entry.

“Territory” means a geographical or jurisdictional designation, as specified in the License Data Record. If not so specified, Territory means worldwide.
“Term” means the period of time specified in Section 5.
'''2. GRANT OF LICENSE'''
2.1 Subject to the terms and conditions of this Agreement and the License Data Record, Licensor grants to Licensee under the Licensed Patent Rights, in the Territory, and during the Term, a non-exclusive, non-transferable (except as expressly permitted in Section 9) license, without a right to sublicense, to make, use, sell, offer for sale, and import Licensed Products and to practice Licensed Processes, in each case, in the Field of Use.
2.2 If the License Data Record contains a Specification, then subject to the terms and conditions of this Agreement and the License Data Record, Licensor grants to Licensee under the Necessary Patent Claims, in the Territory, and during the Term, a non-exclusive, non-transferable (except as expressly permitted in Section 9) license, without a right to sublicense, to make, use, sell, offer for sale, and import products that implement the Specification and to practice processes that implement the Specification, in each case, in the Field of Use.
2.3 The above licenses include the right to have made, except as otherwise specified by the License Data Record.
2.4 The exclusive rights referenced above (such as make, sell, and use) shall also be interpreted to include substantially similar exclusive patent rights (such as disposal and offer to dispose) in other countries, when applicable.
'''3. FEES AND OTHER CONSIDERATION'''
Fees, royalties, or other consideration, if any, shall be specified in the “License Fees and Royalties” section of License Data Record. If none are specified, then no payment is required under this Agreement.
'''4. REPORTING'''
Licensee shall provide quarterly reports to Licensor, along with any required payments, in sufficient detail to verify the calculation of royalties owed, including without limitation, gross receipts from the use, sale, or other disposition of Licensed Products and/or from the practice of a Licensed Process, deductions taken for calculating revenues, and the total royalty due. If no royalties are due, then the report shall so specify.
In addition, then Licensee shall instead provide such reports as may be reasonably requested by Licensor to perform the analysis and activities described below.
Licensor may use the information provided by Licensee to analyze and publish metrics and impact statistics related to the use of the Licensed Patent Rights and have others do so, as long as such information is used only in aggregated and anonymous form. Licensor may also use or disclose the information to enforce this Agreement, and/or to comply with a court order, or otherwise as required by law.
'''5. TERM'''
Unless otherwise specified, the Term of this Agreement commences on its execution and ends upon the expiration, abandonment, or final invalidity of all claims within the Licensed Patent Rights, unless earlier terminated as permitted below.
Licensor may terminate this Agreement in the event of a material breach of this Agreement that is not cured within thirty (30) days after Licensor provides written notice to Licensee specifying such breach.
To the extent permitted by applicable law, Licensor may terminate this Agreement immediately in the event Licensee becomes insolvent, files for bankruptcy protection, makes an assignment for the benefit of creditors, or becomes the subject of involuntary bankruptcy proceedings. Licensee shall immediately notify Licensor upon the occurrence of one of these conditions.
Licensor may terminate this Agreement upon written notice to Licensee in the event that Licensee asserts a claim of patent infringement against Licensor or any third party with respect to products or services of Licensor, unless (a) such claim is first asserted after Licensor has asserted a claim of patent infringement against Licensee or any third party with respect to products or services of Licensee, or (b) Licensee fully withdraws such claim within ten (10) days after being notified by Licensor. For purposes of this paragraph, “Licensor” and “Licensee” shall also include their respective affiliates.
Licensee may terminate this Agreement by providing Licensor with at least thirty (30) days prior written notice, provided that if Licensee terminates this Agreement, it shall not be eligible to reinstate this license or accept any other general license offer with respect to the subject matter of this Agreement, unless the Licensor specifically agrees otherwise in writing.
Upon any termination of this Agreement, Licensee shall provide Licensor with a final royalty report within thirty (30) days after termination, along with full payment of all amounts due. The following sections shall also survive termination of this Agreement: 6, 7, 8, 9, and 10.
'''6. WARRANTIES'''
Licensor warrants that it has the right and authority to grant the rights and licenses granted in this Agreement.
Licensor disclaims all other warranties, representations, and conditions, whether express, implied, or statutory, including, but not limited to, the warranties of merchantability, fitness for a particular purpose, or non-infringement.
Without limiting the generality of the above disclaimer, Licensor makes no representation or warranties that: a) it will prosecute or continue to prosecute, maintain, or defend any patent or patent application, b) it will bring an infringement suit, assert any claim against third parties accused of infringement, or otherwise enforce any patent or patent application, c) it will join as a party to any suit or legal action, d) it will provide Licensee with know-how or assistance necessary or useful to practice the Licensed Patent Rights, e) the Licensed Patent Rights are valid or enforceable, or f) the Licensed Products or Licensed Processes may be exploited or practiced without infringing third party patents.
'''7. INDEMNIFICATION'''
Licensee shall indemnify and hold Licensor, and its officers, directors, employees, representatives, agents, and affiliates harmless from any and all damages, liabilities, costs, and expenses (including reasonable attorneys’ fees) arising out of or caused by Licensee’s practice or exploitation of the license granted by this Agreement or by the sale, use, or exploitation of Licensed Products or Licensed Processes by or under the authority of Licensee. Licensor shall notify Licensee promptly of any claim of which Licensor is aware and for which Licensor seeks indemnification. Licensee shall have the right to control the defense of such claims, except to the extent that the scope or validity of the Licensed Patent Rights are at issue, in which case Licensor may assume the sole control and defense of such claims at its own expense.
'''8. TRADEMARKS AND ATTRIBUTION'''
At Licensor’s request, Licensee agrees to mark Licensed Products and their packaging with patent markings as required by applicable law to preserve Licensor’s rights and otherwise enforce the Licensed Patents.
At Licensor’s request, Licensee shall reasonably cooperate with Licensor and provide such information as may be necessary for Licensor to prepare use case studies that document Licensee’s use of the Licensed Patent Rights and related usage or impact metrics. Each party may copy, distribute, and publish such use case studies, including by means of its Web sites, and authorize others to do so, to demonstrate the uses and impact of the technology.
Except solely as permitted above, neither party may use the other’s trademarks, service marks, trade names, company names, or logos (“Marks”) to offer, market, sell, or otherwise endorse any product or service or to engage in any other trademark usage, unless with the prior written authorization of the owner. Any uses of a party’s Marks shall inure solely to the benefit of that party, along with all goodwill associated therewith.
'''9. GENERAL PROVISIONS'''
Notices to the parties shall be provided at the address set forth in the License Data Record, unless a party provides written notice to the other party of a change of address. Notices may be provided by personal delivery, express delivery service, or registered mail. Notices shall be effective on the date received.
Nothing in this Agreement constitutes the parties as partners, joint venturers, principal and agent, or fiduciaries of each other.
A delay or failure in enforcing a right or obligation under this Agreement shall not be construed as an implied waiver of that right or obligation or of any other provision or breach under this Agreement. A waiver under this Agreement is only effective if made in writing and signed by the party granting the waiver.
An amendment or modification of this Agreement is effective only if made in writing and signed by the duly authorized representatives of the parties.
This Agreement constitutes the entire agreement between the parties as to the subject matter herein and supersedes all prior or contemporaneous negotiations, agreements, representations, memorandums, and understandings.
If any provision of this Agreement is deemed to be invalid or unenforceable, then that provision, to the extent unenforceable, is severable and the remainder of this Agreement shall continue in full force and effect.
Licensee may not assign any of its rights under this Agreement, delegate any of its obligations under this Agreement, or otherwise transfer this Agreement, without the prior written consent of Licensor, and any attempted assignment, transfer, or delegation shall be voidable by Licensor. Any change of control of Licensee shall be deemed an attempted transfer of this Agreement. Licensor may assign this Agreement in connection with a sale, merger, or transfer of the assets to which this Agreement relates, provided that the assignee assumes all rights and obligations under this Agreement.
Licensee agrees to maintain insurance in amounts prudent for Licensee’s operations and adequate to discharge Licensee’s obligations under Section 7.
This Agreement is governed by and interpreted in accordance with the laws of the jurisdiction set forth in the License Data Record, if any. The parties agree that the proper jurisdiction and venue for any disputes arising out of this Agreement shall be in the courts of the venue specified in the License Data Record, if any. If none are specified, then jurisdiction and venue shall be deemed to be in the relevant jurisdiction for Licensor’s address, as stated in the License Data Record.
No rights or forbearances are granted, or may arise (whether through implication, estoppel, exhaustion or otherwise) other than those expressly granted in this Agreement.
EXCEPT FOR THE OBLIGATION TO RENDER CONSIDERATION (IF ANY) IN SECTION 3, THE INDEMNIFICATION OBLIGATIONS IN SECTION 7, AND INFRINGEMENT OF ANY TRADEMARK OR INTELLECTUAL PROPERTY RIGHT, IN NO EVENT WILL EITHER PARTY HAVE ANY LIABILITY OF ANY KIND WHATSOEVER TO THE OTHER ARISING OUT OF THIS AGREEMENT, INCLUDING BUT NOT LIMITED TO, FOR INDIRECT, INCIDENTAL, CONSEQUENTIAL OR SPECIAL DAMAGES, EVEN IF ADVISED OF THE POSSIBILITY OF SUCH DAMAGES.
'''10. ADDITIONAL CLAUSES'''
Additional Clauses (if any) contained in the Licensed Data Record are hereby incorporated into this Agreement by reference. In the event of any conflict between the terms of this Agreement and the Additional Clauses, the terms of the Additional Clauses shall prevail.
'''Addendum A'''
The purpose of this Addendum is to provide guidelines for a License Data Record, which may be either in paper or electronic form. This License Data Record is unique to each transaction and must specify a minimum information set in order to give effect to the Patent License Agreement.
To constitute an agreement that incorporates the terms of the Patent License Agreement, a License Data Record must:
1) reference this Agreement by linking to the URL of the Patent License Agreement deed or legal code, attaching a copy of it, referencing it by name, or by any other means that uniquely and unambiguously identifies it; AND
2) provide the following information:
a. Name of Licensor: the name of the person or entities offering this license,
b. Licensor Contact Information: address, contact person, phone number, fax, and/or email,
c. Name of Licensee: the name of the person or entities accepting this license,
d. Licensee Contact Information: address, contact person, phone number, fax, and/or email,
e. Licensed Patent Rights: a list of patents and patent applications to be licensed,
OR
Specification: a written specification of the invention or technology to be licensed.

f. License Fees, Royalties, and other consideration (optional): a description of any required fees, royalties, or other consideration, including without limitation any requirements relating to improvements or innovations,

g. Field of Use (optional): a description of any scope of use limitations associated with the license,

h. “Have Made” Limitations (optional): any limitations to the license to “have made,”

i. Choice of Law (optional): jurisdiction for choice of law,

j. Choice of Venue (optional) jurisdiction for legal venue,

k. Territory (optional): geographic limitations of the license,

l. Offer Limitations (optional): any limitations associated with the offer, and

m. Additional Clauses

'''

Sample License Data Record'''

This License Data Record references and incorporates the GX Model Patent License Agreement (located at URL: _________)

Licensor Name:
Licensor Contact Address:
_____________________________
_____________________________
________________________
Phone: _______________________
Fax: _________________________
Email: ________________________

Licensee Name:
Licensee Contact Address:
_____________________________
________________________

________________________
Phone: _______________________
Fax: _________________________
Email: _____________________________
Licensed Patents Rights:
Patent No. ____________________________
Patent Application No.__________________ …
OR
Specification (attached a detailed specification or provide a URL):

License Fees & Royalties (optional):

Field of Use (optional):

Have Made Limitations (optional):

Choice of Law (optional) City_____________, State_____________
Choice of Venue (optional) City_____________, State_____________

Territory (Optional)

Offer Limitations (Optional)

Additional Clauses (Optional)

Model Patent License

2010-07-20T15:46:06Z

Thinh: /* Addendum A */

See [[Patent Tools Public Discussion]]

==How to Use this Model Patent License Agreement==

This Model Patent License Agreement is intended to be used as part of a “public license offer” to license patent rights. A public license offer provides two main benefits:

a) it is publicly accessible: anyone can read the full terms of the offer; and
b) it is an “active” offer so that anyone can accept it if they agree to all its terms.

To have these benefits, the offer must be openly published, and it must be capable of being accepted by anyone on a non-discriminatory basis and without additional negotiation. Used in the right context, this type of offer can provide benefits for both licensor and licensee. A licensor can use a public license offer to publicize its willingness to license patent rights on reasonable and non-discriminatory terms, thus attracting innovators and potential licensees who might otherwise not have been either aware that such patent rights were available for license or who might otherwise be unwilling to approach the licensor due to anticipated, significant transaction costs typically associated with negotiating a favorable license. A potential licensee can rely on the public and non-discriminatory availability of this public license offer to make plans and decisions about technology implementation, which in the absence of such offers, would be complicated or impossible.

Patent licenses can be very complicated, particularly when complex commercialization and licensing strategies are involved. So it would be impossible for anyone to write a license that addresses everyone’s needs or fits every scenario. Instead, we developed this Model Patent License Agreement to be simple and easy to understand. It is intended to provide a simple standard model license to make patents that are being held for defensive purposes available for other uses—outside of those for which they are being maintained for defensive uses—on reasonable and non-discriminatory terms: preferably free of charge and without unnecessary field limitations. If you need to implement a more complex licensing strategy, then this may not be the right tool for you. In any case, please consult your own attorney before making an offer. Creative Commons is not a law firm, so we cannot provide you with advice on whether to use this instrument or how to tailor it to suit your needs or business strategy.

To use this Model Patent License Agreement, you need to supply some basic information, which is found in the License Data Record (see Addendum A). This information should be supplied in a standard electronic format for ease of reference, but you can use other formats if you wish. Some basic information is required in order to make a complete public license offer, while other fields may be optional. If you do not fill out the optional fields, then they will be defined by default provisions in the license. IN MOST CASES, THE DEFAULT OPTION ALLOWS FOR THE MOST PERMISSIVE AND FREE USE BY THE LICENSEE. For example, by default, there are no field of use restrictions, fees, royalties, or restrictions on the “have made” right. You may also add limitations to the offer itself (for example, an expiration date for the offer). We do not encourage you to impose other offer limitations beyond this. However, in some circumstances, it may be reasonable to specify that anyone currently engaged in litigation with you that would otherwise give you grounds for terminating the license (see Section 5) may not accept the offer in the first place.

Together, the License Data Record and the Model Patent License Agreement will be become your public license offer. When such an offer is made available on your Web site, or through clearinghouses like GX, anyone eligible to accept the offer may accept it through a registration and acceptance process. As part of that process, the Licensee will supply the Licensee-specific information needed to complete the License Data Record. This process, and the transaction record, then completes the license agreement.

----

==MODEL PATENT LICENSE AGREEMENT==

The owner of the Licensed Patent Rights, as defined below (the “Licensor”), grants a license on the terms and conditions set forth in this Patent License Agreement (the “Agreement”) to the person or entity accepting this Agreement (the “Licensee”).

===1. DEFINITIONS===

“Field of Use” means the fields of use specified in the License Data Record. If not so specified, Field of Use means all fields of use.

“License Data Record” means a written or electronic document that provides the information specified in Addendum A.

“Licensed Patent Rights” means (a) the patents and patent applications listed in the License Data Record, (b) all divisionals, continuations, and foreign counterpart applications claiming priority from any patent or patent application described in (a), (c) those claims of any continuations-in-parts that claim priority exclusively from the patents or patent applications described in (a) and (b); (d) all patents issuing from patent applications included in (a) through (c); and (e) all reissues, reexaminations, renewals, and extensions of any patents included in (a) through (d).

“Licensed Process(es)” means a process the practice of which would infringe, but for the license granted in this Agreement, one or more claims of the Licensed Patent Rights.

“Licensed Product(s)” means a machine, article of manufacture, composition of matter, or other product (a) the manufacture, use, sale, offer for sale, or import of which would infringe, but for the licenses granted in this Agreement, one or more claims of the Licensed Patent Rights, or (b) made or directly obtained by a Licensed Process.

'''{Proposed Addition: “Necessary Patent Claims” means any patent claim(s), now owned or hereafter acquired by Licensor in any patent that Licensor has the right to license, that would be infringed, but for the license granted in Section 2.2, by the making, using, selling, or importation of processes or products that implement the Specification, but excluding any claims that are not necessary to implement the Specification as written.}'''

'''{Proposed Addition: “Specification” means the specification, if any, set forth in the License Data Record by the "Specification" entry.}'''

“Territory” means a geographical or jurisdictional designation, as specified in the License Data Record. If not so specified, Territory means worldwide.

“Term” means the period of time specified in Section 5.

===2. GRANT OF LICENSE===

2.1 Subject to the terms and conditions of this Agreement and the License Data Record, Licensor grants to Licensee a non-exclusive, non-transferable (except as expressly permitted in Section 9) license, without a right to sublicense, under the Licensed Patent Rights, in the Territory and during the Term, to make, use, sell, offer for sale, and import Licensed Products and to practice Licensed Processes, in each case, in the Field of Use.

'''{Proposed Addition: 2.2 If the License Data Record contains a Specification, then subject to the terms and conditions of this Agreement and the License Data Record, Licensor grants to Licensee a non-exclusive, non-transferable (except as expressly permitted in Section 9) license, without a right to sublicense, under the Necessary Patent Claims, in the Territory, and during the Term, to make, use, sell, offer for sale, and import products that implement the Specification and to practice processes that implement the Specification.}'''

The above licenses includes the right to have made, except as otherwise specified by the License Data Record.

===3. FEES===

Fees, royalties, or other monetary consideration, if any, shall be specified in the “License Fees and Royalties” section of License Data Record. If none are specified, then no payment is required under this Agreement.

===4. REPORTING===

Licensee shall provide quarterly reports to Licensor, along with any required payments, in sufficient detail to verify the calculation of royalties owed, including without limitation, gross receipts from the use, sale, or other disposition of Licensed Products and/or from the practice of a Licensed Process, deductions taken for calculating revenues, and the total royalty due. If no royalties are due, then the report shall so specify.

If no royalties are required under this Agreement, then Licensee shall instead provide such reports as may be reasonably requested by Licensor to perform the analysis and activities described below.

Licensor may use the information provided by Licensee to analyze and publish metrics and impact statistics related to the use of the Licensed Patent Rights and have others do so, as long as such information is used only in aggregated and anonymous form. Licensor may also use or disclose the information to enforce this Agreement, and/or to comply with a court order, or otherwise as required by law.

===5. TERM===

The Term of this Agreement commences on its execution and ends upon the expiration, abandonment, or final invalidity of all claims within the Licensed Patent Rights, unless earlier terminated as permitted below.

Licensor may terminate this Agreement in the event of a material breach of this Agreement that is not cured within thirty (30) days after Licensor provides written notice to Licensee specifying such breach.

To the extent permitted by applicable law, Licensor may terminate this Agreement immediately in the event Licensee becomes insolvent, files for bankruptcy protection, makes an assignment for the benefit of creditors, or becomes the subject of involuntary bankruptcy proceedings. Licensee shall immediately notify Licensor upon the occurrence of one of these conditions.

Licensor may terminate this Agreement upon written notice to Licensee in the event that Licensee asserts a claim of patent infringement against Licensor or any third party with respect to products or services of Licensor, unless (a) such claim is first asserted after Licensor has asserted a claim of patent infringement against Licensee or any third party with respect to products or services of Licensee, or (b) Licensee fully withdraws such claim within ten (10) days after being notified by Licensor. For purposes of this paragraph, “Licensor” and “Licensee” shall also include their respective affiliates.

Licensee may terminate this Agreement by providing Licensor with at least thirty (30) days prior written notice.

Upon any termination of this Agreement, Licensee shall provide Licensor with a final royalty report within thirty (30) days after termination, along with full payment of all amounts due. The following sections shall also survive termination of this Agreement: 6, 7, 8, and 9.

===6. WARRANTIES===

Licensor warrants that it has the right and authority to grant the rights and licenses granted in this Agreement.

Licensor disclaims all other warranties, representations, and conditions, whether express, implied, or statutory, including, but not limited to, the warranties of merchantability, fitness for a particular purpose, or non-infringement.

Without limiting the generality of the above disclaimer, Licensor makes no representation or warranties that: a) it will prosecute or continue to prosecute, maintain, or defend any patent or patent application, b) it will bring an infringement suit, assert any claim against third parties accused of infringement, or otherwise enforce any patent or patent application, c) it will join as a party to any suit or legal action, d) it will provide Licensee with know-how or assistance necessary or useful to practice the Licensed Patent Rights, e) the Licensed Patent Rights are valid or enforceable, or f) the Licensed Products or Licensed Processes may be exploited or practiced without infringing third party patents.

===7. INDEMNIFICATION===

Licensee shall indemnify and hold Licensor, and its officers, directors, employees, representatives, agents, and affiliates harmless from any and all damages, liabilities, costs, and expenses (including reasonable attorneys’ fees) arising out of or caused by Licensee’s practice or exploitation of the license granted by this Agreement or by the sale, use, or exploitation of Licensed Products or Licensed Processes by or under the authority of Licensee. Licensor shall notify Licensee promptly of any claim of which Licensor is aware and for which Licensor seeks indemnification. Licensee shall have the right to control the defense of such claims, except to the extent that the scope or validity of the Licensed Patent Rights are at issue, in which case Licensor may assume the sole control and defense of such claims at its own expense.

===8. TRADEMARKS AND ATTRIBUTION===

Licensee agrees to mark Licensed Products and their packaging with patent markings as required by applicable law to preserve Licensor’s rights and otherwise enforce the Licensed Patents.

At Licensor’s request, Licensee shall reasonably cooperate with Licensor and provide such information as may be necessary for Licensor to prepare use case studies that document Licensee’s use of the Licensed Patent Rights and related usage or impact metrics. Each party may copy, distribute, and publish such use case studies, including by means of its Web sites, and authorize others to do so, to demonstrate the uses and impact of the technology.

Except solely as permitted above, neither party may use the other’s trademarks, service marks, trade names, company names, or logos (“Marks”) to offer, market, sell, or otherwise endorse any product or service or to engage in any other trademark usage, unless with the prior written authorization of the owner. Any uses of a party’s Marks shall inure solely to the benefit of that party, along with all goodwill associated therewith.

===9. GENERAL PROVISIONS===

Notices to the parties shall be provided at the address set forth in the License Data Record, unless a party provides written notice to the other party of a change of address. Notices may be provided by personal delivery, express delivery service, or registered mail. Notices shall be effective on the date received.

Nothing in this Agreement constitutes the parties as partners, joint venturers, principal and agent, or fiduciaries of each other.

A delay or failure in enforcing a right or obligation under this Agreement shall not be construed as an implied waiver of that right or obligation or of any other provision or breach under this Agreement. A waiver under this Agreement is only effective if made in writing and signed by the party granting the waiver.

An amendment or modification of this Agreement is effective only if made in writing and signed by the duly authorized representatives of the parties.

This Agreement constitutes the entire agreement between the parties as to the subject matter herein and supersedes all prior or contemporaneous negotiations, agreements, representations, memorandums, and understandings.

If any provision of this Agreement is deemed to be invalid or unenforceable, then that provision, to the extent unenforceable, is severable and the remainder of this Agreement shall continue in full force and effect.

Licensee may not assign any of its rights under this Agreement, delegate any of its obligations under this Agreement, or otherwise transfer this Agreement, without the prior written consent of Licensor, and any attempted assignment, transfer, or delegation shall be voidable by Licensor. Any change of control of Licensee shall be deemed an attempted transfer of this Agreement. Licensor may assign this Agreement in connection with a sale, merger, or transfer of the assets to which this Agreement relates, provided that the assignee assumes all rights and obligations under this Agreement.

Licensee agrees to maintain insurance in amounts prudent for Licensee’s operations and adequate to discharge Licensee’s obligations under Section 7.

This Agreement is governed by and interpreted in accordance with the laws of the jurisdiction set forth in the License Data Record, if any. The parties agree that the proper jurisdiction and venue for any disputes arising out of this Agreement shall be in the courts of the venue specified in the License Data Record, if any. If none are specified, then jurisdiction and venue shall be deemed to be in the relevant jurisdiction for Licensor’s address, as stated in the License Data Record.

No rights or forbearances are granted, or may arise (whether through implication, estoppel, exhaustion or otherwise) other than those expressly granted in this Agreement.

EXCEPT FOR THE OBLIGATION TO MAKE PAYMENTS (IF ANY) IN SECTION 3, THE INDEMNIFICATION OBLIGATIONS IN SECTION 7, AND INFRINGEMENT OF ANY TRADEMARK OR INTELLECTUAL PROPERTY RIGHT, IN NO EVENT WILL EITHER PARTY HAVE ANY LIABILITY OF ANY KIND WHATSOEVER TO THE OTHER ARISING OUT OF THIS AGREEMENT, INCLUDING BUT NOT LIMITED TO, FOR INDIRECT, INCIDENTAL, CONSEQUENTIAL OR SPECIAL DAMAGES, EVEN IF ADVISED OF THE POSSIBILITY OF SUCH DAMAGES.

===Addendum A===

The purpose of this Addendum is to provide guidelines for a License Data Record, which may be either in paper or electronic form. This License Data Record is unique to each transaction and must specify a minimum information set in order to give effect to the Patent License Agreement.

To constitute an agreement that incorporates the terms of the Patent License Agreement, a License Data Record must:

*1) reference this Agreement by linking to the URL of the Patent License Agreement deed or legal code, attaching a copy of it, referencing it by name, or by any other means that uniquely and unambiguously identifies it; AND
*2) provide the following information:
*a. Name of Licensor: the name of the person or entities offering this license,
*b. Licensor Contact Information: address, contact person, phone number, fax, and/or email,
*c. Name of Licensee: the name of the person or entities accepting this license,
*d. Licensee Contact Information: address, contact person, phone number, fax, and/or email,
*e. Licensed Patent Rights: a list of patents and patent applications to be licensed, '''OR'''
'''Specification: a written specification of the invention or technology to be licensed.'''
*f. License Fees and Royalties (optional): a description of any required fees, royalties, or other monetary consideration;
*g. Field of Use (optional): a description of any scope of use limitations associated with the license,
*h. “Have Made” Limitations (optional): any limitations to the license to “have made”
*i. Choice of Law (optional): jurisdiction for choice of law,
*j. Choice of Venue (optional) jurisdiction for legal venue,
*k. Territory (optional): geographic limitations of the license,
*l. Offer Limitations (optional): any limitations associated with the offer

'''Sample License Data Record'''

This License Data Record references and incorporates the GX Model Patent License Agreement (located at URL: _________)

Licensor Name

Licensor Contact
Address: _____________________________
_____________________________
_____________________________

Phone: _____________________________

Fax: _____________________________

Email: _____________________________

Licensee Name
Licensee Contact
Address: _____________________________
_____________________________
_____________________________
Phone: _____________________________
Fax: _____________________________
Email: _____________________________

Licensed Patents Rights:

Patent No. ____________________________

Patent Application No.__________________
…

'''OR'''

Specification (attached a detailed specification or provide a URL):

License Fees & Royalties (optional):

Field of Use (optional):

Have Made Limitations (optional):

Choice of Law (optional) City_____________, State_____________

Choice of Venue (optional) City_____________, State_____________

Territory (Optional)

Offer Limitations (Optional)

Model Patent License

2010-07-20T15:44:35Z

Thinh: /* Addendum A */

See [[Patent Tools Public Discussion]]

==How to Use this Model Patent License Agreement==

This Model Patent License Agreement is intended to be used as part of a “public license offer” to license patent rights. A public license offer provides two main benefits:

a) it is publicly accessible: anyone can read the full terms of the offer; and
b) it is an “active” offer so that anyone can accept it if they agree to all its terms.

To have these benefits, the offer must be openly published, and it must be capable of being accepted by anyone on a non-discriminatory basis and without additional negotiation. Used in the right context, this type of offer can provide benefits for both licensor and licensee. A licensor can use a public license offer to publicize its willingness to license patent rights on reasonable and non-discriminatory terms, thus attracting innovators and potential licensees who might otherwise not have been either aware that such patent rights were available for license or who might otherwise be unwilling to approach the licensor due to anticipated, significant transaction costs typically associated with negotiating a favorable license. A potential licensee can rely on the public and non-discriminatory availability of this public license offer to make plans and decisions about technology implementation, which in the absence of such offers, would be complicated or impossible.

Patent licenses can be very complicated, particularly when complex commercialization and licensing strategies are involved. So it would be impossible for anyone to write a license that addresses everyone’s needs or fits every scenario. Instead, we developed this Model Patent License Agreement to be simple and easy to understand. It is intended to provide a simple standard model license to make patents that are being held for defensive purposes available for other uses—outside of those for which they are being maintained for defensive uses—on reasonable and non-discriminatory terms: preferably free of charge and without unnecessary field limitations. If you need to implement a more complex licensing strategy, then this may not be the right tool for you. In any case, please consult your own attorney before making an offer. Creative Commons is not a law firm, so we cannot provide you with advice on whether to use this instrument or how to tailor it to suit your needs or business strategy.

To use this Model Patent License Agreement, you need to supply some basic information, which is found in the License Data Record (see Addendum A). This information should be supplied in a standard electronic format for ease of reference, but you can use other formats if you wish. Some basic information is required in order to make a complete public license offer, while other fields may be optional. If you do not fill out the optional fields, then they will be defined by default provisions in the license. IN MOST CASES, THE DEFAULT OPTION ALLOWS FOR THE MOST PERMISSIVE AND FREE USE BY THE LICENSEE. For example, by default, there are no field of use restrictions, fees, royalties, or restrictions on the “have made” right. You may also add limitations to the offer itself (for example, an expiration date for the offer). We do not encourage you to impose other offer limitations beyond this. However, in some circumstances, it may be reasonable to specify that anyone currently engaged in litigation with you that would otherwise give you grounds for terminating the license (see Section 5) may not accept the offer in the first place.

Together, the License Data Record and the Model Patent License Agreement will be become your public license offer. When such an offer is made available on your Web site, or through clearinghouses like GX, anyone eligible to accept the offer may accept it through a registration and acceptance process. As part of that process, the Licensee will supply the Licensee-specific information needed to complete the License Data Record. This process, and the transaction record, then completes the license agreement.

----

==MODEL PATENT LICENSE AGREEMENT==

The owner of the Licensed Patent Rights, as defined below (the “Licensor”), grants a license on the terms and conditions set forth in this Patent License Agreement (the “Agreement”) to the person or entity accepting this Agreement (the “Licensee”).

===1. DEFINITIONS===

“Field of Use” means the fields of use specified in the License Data Record. If not so specified, Field of Use means all fields of use.

“License Data Record” means a written or electronic document that provides the information specified in Addendum A.

“Licensed Patent Rights” means (a) the patents and patent applications listed in the License Data Record, (b) all divisionals, continuations, and foreign counterpart applications claiming priority from any patent or patent application described in (a), (c) those claims of any continuations-in-parts that claim priority exclusively from the patents or patent applications described in (a) and (b); (d) all patents issuing from patent applications included in (a) through (c); and (e) all reissues, reexaminations, renewals, and extensions of any patents included in (a) through (d).

“Licensed Process(es)” means a process the practice of which would infringe, but for the license granted in this Agreement, one or more claims of the Licensed Patent Rights.

“Licensed Product(s)” means a machine, article of manufacture, composition of matter, or other product (a) the manufacture, use, sale, offer for sale, or import of which would infringe, but for the licenses granted in this Agreement, one or more claims of the Licensed Patent Rights, or (b) made or directly obtained by a Licensed Process.

'''{Proposed Addition: “Necessary Patent Claims” means any patent claim(s), now owned or hereafter acquired by Licensor in any patent that Licensor has the right to license, that would be infringed, but for the license granted in Section 2.2, by the making, using, selling, or importation of processes or products that implement the Specification, but excluding any claims that are not necessary to implement the Specification as written.}'''

'''{Proposed Addition: “Specification” means the specification, if any, set forth in the License Data Record by the "Specification" entry.}'''

“Territory” means a geographical or jurisdictional designation, as specified in the License Data Record. If not so specified, Territory means worldwide.

“Term” means the period of time specified in Section 5.

===2. GRANT OF LICENSE===

2.1 Subject to the terms and conditions of this Agreement and the License Data Record, Licensor grants to Licensee a non-exclusive, non-transferable (except as expressly permitted in Section 9) license, without a right to sublicense, under the Licensed Patent Rights, in the Territory and during the Term, to make, use, sell, offer for sale, and import Licensed Products and to practice Licensed Processes, in each case, in the Field of Use.

'''{Proposed Addition: 2.2 If the License Data Record contains a Specification, then subject to the terms and conditions of this Agreement and the License Data Record, Licensor grants to Licensee a non-exclusive, non-transferable (except as expressly permitted in Section 9) license, without a right to sublicense, under the Necessary Patent Claims, in the Territory, and during the Term, to make, use, sell, offer for sale, and import products that implement the Specification and to practice processes that implement the Specification.}'''

The above licenses includes the right to have made, except as otherwise specified by the License Data Record.

===3. FEES===

Fees, royalties, or other monetary consideration, if any, shall be specified in the “License Fees and Royalties” section of License Data Record. If none are specified, then no payment is required under this Agreement.

===4. REPORTING===

Licensee shall provide quarterly reports to Licensor, along with any required payments, in sufficient detail to verify the calculation of royalties owed, including without limitation, gross receipts from the use, sale, or other disposition of Licensed Products and/or from the practice of a Licensed Process, deductions taken for calculating revenues, and the total royalty due. If no royalties are due, then the report shall so specify.

If no royalties are required under this Agreement, then Licensee shall instead provide such reports as may be reasonably requested by Licensor to perform the analysis and activities described below.

Licensor may use the information provided by Licensee to analyze and publish metrics and impact statistics related to the use of the Licensed Patent Rights and have others do so, as long as such information is used only in aggregated and anonymous form. Licensor may also use or disclose the information to enforce this Agreement, and/or to comply with a court order, or otherwise as required by law.

===5. TERM===

The Term of this Agreement commences on its execution and ends upon the expiration, abandonment, or final invalidity of all claims within the Licensed Patent Rights, unless earlier terminated as permitted below.

Licensor may terminate this Agreement in the event of a material breach of this Agreement that is not cured within thirty (30) days after Licensor provides written notice to Licensee specifying such breach.

To the extent permitted by applicable law, Licensor may terminate this Agreement immediately in the event Licensee becomes insolvent, files for bankruptcy protection, makes an assignment for the benefit of creditors, or becomes the subject of involuntary bankruptcy proceedings. Licensee shall immediately notify Licensor upon the occurrence of one of these conditions.

Licensor may terminate this Agreement upon written notice to Licensee in the event that Licensee asserts a claim of patent infringement against Licensor or any third party with respect to products or services of Licensor, unless (a) such claim is first asserted after Licensor has asserted a claim of patent infringement against Licensee or any third party with respect to products or services of Licensee, or (b) Licensee fully withdraws such claim within ten (10) days after being notified by Licensor. For purposes of this paragraph, “Licensor” and “Licensee” shall also include their respective affiliates.

Licensee may terminate this Agreement by providing Licensor with at least thirty (30) days prior written notice.

Upon any termination of this Agreement, Licensee shall provide Licensor with a final royalty report within thirty (30) days after termination, along with full payment of all amounts due. The following sections shall also survive termination of this Agreement: 6, 7, 8, and 9.

===6. WARRANTIES===

Licensor warrants that it has the right and authority to grant the rights and licenses granted in this Agreement.

Licensor disclaims all other warranties, representations, and conditions, whether express, implied, or statutory, including, but not limited to, the warranties of merchantability, fitness for a particular purpose, or non-infringement.

Without limiting the generality of the above disclaimer, Licensor makes no representation or warranties that: a) it will prosecute or continue to prosecute, maintain, or defend any patent or patent application, b) it will bring an infringement suit, assert any claim against third parties accused of infringement, or otherwise enforce any patent or patent application, c) it will join as a party to any suit or legal action, d) it will provide Licensee with know-how or assistance necessary or useful to practice the Licensed Patent Rights, e) the Licensed Patent Rights are valid or enforceable, or f) the Licensed Products or Licensed Processes may be exploited or practiced without infringing third party patents.

===7. INDEMNIFICATION===

Licensee shall indemnify and hold Licensor, and its officers, directors, employees, representatives, agents, and affiliates harmless from any and all damages, liabilities, costs, and expenses (including reasonable attorneys’ fees) arising out of or caused by Licensee’s practice or exploitation of the license granted by this Agreement or by the sale, use, or exploitation of Licensed Products or Licensed Processes by or under the authority of Licensee. Licensor shall notify Licensee promptly of any claim of which Licensor is aware and for which Licensor seeks indemnification. Licensee shall have the right to control the defense of such claims, except to the extent that the scope or validity of the Licensed Patent Rights are at issue, in which case Licensor may assume the sole control and defense of such claims at its own expense.

===8. TRADEMARKS AND ATTRIBUTION===

Licensee agrees to mark Licensed Products and their packaging with patent markings as required by applicable law to preserve Licensor’s rights and otherwise enforce the Licensed Patents.

At Licensor’s request, Licensee shall reasonably cooperate with Licensor and provide such information as may be necessary for Licensor to prepare use case studies that document Licensee’s use of the Licensed Patent Rights and related usage or impact metrics. Each party may copy, distribute, and publish such use case studies, including by means of its Web sites, and authorize others to do so, to demonstrate the uses and impact of the technology.

Except solely as permitted above, neither party may use the other’s trademarks, service marks, trade names, company names, or logos (“Marks”) to offer, market, sell, or otherwise endorse any product or service or to engage in any other trademark usage, unless with the prior written authorization of the owner. Any uses of a party’s Marks shall inure solely to the benefit of that party, along with all goodwill associated therewith.

===9. GENERAL PROVISIONS===

Notices to the parties shall be provided at the address set forth in the License Data Record, unless a party provides written notice to the other party of a change of address. Notices may be provided by personal delivery, express delivery service, or registered mail. Notices shall be effective on the date received.

Nothing in this Agreement constitutes the parties as partners, joint venturers, principal and agent, or fiduciaries of each other.

A delay or failure in enforcing a right or obligation under this Agreement shall not be construed as an implied waiver of that right or obligation or of any other provision or breach under this Agreement. A waiver under this Agreement is only effective if made in writing and signed by the party granting the waiver.

An amendment or modification of this Agreement is effective only if made in writing and signed by the duly authorized representatives of the parties.

This Agreement constitutes the entire agreement between the parties as to the subject matter herein and supersedes all prior or contemporaneous negotiations, agreements, representations, memorandums, and understandings.

If any provision of this Agreement is deemed to be invalid or unenforceable, then that provision, to the extent unenforceable, is severable and the remainder of this Agreement shall continue in full force and effect.

Licensee may not assign any of its rights under this Agreement, delegate any of its obligations under this Agreement, or otherwise transfer this Agreement, without the prior written consent of Licensor, and any attempted assignment, transfer, or delegation shall be voidable by Licensor. Any change of control of Licensee shall be deemed an attempted transfer of this Agreement. Licensor may assign this Agreement in connection with a sale, merger, or transfer of the assets to which this Agreement relates, provided that the assignee assumes all rights and obligations under this Agreement.

Licensee agrees to maintain insurance in amounts prudent for Licensee’s operations and adequate to discharge Licensee’s obligations under Section 7.

This Agreement is governed by and interpreted in accordance with the laws of the jurisdiction set forth in the License Data Record, if any. The parties agree that the proper jurisdiction and venue for any disputes arising out of this Agreement shall be in the courts of the venue specified in the License Data Record, if any. If none are specified, then jurisdiction and venue shall be deemed to be in the relevant jurisdiction for Licensor’s address, as stated in the License Data Record.

No rights or forbearances are granted, or may arise (whether through implication, estoppel, exhaustion or otherwise) other than those expressly granted in this Agreement.

EXCEPT FOR THE OBLIGATION TO MAKE PAYMENTS (IF ANY) IN SECTION 3, THE INDEMNIFICATION OBLIGATIONS IN SECTION 7, AND INFRINGEMENT OF ANY TRADEMARK OR INTELLECTUAL PROPERTY RIGHT, IN NO EVENT WILL EITHER PARTY HAVE ANY LIABILITY OF ANY KIND WHATSOEVER TO THE OTHER ARISING OUT OF THIS AGREEMENT, INCLUDING BUT NOT LIMITED TO, FOR INDIRECT, INCIDENTAL, CONSEQUENTIAL OR SPECIAL DAMAGES, EVEN IF ADVISED OF THE POSSIBILITY OF SUCH DAMAGES.

===Addendum A===

The purpose of this Addendum is to provide guidelines for a License Data Record, which may be either in paper or electronic form. This License Data Record is unique to each transaction and must specify a minimum information set in order to give effect to the Patent License Agreement.

To constitute an agreement that incorporates the terms of the Patent License Agreement, a License Data Record must:

*1) reference this Agreement by linking to the URL of the Patent License Agreement deed or legal code, attaching a copy of it, referencing it by name, or by any other means that uniquely and unambiguously identifies it; AND
*2) provide the following information:
*a. Name of Licensor: the name of the person or entities offering this license,
*b. Licensor Contact Information: address, contact person, phone number, fax, and/or email,
*c. Name of Licensee: the name of the person or entities accepting this license,
*d. Licensee Contact Information: address, contact person, phone number, fax, and/or email,
*e. Licensed Patent Rights: a list of patents and patent applications to be licensed, '''OR'''
'''Specification: a written specification of the technology or standard to be licensed.'''
*f. License Fees and Royalties (optional): a description of any required fees, royalties, or other monetary consideration;
*g. Field of Use (optional): a description of any scope of use limitations associated with the license,
*h. “Have Made” Limitations (optional): any limitations to the license to “have made”
*i. Choice of Law (optional): jurisdiction for choice of law,
*j. Choice of Venue (optional) jurisdiction for legal venue,
*k. Territory (optional): geographic limitations of the license,
*l. Offer Limitations (optional): any limitations associated with the offer

'''Sample License Data Record'''

This License Data Record references and incorporates the GX Model Patent License Agreement (located at URL: _________)

Licensor Name

Licensor Contact
Address: _____________________________
_____________________________
_____________________________

Phone: _____________________________

Fax: _____________________________

Email: _____________________________

Licensee Name
Licensee Contact
Address: _____________________________
_____________________________
_____________________________
Phone: _____________________________
Fax: _____________________________
Email: _____________________________

Licensed Patents Rights:

Patent No. ____________________________

Patent Application No.__________________
…

'''OR'''

Specification (attached a detailed specification or provide a URL):

License Fees & Royalties (optional):

Field of Use (optional):

Have Made Limitations (optional):

Choice of Law (optional) City_____________, State_____________

Choice of Venue (optional) City_____________, State_____________

Territory (Optional)

Offer Limitations (Optional)

Model Patent License

2010-07-20T15:25:14Z

Thinh: /* Addendum A */

See [[Patent Tools Public Discussion]]

==How to Use this Model Patent License Agreement==

This Model Patent License Agreement is intended to be used as part of a “public license offer” to license patent rights. A public license offer provides two main benefits:

a) it is publicly accessible: anyone can read the full terms of the offer; and
b) it is an “active” offer so that anyone can accept it if they agree to all its terms.

To have these benefits, the offer must be openly published, and it must be capable of being accepted by anyone on a non-discriminatory basis and without additional negotiation. Used in the right context, this type of offer can provide benefits for both licensor and licensee. A licensor can use a public license offer to publicize its willingness to license patent rights on reasonable and non-discriminatory terms, thus attracting innovators and potential licensees who might otherwise not have been either aware that such patent rights were available for license or who might otherwise be unwilling to approach the licensor due to anticipated, significant transaction costs typically associated with negotiating a favorable license. A potential licensee can rely on the public and non-discriminatory availability of this public license offer to make plans and decisions about technology implementation, which in the absence of such offers, would be complicated or impossible.

Patent licenses can be very complicated, particularly when complex commercialization and licensing strategies are involved. So it would be impossible for anyone to write a license that addresses everyone’s needs or fits every scenario. Instead, we developed this Model Patent License Agreement to be simple and easy to understand. It is intended to provide a simple standard model license to make patents that are being held for defensive purposes available for other uses—outside of those for which they are being maintained for defensive uses—on reasonable and non-discriminatory terms: preferably free of charge and without unnecessary field limitations. If you need to implement a more complex licensing strategy, then this may not be the right tool for you. In any case, please consult your own attorney before making an offer. Creative Commons is not a law firm, so we cannot provide you with advice on whether to use this instrument or how to tailor it to suit your needs or business strategy.

To use this Model Patent License Agreement, you need to supply some basic information, which is found in the License Data Record (see Addendum A). This information should be supplied in a standard electronic format for ease of reference, but you can use other formats if you wish. Some basic information is required in order to make a complete public license offer, while other fields may be optional. If you do not fill out the optional fields, then they will be defined by default provisions in the license. IN MOST CASES, THE DEFAULT OPTION ALLOWS FOR THE MOST PERMISSIVE AND FREE USE BY THE LICENSEE. For example, by default, there are no field of use restrictions, fees, royalties, or restrictions on the “have made” right. You may also add limitations to the offer itself (for example, an expiration date for the offer). We do not encourage you to impose other offer limitations beyond this. However, in some circumstances, it may be reasonable to specify that anyone currently engaged in litigation with you that would otherwise give you grounds for terminating the license (see Section 5) may not accept the offer in the first place.

Together, the License Data Record and the Model Patent License Agreement will be become your public license offer. When such an offer is made available on your Web site, or through clearinghouses like GX, anyone eligible to accept the offer may accept it through a registration and acceptance process. As part of that process, the Licensee will supply the Licensee-specific information needed to complete the License Data Record. This process, and the transaction record, then completes the license agreement.

----

==MODEL PATENT LICENSE AGREEMENT==

The owner of the Licensed Patent Rights, as defined below (the “Licensor”), grants a license on the terms and conditions set forth in this Patent License Agreement (the “Agreement”) to the person or entity accepting this Agreement (the “Licensee”).

===1. DEFINITIONS===

“Field of Use” means the fields of use specified in the License Data Record. If not so specified, Field of Use means all fields of use.

“License Data Record” means a written or electronic document that provides the information specified in Addendum A.

“Licensed Patent Rights” means (a) the patents and patent applications listed in the License Data Record, (b) all divisionals, continuations, and foreign counterpart applications claiming priority from any patent or patent application described in (a), (c) those claims of any continuations-in-parts that claim priority exclusively from the patents or patent applications described in (a) and (b); (d) all patents issuing from patent applications included in (a) through (c); and (e) all reissues, reexaminations, renewals, and extensions of any patents included in (a) through (d).

“Licensed Process(es)” means a process the practice of which would infringe, but for the license granted in this Agreement, one or more claims of the Licensed Patent Rights.

“Licensed Product(s)” means a machine, article of manufacture, composition of matter, or other product (a) the manufacture, use, sale, offer for sale, or import of which would infringe, but for the licenses granted in this Agreement, one or more claims of the Licensed Patent Rights, or (b) made or directly obtained by a Licensed Process.

'''{Proposed Addition: “Necessary Patent Claims” means any patent claim(s), now owned or hereafter acquired by Licensor in any patent that Licensor has the right to license, that would be infringed, but for the license granted in Section 2.2, by the making, using, selling, or importation of processes or products that implement the Specification, but excluding any claims that are not necessary to implement the Specification as written.}'''

'''{Proposed Addition: “Specification” means the specification, if any, set forth in the License Data Record by the "Specification" entry.}'''

“Territory” means a geographical or jurisdictional designation, as specified in the License Data Record. If not so specified, Territory means worldwide.

“Term” means the period of time specified in Section 5.

===2. GRANT OF LICENSE===

2.1 Subject to the terms and conditions of this Agreement and the License Data Record, Licensor grants to Licensee a non-exclusive, non-transferable (except as expressly permitted in Section 9) license, without a right to sublicense, under the Licensed Patent Rights, in the Territory and during the Term, to make, use, sell, offer for sale, and import Licensed Products and to practice Licensed Processes, in each case, in the Field of Use.

'''{Proposed Addition: 2.2 If the License Data Record contains a Specification, then subject to the terms and conditions of this Agreement and the License Data Record, Licensor grants to Licensee a non-exclusive, non-transferable (except as expressly permitted in Section 9) license, without a right to sublicense, under the Necessary Patent Claims, in the Territory, and during the Term, to make, use, sell, offer for sale, and import products that implement the Specification and to practice processes that implement the Specification.}'''

The above licenses includes the right to have made, except as otherwise specified by the License Data Record.

===3. FEES===

Fees, royalties, or other monetary consideration, if any, shall be specified in the “License Fees and Royalties” section of License Data Record. If none are specified, then no payment is required under this Agreement.

===4. REPORTING===

Licensee shall provide quarterly reports to Licensor, along with any required payments, in sufficient detail to verify the calculation of royalties owed, including without limitation, gross receipts from the use, sale, or other disposition of Licensed Products and/or from the practice of a Licensed Process, deductions taken for calculating revenues, and the total royalty due. If no royalties are due, then the report shall so specify.

If no royalties are required under this Agreement, then Licensee shall instead provide such reports as may be reasonably requested by Licensor to perform the analysis and activities described below.

Licensor may use the information provided by Licensee to analyze and publish metrics and impact statistics related to the use of the Licensed Patent Rights and have others do so, as long as such information is used only in aggregated and anonymous form. Licensor may also use or disclose the information to enforce this Agreement, and/or to comply with a court order, or otherwise as required by law.

===5. TERM===

The Term of this Agreement commences on its execution and ends upon the expiration, abandonment, or final invalidity of all claims within the Licensed Patent Rights, unless earlier terminated as permitted below.

Licensor may terminate this Agreement in the event of a material breach of this Agreement that is not cured within thirty (30) days after Licensor provides written notice to Licensee specifying such breach.

To the extent permitted by applicable law, Licensor may terminate this Agreement immediately in the event Licensee becomes insolvent, files for bankruptcy protection, makes an assignment for the benefit of creditors, or becomes the subject of involuntary bankruptcy proceedings. Licensee shall immediately notify Licensor upon the occurrence of one of these conditions.

Licensor may terminate this Agreement upon written notice to Licensee in the event that Licensee asserts a claim of patent infringement against Licensor or any third party with respect to products or services of Licensor, unless (a) such claim is first asserted after Licensor has asserted a claim of patent infringement against Licensee or any third party with respect to products or services of Licensee, or (b) Licensee fully withdraws such claim within ten (10) days after being notified by Licensor. For purposes of this paragraph, “Licensor” and “Licensee” shall also include their respective affiliates.

Licensee may terminate this Agreement by providing Licensor with at least thirty (30) days prior written notice.

Upon any termination of this Agreement, Licensee shall provide Licensor with a final royalty report within thirty (30) days after termination, along with full payment of all amounts due. The following sections shall also survive termination of this Agreement: 6, 7, 8, and 9.

===6. WARRANTIES===

Licensor warrants that it has the right and authority to grant the rights and licenses granted in this Agreement.

Licensor disclaims all other warranties, representations, and conditions, whether express, implied, or statutory, including, but not limited to, the warranties of merchantability, fitness for a particular purpose, or non-infringement.

Without limiting the generality of the above disclaimer, Licensor makes no representation or warranties that: a) it will prosecute or continue to prosecute, maintain, or defend any patent or patent application, b) it will bring an infringement suit, assert any claim against third parties accused of infringement, or otherwise enforce any patent or patent application, c) it will join as a party to any suit or legal action, d) it will provide Licensee with know-how or assistance necessary or useful to practice the Licensed Patent Rights, e) the Licensed Patent Rights are valid or enforceable, or f) the Licensed Products or Licensed Processes may be exploited or practiced without infringing third party patents.

===7. INDEMNIFICATION===

Licensee shall indemnify and hold Licensor, and its officers, directors, employees, representatives, agents, and affiliates harmless from any and all damages, liabilities, costs, and expenses (including reasonable attorneys’ fees) arising out of or caused by Licensee’s practice or exploitation of the license granted by this Agreement or by the sale, use, or exploitation of Licensed Products or Licensed Processes by or under the authority of Licensee. Licensor shall notify Licensee promptly of any claim of which Licensor is aware and for which Licensor seeks indemnification. Licensee shall have the right to control the defense of such claims, except to the extent that the scope or validity of the Licensed Patent Rights are at issue, in which case Licensor may assume the sole control and defense of such claims at its own expense.

===8. TRADEMARKS AND ATTRIBUTION===

Licensee agrees to mark Licensed Products and their packaging with patent markings as required by applicable law to preserve Licensor’s rights and otherwise enforce the Licensed Patents.

At Licensor’s request, Licensee shall reasonably cooperate with Licensor and provide such information as may be necessary for Licensor to prepare use case studies that document Licensee’s use of the Licensed Patent Rights and related usage or impact metrics. Each party may copy, distribute, and publish such use case studies, including by means of its Web sites, and authorize others to do so, to demonstrate the uses and impact of the technology.

Except solely as permitted above, neither party may use the other’s trademarks, service marks, trade names, company names, or logos (“Marks”) to offer, market, sell, or otherwise endorse any product or service or to engage in any other trademark usage, unless with the prior written authorization of the owner. Any uses of a party’s Marks shall inure solely to the benefit of that party, along with all goodwill associated therewith.

===9. GENERAL PROVISIONS===

Notices to the parties shall be provided at the address set forth in the License Data Record, unless a party provides written notice to the other party of a change of address. Notices may be provided by personal delivery, express delivery service, or registered mail. Notices shall be effective on the date received.

Nothing in this Agreement constitutes the parties as partners, joint venturers, principal and agent, or fiduciaries of each other.

A delay or failure in enforcing a right or obligation under this Agreement shall not be construed as an implied waiver of that right or obligation or of any other provision or breach under this Agreement. A waiver under this Agreement is only effective if made in writing and signed by the party granting the waiver.

An amendment or modification of this Agreement is effective only if made in writing and signed by the duly authorized representatives of the parties.

This Agreement constitutes the entire agreement between the parties as to the subject matter herein and supersedes all prior or contemporaneous negotiations, agreements, representations, memorandums, and understandings.

If any provision of this Agreement is deemed to be invalid or unenforceable, then that provision, to the extent unenforceable, is severable and the remainder of this Agreement shall continue in full force and effect.

Licensee may not assign any of its rights under this Agreement, delegate any of its obligations under this Agreement, or otherwise transfer this Agreement, without the prior written consent of Licensor, and any attempted assignment, transfer, or delegation shall be voidable by Licensor. Any change of control of Licensee shall be deemed an attempted transfer of this Agreement. Licensor may assign this Agreement in connection with a sale, merger, or transfer of the assets to which this Agreement relates, provided that the assignee assumes all rights and obligations under this Agreement.

Licensee agrees to maintain insurance in amounts prudent for Licensee’s operations and adequate to discharge Licensee’s obligations under Section 7.

This Agreement is governed by and interpreted in accordance with the laws of the jurisdiction set forth in the License Data Record, if any. The parties agree that the proper jurisdiction and venue for any disputes arising out of this Agreement shall be in the courts of the venue specified in the License Data Record, if any. If none are specified, then jurisdiction and venue shall be deemed to be in the relevant jurisdiction for Licensor’s address, as stated in the License Data Record.

No rights or forbearances are granted, or may arise (whether through implication, estoppel, exhaustion or otherwise) other than those expressly granted in this Agreement.

EXCEPT FOR THE OBLIGATION TO MAKE PAYMENTS (IF ANY) IN SECTION 3, THE INDEMNIFICATION OBLIGATIONS IN SECTION 7, AND INFRINGEMENT OF ANY TRADEMARK OR INTELLECTUAL PROPERTY RIGHT, IN NO EVENT WILL EITHER PARTY HAVE ANY LIABILITY OF ANY KIND WHATSOEVER TO THE OTHER ARISING OUT OF THIS AGREEMENT, INCLUDING BUT NOT LIMITED TO, FOR INDIRECT, INCIDENTAL, CONSEQUENTIAL OR SPECIAL DAMAGES, EVEN IF ADVISED OF THE POSSIBILITY OF SUCH DAMAGES.

===Addendum A===

The purpose of this Addendum is to provide guidelines for a License Data Record, which may be either in paper or electronic form. This License Data Record is unique to each transaction and must specify a minimum information set in order to give effect to the Patent License Agreement.

To constitute an agreement that incorporates the terms of the Patent License Agreement, a License Data Record must:

*1) reference this Agreement by linking to the URL of the Patent License Agreement deed or legal code, attaching a copy of it, referencing it by name, or by any other means that uniquely and unambiguously identifies it; AND
*2) provide the following information:
*a. Name of Licensor: the name of the person or entities offering this license,
*b. Licensor Contact Information: address, contact person, phone number, fax, and/or email,
*c. Name of Licensee: the name of the person or entities accepting this license,
*d. Licensee Contact Information: address, contact person, phone number, fax, and/or email,
*e. Licensed Patent Rights: a list of patents and patent applications to be licensed, '''OR'''
'''Specification: a written specification of the technology or standard to be licensed.'''
*f. License Fees and Royalties (optional): a description of any required fees, royalties, or other monetary consideration;
*g. Field of Use (optional): a description of any scope of use limitations associated with the license,
*h. “Have Made” Limitations (optional): any limitations to the license to “have made”
*i. Choice of Law (optional): jurisdiction for choice of law,
*j. Choice of Venue (optional) jurisdiction for legal venue,
*k. Territory (optional): geographic limitations of the license,
*l. Offer Limitations (optional): any limitations associated with the offer

'''Sample License Data Record'''

This License Data Record references and incorporates the GX Model Patent License Agreement (located at URL: _________)

Licensor Name
Licensor Contact
Address:_____________________________
_____________________________
_____________________________
Phone: _____________________________
Fax: _____________________________
Email: _____________________________
Licensee Name
Licensee Contact
Address:_____________________________
_____________________________
_____________________________
Phone: _____________________________
Fax: _____________________________
Email: _____________________________

Licensed Patents Rights:

Patent No.____________________________

Patent Application No.__________________
…

'''OR'''

Specification (attached a detailed specification or provide a URL):

License Fees & Royalties (optional):

Field of Use (optional):

Have Made Limitations (optional):

Choice of Law (optional) City_____________, State_____________

Choice of Venue (optional) City_____________, State_____________

Territory

Offer Limitations

Model Patent License

2010-07-20T15:23:17Z

Thinh: /* Addendum A */

See [[Patent Tools Public Discussion]]

==How to Use this Model Patent License Agreement==

This Model Patent License Agreement is intended to be used as part of a “public license offer” to license patent rights. A public license offer provides two main benefits:

a) it is publicly accessible: anyone can read the full terms of the offer; and
b) it is an “active” offer so that anyone can accept it if they agree to all its terms.

To have these benefits, the offer must be openly published, and it must be capable of being accepted by anyone on a non-discriminatory basis and without additional negotiation. Used in the right context, this type of offer can provide benefits for both licensor and licensee. A licensor can use a public license offer to publicize its willingness to license patent rights on reasonable and non-discriminatory terms, thus attracting innovators and potential licensees who might otherwise not have been either aware that such patent rights were available for license or who might otherwise be unwilling to approach the licensor due to anticipated, significant transaction costs typically associated with negotiating a favorable license. A potential licensee can rely on the public and non-discriminatory availability of this public license offer to make plans and decisions about technology implementation, which in the absence of such offers, would be complicated or impossible.

Patent licenses can be very complicated, particularly when complex commercialization and licensing strategies are involved. So it would be impossible for anyone to write a license that addresses everyone’s needs or fits every scenario. Instead, we developed this Model Patent License Agreement to be simple and easy to understand. It is intended to provide a simple standard model license to make patents that are being held for defensive purposes available for other uses—outside of those for which they are being maintained for defensive uses—on reasonable and non-discriminatory terms: preferably free of charge and without unnecessary field limitations. If you need to implement a more complex licensing strategy, then this may not be the right tool for you. In any case, please consult your own attorney before making an offer. Creative Commons is not a law firm, so we cannot provide you with advice on whether to use this instrument or how to tailor it to suit your needs or business strategy.

To use this Model Patent License Agreement, you need to supply some basic information, which is found in the License Data Record (see Addendum A). This information should be supplied in a standard electronic format for ease of reference, but you can use other formats if you wish. Some basic information is required in order to make a complete public license offer, while other fields may be optional. If you do not fill out the optional fields, then they will be defined by default provisions in the license. IN MOST CASES, THE DEFAULT OPTION ALLOWS FOR THE MOST PERMISSIVE AND FREE USE BY THE LICENSEE. For example, by default, there are no field of use restrictions, fees, royalties, or restrictions on the “have made” right. You may also add limitations to the offer itself (for example, an expiration date for the offer). We do not encourage you to impose other offer limitations beyond this. However, in some circumstances, it may be reasonable to specify that anyone currently engaged in litigation with you that would otherwise give you grounds for terminating the license (see Section 5) may not accept the offer in the first place.

Together, the License Data Record and the Model Patent License Agreement will be become your public license offer. When such an offer is made available on your Web site, or through clearinghouses like GX, anyone eligible to accept the offer may accept it through a registration and acceptance process. As part of that process, the Licensee will supply the Licensee-specific information needed to complete the License Data Record. This process, and the transaction record, then completes the license agreement.

----

==MODEL PATENT LICENSE AGREEMENT==

The owner of the Licensed Patent Rights, as defined below (the “Licensor”), grants a license on the terms and conditions set forth in this Patent License Agreement (the “Agreement”) to the person or entity accepting this Agreement (the “Licensee”).

===1. DEFINITIONS===

“Field of Use” means the fields of use specified in the License Data Record. If not so specified, Field of Use means all fields of use.

“License Data Record” means a written or electronic document that provides the information specified in Addendum A.

“Licensed Patent Rights” means (a) the patents and patent applications listed in the License Data Record, (b) all divisionals, continuations, and foreign counterpart applications claiming priority from any patent or patent application described in (a), (c) those claims of any continuations-in-parts that claim priority exclusively from the patents or patent applications described in (a) and (b); (d) all patents issuing from patent applications included in (a) through (c); and (e) all reissues, reexaminations, renewals, and extensions of any patents included in (a) through (d).

“Licensed Process(es)” means a process the practice of which would infringe, but for the license granted in this Agreement, one or more claims of the Licensed Patent Rights.

“Licensed Product(s)” means a machine, article of manufacture, composition of matter, or other product (a) the manufacture, use, sale, offer for sale, or import of which would infringe, but for the licenses granted in this Agreement, one or more claims of the Licensed Patent Rights, or (b) made or directly obtained by a Licensed Process.

'''{Proposed Addition: “Necessary Patent Claims” means any patent claim(s), now owned or hereafter acquired by Licensor in any patent that Licensor has the right to license, that would be infringed, but for the license granted in Section 2.2, by the making, using, selling, or importation of processes or products that implement the Specification, but excluding any claims that are not necessary to implement the Specification as written.}'''

'''{Proposed Addition: “Specification” means the specification, if any, set forth in the License Data Record by the "Specification" entry.}'''

“Territory” means a geographical or jurisdictional designation, as specified in the License Data Record. If not so specified, Territory means worldwide.

“Term” means the period of time specified in Section 5.

===2. GRANT OF LICENSE===

2.1 Subject to the terms and conditions of this Agreement and the License Data Record, Licensor grants to Licensee a non-exclusive, non-transferable (except as expressly permitted in Section 9) license, without a right to sublicense, under the Licensed Patent Rights, in the Territory and during the Term, to make, use, sell, offer for sale, and import Licensed Products and to practice Licensed Processes, in each case, in the Field of Use.

'''{Proposed Addition: 2.2 If the License Data Record contains a Specification, then subject to the terms and conditions of this Agreement and the License Data Record, Licensor grants to Licensee a non-exclusive, non-transferable (except as expressly permitted in Section 9) license, without a right to sublicense, under the Necessary Patent Claims, in the Territory, and during the Term, to make, use, sell, offer for sale, and import products that implement the Specification and to practice processes that implement the Specification.}'''

The above licenses includes the right to have made, except as otherwise specified by the License Data Record.

===3. FEES===

Fees, royalties, or other monetary consideration, if any, shall be specified in the “License Fees and Royalties” section of License Data Record. If none are specified, then no payment is required under this Agreement.

===4. REPORTING===

Licensee shall provide quarterly reports to Licensor, along with any required payments, in sufficient detail to verify the calculation of royalties owed, including without limitation, gross receipts from the use, sale, or other disposition of Licensed Products and/or from the practice of a Licensed Process, deductions taken for calculating revenues, and the total royalty due. If no royalties are due, then the report shall so specify.

If no royalties are required under this Agreement, then Licensee shall instead provide such reports as may be reasonably requested by Licensor to perform the analysis and activities described below.

Licensor may use the information provided by Licensee to analyze and publish metrics and impact statistics related to the use of the Licensed Patent Rights and have others do so, as long as such information is used only in aggregated and anonymous form. Licensor may also use or disclose the information to enforce this Agreement, and/or to comply with a court order, or otherwise as required by law.

===5. TERM===

The Term of this Agreement commences on its execution and ends upon the expiration, abandonment, or final invalidity of all claims within the Licensed Patent Rights, unless earlier terminated as permitted below.

Licensor may terminate this Agreement in the event of a material breach of this Agreement that is not cured within thirty (30) days after Licensor provides written notice to Licensee specifying such breach.

To the extent permitted by applicable law, Licensor may terminate this Agreement immediately in the event Licensee becomes insolvent, files for bankruptcy protection, makes an assignment for the benefit of creditors, or becomes the subject of involuntary bankruptcy proceedings. Licensee shall immediately notify Licensor upon the occurrence of one of these conditions.

Licensor may terminate this Agreement upon written notice to Licensee in the event that Licensee asserts a claim of patent infringement against Licensor or any third party with respect to products or services of Licensor, unless (a) such claim is first asserted after Licensor has asserted a claim of patent infringement against Licensee or any third party with respect to products or services of Licensee, or (b) Licensee fully withdraws such claim within ten (10) days after being notified by Licensor. For purposes of this paragraph, “Licensor” and “Licensee” shall also include their respective affiliates.

Licensee may terminate this Agreement by providing Licensor with at least thirty (30) days prior written notice.

Upon any termination of this Agreement, Licensee shall provide Licensor with a final royalty report within thirty (30) days after termination, along with full payment of all amounts due. The following sections shall also survive termination of this Agreement: 6, 7, 8, and 9.

===6. WARRANTIES===

Licensor warrants that it has the right and authority to grant the rights and licenses granted in this Agreement.

Licensor disclaims all other warranties, representations, and conditions, whether express, implied, or statutory, including, but not limited to, the warranties of merchantability, fitness for a particular purpose, or non-infringement.

Without limiting the generality of the above disclaimer, Licensor makes no representation or warranties that: a) it will prosecute or continue to prosecute, maintain, or defend any patent or patent application, b) it will bring an infringement suit, assert any claim against third parties accused of infringement, or otherwise enforce any patent or patent application, c) it will join as a party to any suit or legal action, d) it will provide Licensee with know-how or assistance necessary or useful to practice the Licensed Patent Rights, e) the Licensed Patent Rights are valid or enforceable, or f) the Licensed Products or Licensed Processes may be exploited or practiced without infringing third party patents.

===7. INDEMNIFICATION===

Licensee shall indemnify and hold Licensor, and its officers, directors, employees, representatives, agents, and affiliates harmless from any and all damages, liabilities, costs, and expenses (including reasonable attorneys’ fees) arising out of or caused by Licensee’s practice or exploitation of the license granted by this Agreement or by the sale, use, or exploitation of Licensed Products or Licensed Processes by or under the authority of Licensee. Licensor shall notify Licensee promptly of any claim of which Licensor is aware and for which Licensor seeks indemnification. Licensee shall have the right to control the defense of such claims, except to the extent that the scope or validity of the Licensed Patent Rights are at issue, in which case Licensor may assume the sole control and defense of such claims at its own expense.

===8. TRADEMARKS AND ATTRIBUTION===

Licensee agrees to mark Licensed Products and their packaging with patent markings as required by applicable law to preserve Licensor’s rights and otherwise enforce the Licensed Patents.

At Licensor’s request, Licensee shall reasonably cooperate with Licensor and provide such information as may be necessary for Licensor to prepare use case studies that document Licensee’s use of the Licensed Patent Rights and related usage or impact metrics. Each party may copy, distribute, and publish such use case studies, including by means of its Web sites, and authorize others to do so, to demonstrate the uses and impact of the technology.

Except solely as permitted above, neither party may use the other’s trademarks, service marks, trade names, company names, or logos (“Marks”) to offer, market, sell, or otherwise endorse any product or service or to engage in any other trademark usage, unless with the prior written authorization of the owner. Any uses of a party’s Marks shall inure solely to the benefit of that party, along with all goodwill associated therewith.

===9. GENERAL PROVISIONS===

Notices to the parties shall be provided at the address set forth in the License Data Record, unless a party provides written notice to the other party of a change of address. Notices may be provided by personal delivery, express delivery service, or registered mail. Notices shall be effective on the date received.

Nothing in this Agreement constitutes the parties as partners, joint venturers, principal and agent, or fiduciaries of each other.

A delay or failure in enforcing a right or obligation under this Agreement shall not be construed as an implied waiver of that right or obligation or of any other provision or breach under this Agreement. A waiver under this Agreement is only effective if made in writing and signed by the party granting the waiver.

An amendment or modification of this Agreement is effective only if made in writing and signed by the duly authorized representatives of the parties.

This Agreement constitutes the entire agreement between the parties as to the subject matter herein and supersedes all prior or contemporaneous negotiations, agreements, representations, memorandums, and understandings.

If any provision of this Agreement is deemed to be invalid or unenforceable, then that provision, to the extent unenforceable, is severable and the remainder of this Agreement shall continue in full force and effect.

Licensee may not assign any of its rights under this Agreement, delegate any of its obligations under this Agreement, or otherwise transfer this Agreement, without the prior written consent of Licensor, and any attempted assignment, transfer, or delegation shall be voidable by Licensor. Any change of control of Licensee shall be deemed an attempted transfer of this Agreement. Licensor may assign this Agreement in connection with a sale, merger, or transfer of the assets to which this Agreement relates, provided that the assignee assumes all rights and obligations under this Agreement.

Licensee agrees to maintain insurance in amounts prudent for Licensee’s operations and adequate to discharge Licensee’s obligations under Section 7.

This Agreement is governed by and interpreted in accordance with the laws of the jurisdiction set forth in the License Data Record, if any. The parties agree that the proper jurisdiction and venue for any disputes arising out of this Agreement shall be in the courts of the venue specified in the License Data Record, if any. If none are specified, then jurisdiction and venue shall be deemed to be in the relevant jurisdiction for Licensor’s address, as stated in the License Data Record.

No rights or forbearances are granted, or may arise (whether through implication, estoppel, exhaustion or otherwise) other than those expressly granted in this Agreement.

EXCEPT FOR THE OBLIGATION TO MAKE PAYMENTS (IF ANY) IN SECTION 3, THE INDEMNIFICATION OBLIGATIONS IN SECTION 7, AND INFRINGEMENT OF ANY TRADEMARK OR INTELLECTUAL PROPERTY RIGHT, IN NO EVENT WILL EITHER PARTY HAVE ANY LIABILITY OF ANY KIND WHATSOEVER TO THE OTHER ARISING OUT OF THIS AGREEMENT, INCLUDING BUT NOT LIMITED TO, FOR INDIRECT, INCIDENTAL, CONSEQUENTIAL OR SPECIAL DAMAGES, EVEN IF ADVISED OF THE POSSIBILITY OF SUCH DAMAGES.

===Addendum A===

The purpose of this Addendum is to provide guidelines for a License Data Record, which may be either in paper or electronic form. This License Data Record is unique to each transaction and must specify a minimum information set in order to give effect to the Patent License Agreement.

To constitute an agreement that incorporates the terms of the Patent License Agreement, a License Data Record must:

*1) reference this Agreement by linking to the URL of the Patent License Agreement deed or legal code, attaching a copy of it, referencing it by name, or by any other means that uniquely and unambiguously identifies it; AND
*2) provide the following information:
*a. Name of Licensor: the name of the person or entities offering this license,
*b. Licensor Contact Information: address, contact person, phone number, fax, and/or email,
*c. Name of Licensee: the name of the person or entities accepting this license,
*d. Licensee Contact Information: address, contact person, phone number, fax, and/or email,
*e. Licensed Patent Rights: a list of patents and patent applications to be licensed, '''OR
Specification: a written specification of the technology or standard to be licensed.'''
*f. License Fees and Royalties (optional): a description of any required fees, royalties, or other monetary consideration;
*g. Field of Use (optional): a description of any scope of use limitations associated with the license,
*h. “Have Made” Limitations (optional): any limitations to the license to “have made”
*i. Choice of Law (optional): jurisdiction for choice of law,
*j. Choice of Venue (optional) jurisdiction for legal venue,
*k. Territory (optional): geographic limitations of the license,
*l. Offer Limitations (optional): any limitations associated with the offer

'''Sample License Data Record'''

This License Data Record references and incorporates the GX Model Patent License Agreement (located at URL: _________)

Licensor Name
Licensor Contact
Address:_____________________________
_____________________________
_____________________________
Phone: _____________________________
Fax: _____________________________
Email: _____________________________
Licensee Name
Licensee Contact
Address:_____________________________
_____________________________
_____________________________
Phone: _____________________________
Fax: _____________________________
Email: _____________________________

Licensed Patents Rights:

Patent No.____________________________

Patent Application No.__________________
…

License Fees & Royalties (optional):

Field of Use (optional):

Have Made Limitations (optional):

Choice of Law (optional) City_____________, State_____________

Choice of Venue (optional) City_____________, State_____________

Territory

Offer Limitations

Model Patent License

2010-07-20T15:21:42Z

Thinh: /* 2. GRANT OF LICENSE */

See [[Patent Tools Public Discussion]]

==How to Use this Model Patent License Agreement==

This Model Patent License Agreement is intended to be used as part of a “public license offer” to license patent rights. A public license offer provides two main benefits:

a) it is publicly accessible: anyone can read the full terms of the offer; and
b) it is an “active” offer so that anyone can accept it if they agree to all its terms.

To have these benefits, the offer must be openly published, and it must be capable of being accepted by anyone on a non-discriminatory basis and without additional negotiation. Used in the right context, this type of offer can provide benefits for both licensor and licensee. A licensor can use a public license offer to publicize its willingness to license patent rights on reasonable and non-discriminatory terms, thus attracting innovators and potential licensees who might otherwise not have been either aware that such patent rights were available for license or who might otherwise be unwilling to approach the licensor due to anticipated, significant transaction costs typically associated with negotiating a favorable license. A potential licensee can rely on the public and non-discriminatory availability of this public license offer to make plans and decisions about technology implementation, which in the absence of such offers, would be complicated or impossible.

Patent licenses can be very complicated, particularly when complex commercialization and licensing strategies are involved. So it would be impossible for anyone to write a license that addresses everyone’s needs or fits every scenario. Instead, we developed this Model Patent License Agreement to be simple and easy to understand. It is intended to provide a simple standard model license to make patents that are being held for defensive purposes available for other uses—outside of those for which they are being maintained for defensive uses—on reasonable and non-discriminatory terms: preferably free of charge and without unnecessary field limitations. If you need to implement a more complex licensing strategy, then this may not be the right tool for you. In any case, please consult your own attorney before making an offer. Creative Commons is not a law firm, so we cannot provide you with advice on whether to use this instrument or how to tailor it to suit your needs or business strategy.

To use this Model Patent License Agreement, you need to supply some basic information, which is found in the License Data Record (see Addendum A). This information should be supplied in a standard electronic format for ease of reference, but you can use other formats if you wish. Some basic information is required in order to make a complete public license offer, while other fields may be optional. If you do not fill out the optional fields, then they will be defined by default provisions in the license. IN MOST CASES, THE DEFAULT OPTION ALLOWS FOR THE MOST PERMISSIVE AND FREE USE BY THE LICENSEE. For example, by default, there are no field of use restrictions, fees, royalties, or restrictions on the “have made” right. You may also add limitations to the offer itself (for example, an expiration date for the offer). We do not encourage you to impose other offer limitations beyond this. However, in some circumstances, it may be reasonable to specify that anyone currently engaged in litigation with you that would otherwise give you grounds for terminating the license (see Section 5) may not accept the offer in the first place.

Together, the License Data Record and the Model Patent License Agreement will be become your public license offer. When such an offer is made available on your Web site, or through clearinghouses like GX, anyone eligible to accept the offer may accept it through a registration and acceptance process. As part of that process, the Licensee will supply the Licensee-specific information needed to complete the License Data Record. This process, and the transaction record, then completes the license agreement.

----

==MODEL PATENT LICENSE AGREEMENT==

The owner of the Licensed Patent Rights, as defined below (the “Licensor”), grants a license on the terms and conditions set forth in this Patent License Agreement (the “Agreement”) to the person or entity accepting this Agreement (the “Licensee”).

===1. DEFINITIONS===

“Field of Use” means the fields of use specified in the License Data Record. If not so specified, Field of Use means all fields of use.

“License Data Record” means a written or electronic document that provides the information specified in Addendum A.

“Licensed Patent Rights” means (a) the patents and patent applications listed in the License Data Record, (b) all divisionals, continuations, and foreign counterpart applications claiming priority from any patent or patent application described in (a), (c) those claims of any continuations-in-parts that claim priority exclusively from the patents or patent applications described in (a) and (b); (d) all patents issuing from patent applications included in (a) through (c); and (e) all reissues, reexaminations, renewals, and extensions of any patents included in (a) through (d).

“Licensed Process(es)” means a process the practice of which would infringe, but for the license granted in this Agreement, one or more claims of the Licensed Patent Rights.

“Licensed Product(s)” means a machine, article of manufacture, composition of matter, or other product (a) the manufacture, use, sale, offer for sale, or import of which would infringe, but for the licenses granted in this Agreement, one or more claims of the Licensed Patent Rights, or (b) made or directly obtained by a Licensed Process.

'''{Proposed Addition: “Necessary Patent Claims” means any patent claim(s), now owned or hereafter acquired by Licensor in any patent that Licensor has the right to license, that would be infringed, but for the license granted in Section 2.2, by the making, using, selling, or importation of processes or products that implement the Specification, but excluding any claims that are not necessary to implement the Specification as written.}'''

'''{Proposed Addition: “Specification” means the specification, if any, set forth in the License Data Record by the "Specification" entry.}'''

“Territory” means a geographical or jurisdictional designation, as specified in the License Data Record. If not so specified, Territory means worldwide.

“Term” means the period of time specified in Section 5.

===2. GRANT OF LICENSE===

2.1 Subject to the terms and conditions of this Agreement and the License Data Record, Licensor grants to Licensee a non-exclusive, non-transferable (except as expressly permitted in Section 9) license, without a right to sublicense, under the Licensed Patent Rights, in the Territory and during the Term, to make, use, sell, offer for sale, and import Licensed Products and to practice Licensed Processes, in each case, in the Field of Use.

'''{Proposed Addition: 2.2 If the License Data Record contains a Specification, then subject to the terms and conditions of this Agreement and the License Data Record, Licensor grants to Licensee a non-exclusive, non-transferable (except as expressly permitted in Section 9) license, without a right to sublicense, under the Necessary Patent Claims, in the Territory, and during the Term, to make, use, sell, offer for sale, and import products that implement the Specification and to practice processes that implement the Specification.}'''

The above licenses includes the right to have made, except as otherwise specified by the License Data Record.

===3. FEES===

Fees, royalties, or other monetary consideration, if any, shall be specified in the “License Fees and Royalties” section of License Data Record. If none are specified, then no payment is required under this Agreement.

===4. REPORTING===

Licensee shall provide quarterly reports to Licensor, along with any required payments, in sufficient detail to verify the calculation of royalties owed, including without limitation, gross receipts from the use, sale, or other disposition of Licensed Products and/or from the practice of a Licensed Process, deductions taken for calculating revenues, and the total royalty due. If no royalties are due, then the report shall so specify.

If no royalties are required under this Agreement, then Licensee shall instead provide such reports as may be reasonably requested by Licensor to perform the analysis and activities described below.

Licensor may use the information provided by Licensee to analyze and publish metrics and impact statistics related to the use of the Licensed Patent Rights and have others do so, as long as such information is used only in aggregated and anonymous form. Licensor may also use or disclose the information to enforce this Agreement, and/or to comply with a court order, or otherwise as required by law.

===5. TERM===

The Term of this Agreement commences on its execution and ends upon the expiration, abandonment, or final invalidity of all claims within the Licensed Patent Rights, unless earlier terminated as permitted below.

Licensor may terminate this Agreement in the event of a material breach of this Agreement that is not cured within thirty (30) days after Licensor provides written notice to Licensee specifying such breach.

To the extent permitted by applicable law, Licensor may terminate this Agreement immediately in the event Licensee becomes insolvent, files for bankruptcy protection, makes an assignment for the benefit of creditors, or becomes the subject of involuntary bankruptcy proceedings. Licensee shall immediately notify Licensor upon the occurrence of one of these conditions.

Licensor may terminate this Agreement upon written notice to Licensee in the event that Licensee asserts a claim of patent infringement against Licensor or any third party with respect to products or services of Licensor, unless (a) such claim is first asserted after Licensor has asserted a claim of patent infringement against Licensee or any third party with respect to products or services of Licensee, or (b) Licensee fully withdraws such claim within ten (10) days after being notified by Licensor. For purposes of this paragraph, “Licensor” and “Licensee” shall also include their respective affiliates.

Licensee may terminate this Agreement by providing Licensor with at least thirty (30) days prior written notice.

Upon any termination of this Agreement, Licensee shall provide Licensor with a final royalty report within thirty (30) days after termination, along with full payment of all amounts due. The following sections shall also survive termination of this Agreement: 6, 7, 8, and 9.

===6. WARRANTIES===

Licensor warrants that it has the right and authority to grant the rights and licenses granted in this Agreement.

Licensor disclaims all other warranties, representations, and conditions, whether express, implied, or statutory, including, but not limited to, the warranties of merchantability, fitness for a particular purpose, or non-infringement.

Without limiting the generality of the above disclaimer, Licensor makes no representation or warranties that: a) it will prosecute or continue to prosecute, maintain, or defend any patent or patent application, b) it will bring an infringement suit, assert any claim against third parties accused of infringement, or otherwise enforce any patent or patent application, c) it will join as a party to any suit or legal action, d) it will provide Licensee with know-how or assistance necessary or useful to practice the Licensed Patent Rights, e) the Licensed Patent Rights are valid or enforceable, or f) the Licensed Products or Licensed Processes may be exploited or practiced without infringing third party patents.

===7. INDEMNIFICATION===

Licensee shall indemnify and hold Licensor, and its officers, directors, employees, representatives, agents, and affiliates harmless from any and all damages, liabilities, costs, and expenses (including reasonable attorneys’ fees) arising out of or caused by Licensee’s practice or exploitation of the license granted by this Agreement or by the sale, use, or exploitation of Licensed Products or Licensed Processes by or under the authority of Licensee. Licensor shall notify Licensee promptly of any claim of which Licensor is aware and for which Licensor seeks indemnification. Licensee shall have the right to control the defense of such claims, except to the extent that the scope or validity of the Licensed Patent Rights are at issue, in which case Licensor may assume the sole control and defense of such claims at its own expense.

===8. TRADEMARKS AND ATTRIBUTION===

Licensee agrees to mark Licensed Products and their packaging with patent markings as required by applicable law to preserve Licensor’s rights and otherwise enforce the Licensed Patents.

At Licensor’s request, Licensee shall reasonably cooperate with Licensor and provide such information as may be necessary for Licensor to prepare use case studies that document Licensee’s use of the Licensed Patent Rights and related usage or impact metrics. Each party may copy, distribute, and publish such use case studies, including by means of its Web sites, and authorize others to do so, to demonstrate the uses and impact of the technology.

Except solely as permitted above, neither party may use the other’s trademarks, service marks, trade names, company names, or logos (“Marks”) to offer, market, sell, or otherwise endorse any product or service or to engage in any other trademark usage, unless with the prior written authorization of the owner. Any uses of a party’s Marks shall inure solely to the benefit of that party, along with all goodwill associated therewith.

===9. GENERAL PROVISIONS===

Notices to the parties shall be provided at the address set forth in the License Data Record, unless a party provides written notice to the other party of a change of address. Notices may be provided by personal delivery, express delivery service, or registered mail. Notices shall be effective on the date received.

Nothing in this Agreement constitutes the parties as partners, joint venturers, principal and agent, or fiduciaries of each other.

A delay or failure in enforcing a right or obligation under this Agreement shall not be construed as an implied waiver of that right or obligation or of any other provision or breach under this Agreement. A waiver under this Agreement is only effective if made in writing and signed by the party granting the waiver.

An amendment or modification of this Agreement is effective only if made in writing and signed by the duly authorized representatives of the parties.

This Agreement constitutes the entire agreement between the parties as to the subject matter herein and supersedes all prior or contemporaneous negotiations, agreements, representations, memorandums, and understandings.

If any provision of this Agreement is deemed to be invalid or unenforceable, then that provision, to the extent unenforceable, is severable and the remainder of this Agreement shall continue in full force and effect.

Licensee may not assign any of its rights under this Agreement, delegate any of its obligations under this Agreement, or otherwise transfer this Agreement, without the prior written consent of Licensor, and any attempted assignment, transfer, or delegation shall be voidable by Licensor. Any change of control of Licensee shall be deemed an attempted transfer of this Agreement. Licensor may assign this Agreement in connection with a sale, merger, or transfer of the assets to which this Agreement relates, provided that the assignee assumes all rights and obligations under this Agreement.

Licensee agrees to maintain insurance in amounts prudent for Licensee’s operations and adequate to discharge Licensee’s obligations under Section 7.

This Agreement is governed by and interpreted in accordance with the laws of the jurisdiction set forth in the License Data Record, if any. The parties agree that the proper jurisdiction and venue for any disputes arising out of this Agreement shall be in the courts of the venue specified in the License Data Record, if any. If none are specified, then jurisdiction and venue shall be deemed to be in the relevant jurisdiction for Licensor’s address, as stated in the License Data Record.

No rights or forbearances are granted, or may arise (whether through implication, estoppel, exhaustion or otherwise) other than those expressly granted in this Agreement.

EXCEPT FOR THE OBLIGATION TO MAKE PAYMENTS (IF ANY) IN SECTION 3, THE INDEMNIFICATION OBLIGATIONS IN SECTION 7, AND INFRINGEMENT OF ANY TRADEMARK OR INTELLECTUAL PROPERTY RIGHT, IN NO EVENT WILL EITHER PARTY HAVE ANY LIABILITY OF ANY KIND WHATSOEVER TO THE OTHER ARISING OUT OF THIS AGREEMENT, INCLUDING BUT NOT LIMITED TO, FOR INDIRECT, INCIDENTAL, CONSEQUENTIAL OR SPECIAL DAMAGES, EVEN IF ADVISED OF THE POSSIBILITY OF SUCH DAMAGES.

===Addendum A===

The purpose of this Addendum is to provide guidelines for a License Data Record, which may be either in paper or electronic form. This License Data Record is unique to each transaction and must specify a minimum information set in order to give effect to the Patent License Agreement.

To constitute an agreement that incorporates the terms of the Patent License Agreement, a License Data Record must:

*1) reference this Agreement by linking to the URL of the Patent License Agreement deed or legal code, attaching a copy of it, referencing it by name, or by any other means that uniquely and unambiguously identifies it; AND
*2) provide the following information:
*a. Name of Licensor: the name of the person or entities offering this license,
*b. Licensor Contact Information: address, contact person, phone number, fax, and/or email,
*c. Name of Licensee: the name of the person or entities accepting this license,
*d. Licensee Contact Information: address, contact person, phone number, fax, and/or email,
*e. Licensed Patent Rights: a list of patents and patent applications to be licensed,
*f. License Fees and Royalties (optional): a description of any required fees, royalties, or other monetary consideration;
*g. Field of Use (optional): a description of any scope of use limitations associated with the license,
*h. “Have Made” Limitations (optional): any limitations to the license to “have made”
*i. Choice of Law (optional): jurisdiction for choice of law,
*j. Choice of Venue (optional) jurisdiction for legal venue,
*k. Territory (optional): geographic limitations of the license,
*l. Offer Limitations (optional): any limitations associated with the offer

'''Sample License Data Record'''

This License Data Record references and incorporates the GX Model Patent License Agreement (located at URL: _________)

Licensor Name
Licensor Contact
Address:_____________________________
_____________________________
_____________________________
Phone: _____________________________
Fax: _____________________________
Email: _____________________________
Licensee Name
Licensee Contact
Address:_____________________________
_____________________________
_____________________________
Phone: _____________________________
Fax: _____________________________
Email: _____________________________

Licensed Patents Rights:

Patent No.____________________________

Patent Application No.__________________
…

License Fees & Royalties (optional):

Field of Use (optional):

Have Made Limitations (optional):

Choice of Law (optional) City_____________, State_____________

Choice of Venue (optional) City_____________, State_____________

Territory

Offer Limitations

Model Patent License

2010-07-20T15:20:23Z

Thinh: /* 2. GRANT OF LICENSE */

See [[Patent Tools Public Discussion]]

==How to Use this Model Patent License Agreement==

This Model Patent License Agreement is intended to be used as part of a “public license offer” to license patent rights. A public license offer provides two main benefits:

a) it is publicly accessible: anyone can read the full terms of the offer; and
b) it is an “active” offer so that anyone can accept it if they agree to all its terms.

To have these benefits, the offer must be openly published, and it must be capable of being accepted by anyone on a non-discriminatory basis and without additional negotiation. Used in the right context, this type of offer can provide benefits for both licensor and licensee. A licensor can use a public license offer to publicize its willingness to license patent rights on reasonable and non-discriminatory terms, thus attracting innovators and potential licensees who might otherwise not have been either aware that such patent rights were available for license or who might otherwise be unwilling to approach the licensor due to anticipated, significant transaction costs typically associated with negotiating a favorable license. A potential licensee can rely on the public and non-discriminatory availability of this public license offer to make plans and decisions about technology implementation, which in the absence of such offers, would be complicated or impossible.

Patent licenses can be very complicated, particularly when complex commercialization and licensing strategies are involved. So it would be impossible for anyone to write a license that addresses everyone’s needs or fits every scenario. Instead, we developed this Model Patent License Agreement to be simple and easy to understand. It is intended to provide a simple standard model license to make patents that are being held for defensive purposes available for other uses—outside of those for which they are being maintained for defensive uses—on reasonable and non-discriminatory terms: preferably free of charge and without unnecessary field limitations. If you need to implement a more complex licensing strategy, then this may not be the right tool for you. In any case, please consult your own attorney before making an offer. Creative Commons is not a law firm, so we cannot provide you with advice on whether to use this instrument or how to tailor it to suit your needs or business strategy.

To use this Model Patent License Agreement, you need to supply some basic information, which is found in the License Data Record (see Addendum A). This information should be supplied in a standard electronic format for ease of reference, but you can use other formats if you wish. Some basic information is required in order to make a complete public license offer, while other fields may be optional. If you do not fill out the optional fields, then they will be defined by default provisions in the license. IN MOST CASES, THE DEFAULT OPTION ALLOWS FOR THE MOST PERMISSIVE AND FREE USE BY THE LICENSEE. For example, by default, there are no field of use restrictions, fees, royalties, or restrictions on the “have made” right. You may also add limitations to the offer itself (for example, an expiration date for the offer). We do not encourage you to impose other offer limitations beyond this. However, in some circumstances, it may be reasonable to specify that anyone currently engaged in litigation with you that would otherwise give you grounds for terminating the license (see Section 5) may not accept the offer in the first place.

Together, the License Data Record and the Model Patent License Agreement will be become your public license offer. When such an offer is made available on your Web site, or through clearinghouses like GX, anyone eligible to accept the offer may accept it through a registration and acceptance process. As part of that process, the Licensee will supply the Licensee-specific information needed to complete the License Data Record. This process, and the transaction record, then completes the license agreement.

----

==MODEL PATENT LICENSE AGREEMENT==

The owner of the Licensed Patent Rights, as defined below (the “Licensor”), grants a license on the terms and conditions set forth in this Patent License Agreement (the “Agreement”) to the person or entity accepting this Agreement (the “Licensee”).

===1. DEFINITIONS===

“Field of Use” means the fields of use specified in the License Data Record. If not so specified, Field of Use means all fields of use.

“License Data Record” means a written or electronic document that provides the information specified in Addendum A.

“Licensed Patent Rights” means (a) the patents and patent applications listed in the License Data Record, (b) all divisionals, continuations, and foreign counterpart applications claiming priority from any patent or patent application described in (a), (c) those claims of any continuations-in-parts that claim priority exclusively from the patents or patent applications described in (a) and (b); (d) all patents issuing from patent applications included in (a) through (c); and (e) all reissues, reexaminations, renewals, and extensions of any patents included in (a) through (d).

“Licensed Process(es)” means a process the practice of which would infringe, but for the license granted in this Agreement, one or more claims of the Licensed Patent Rights.

“Licensed Product(s)” means a machine, article of manufacture, composition of matter, or other product (a) the manufacture, use, sale, offer for sale, or import of which would infringe, but for the licenses granted in this Agreement, one or more claims of the Licensed Patent Rights, or (b) made or directly obtained by a Licensed Process.

'''{Proposed Addition: “Necessary Patent Claims” means any patent claim(s), now owned or hereafter acquired by Licensor in any patent that Licensor has the right to license, that would be infringed, but for the license granted in Section 2.2, by the making, using, selling, or importation of processes or products that implement the Specification, but excluding any claims that are not necessary to implement the Specification as written.}'''

'''{Proposed Addition: “Specification” means the specification, if any, set forth in the License Data Record by the "Specification" entry.}'''

“Territory” means a geographical or jurisdictional designation, as specified in the License Data Record. If not so specified, Territory means worldwide.

“Term” means the period of time specified in Section 5.

===2. GRANT OF LICENSE===

2.1 Subject to the terms and conditions of this Agreement and the License Data Record, Licensor grants to Licensee a non-exclusive, non-transferable (except as expressly permitted in Section 9) license, without a right to sublicense, under the Licensed Patent Rights, in the Territory and during the Term, to make, use, sell, offer for sale, and import Licensed Products and to practice Licensed Processes, in each case, in the Field of Use.

'''{Proposed Addition: 2.2 If the License Data Record contains a Specification, then subject to the terms and conditions of this Agreement and the License Data Record, Licensor grants to Licensee a non-exclusive, non-transferable (except as expressly permitted in Section 9) license, without a right to sublicense, under the Necessary Patent Claims, in the Territory, and during the Term, to make, use, sell, offer for sale, and import products that implement the Specification and to practice processes that implement the Specification.}
'''
The above licenses includes the right to have made, except as otherwise specified by the License Data Record.

===3. FEES===

Fees, royalties, or other monetary consideration, if any, shall be specified in the “License Fees and Royalties” section of License Data Record. If none are specified, then no payment is required under this Agreement.

===4. REPORTING===

Licensee shall provide quarterly reports to Licensor, along with any required payments, in sufficient detail to verify the calculation of royalties owed, including without limitation, gross receipts from the use, sale, or other disposition of Licensed Products and/or from the practice of a Licensed Process, deductions taken for calculating revenues, and the total royalty due. If no royalties are due, then the report shall so specify.

If no royalties are required under this Agreement, then Licensee shall instead provide such reports as may be reasonably requested by Licensor to perform the analysis and activities described below.

Licensor may use the information provided by Licensee to analyze and publish metrics and impact statistics related to the use of the Licensed Patent Rights and have others do so, as long as such information is used only in aggregated and anonymous form. Licensor may also use or disclose the information to enforce this Agreement, and/or to comply with a court order, or otherwise as required by law.

===5. TERM===

The Term of this Agreement commences on its execution and ends upon the expiration, abandonment, or final invalidity of all claims within the Licensed Patent Rights, unless earlier terminated as permitted below.

Licensor may terminate this Agreement in the event of a material breach of this Agreement that is not cured within thirty (30) days after Licensor provides written notice to Licensee specifying such breach.

To the extent permitted by applicable law, Licensor may terminate this Agreement immediately in the event Licensee becomes insolvent, files for bankruptcy protection, makes an assignment for the benefit of creditors, or becomes the subject of involuntary bankruptcy proceedings. Licensee shall immediately notify Licensor upon the occurrence of one of these conditions.

Licensor may terminate this Agreement upon written notice to Licensee in the event that Licensee asserts a claim of patent infringement against Licensor or any third party with respect to products or services of Licensor, unless (a) such claim is first asserted after Licensor has asserted a claim of patent infringement against Licensee or any third party with respect to products or services of Licensee, or (b) Licensee fully withdraws such claim within ten (10) days after being notified by Licensor. For purposes of this paragraph, “Licensor” and “Licensee” shall also include their respective affiliates.

Licensee may terminate this Agreement by providing Licensor with at least thirty (30) days prior written notice.

Upon any termination of this Agreement, Licensee shall provide Licensor with a final royalty report within thirty (30) days after termination, along with full payment of all amounts due. The following sections shall also survive termination of this Agreement: 6, 7, 8, and 9.

===6. WARRANTIES===

Licensor warrants that it has the right and authority to grant the rights and licenses granted in this Agreement.

Licensor disclaims all other warranties, representations, and conditions, whether express, implied, or statutory, including, but not limited to, the warranties of merchantability, fitness for a particular purpose, or non-infringement.

Without limiting the generality of the above disclaimer, Licensor makes no representation or warranties that: a) it will prosecute or continue to prosecute, maintain, or defend any patent or patent application, b) it will bring an infringement suit, assert any claim against third parties accused of infringement, or otherwise enforce any patent or patent application, c) it will join as a party to any suit or legal action, d) it will provide Licensee with know-how or assistance necessary or useful to practice the Licensed Patent Rights, e) the Licensed Patent Rights are valid or enforceable, or f) the Licensed Products or Licensed Processes may be exploited or practiced without infringing third party patents.

===7. INDEMNIFICATION===

Licensee shall indemnify and hold Licensor, and its officers, directors, employees, representatives, agents, and affiliates harmless from any and all damages, liabilities, costs, and expenses (including reasonable attorneys’ fees) arising out of or caused by Licensee’s practice or exploitation of the license granted by this Agreement or by the sale, use, or exploitation of Licensed Products or Licensed Processes by or under the authority of Licensee. Licensor shall notify Licensee promptly of any claim of which Licensor is aware and for which Licensor seeks indemnification. Licensee shall have the right to control the defense of such claims, except to the extent that the scope or validity of the Licensed Patent Rights are at issue, in which case Licensor may assume the sole control and defense of such claims at its own expense.

===8. TRADEMARKS AND ATTRIBUTION===

Licensee agrees to mark Licensed Products and their packaging with patent markings as required by applicable law to preserve Licensor’s rights and otherwise enforce the Licensed Patents.

At Licensor’s request, Licensee shall reasonably cooperate with Licensor and provide such information as may be necessary for Licensor to prepare use case studies that document Licensee’s use of the Licensed Patent Rights and related usage or impact metrics. Each party may copy, distribute, and publish such use case studies, including by means of its Web sites, and authorize others to do so, to demonstrate the uses and impact of the technology.

Except solely as permitted above, neither party may use the other’s trademarks, service marks, trade names, company names, or logos (“Marks”) to offer, market, sell, or otherwise endorse any product or service or to engage in any other trademark usage, unless with the prior written authorization of the owner. Any uses of a party’s Marks shall inure solely to the benefit of that party, along with all goodwill associated therewith.

===9. GENERAL PROVISIONS===

Notices to the parties shall be provided at the address set forth in the License Data Record, unless a party provides written notice to the other party of a change of address. Notices may be provided by personal delivery, express delivery service, or registered mail. Notices shall be effective on the date received.

Nothing in this Agreement constitutes the parties as partners, joint venturers, principal and agent, or fiduciaries of each other.

A delay or failure in enforcing a right or obligation under this Agreement shall not be construed as an implied waiver of that right or obligation or of any other provision or breach under this Agreement. A waiver under this Agreement is only effective if made in writing and signed by the party granting the waiver.

An amendment or modification of this Agreement is effective only if made in writing and signed by the duly authorized representatives of the parties.

This Agreement constitutes the entire agreement between the parties as to the subject matter herein and supersedes all prior or contemporaneous negotiations, agreements, representations, memorandums, and understandings.

If any provision of this Agreement is deemed to be invalid or unenforceable, then that provision, to the extent unenforceable, is severable and the remainder of this Agreement shall continue in full force and effect.

Licensee may not assign any of its rights under this Agreement, delegate any of its obligations under this Agreement, or otherwise transfer this Agreement, without the prior written consent of Licensor, and any attempted assignment, transfer, or delegation shall be voidable by Licensor. Any change of control of Licensee shall be deemed an attempted transfer of this Agreement. Licensor may assign this Agreement in connection with a sale, merger, or transfer of the assets to which this Agreement relates, provided that the assignee assumes all rights and obligations under this Agreement.

Licensee agrees to maintain insurance in amounts prudent for Licensee’s operations and adequate to discharge Licensee’s obligations under Section 7.

This Agreement is governed by and interpreted in accordance with the laws of the jurisdiction set forth in the License Data Record, if any. The parties agree that the proper jurisdiction and venue for any disputes arising out of this Agreement shall be in the courts of the venue specified in the License Data Record, if any. If none are specified, then jurisdiction and venue shall be deemed to be in the relevant jurisdiction for Licensor’s address, as stated in the License Data Record.

No rights or forbearances are granted, or may arise (whether through implication, estoppel, exhaustion or otherwise) other than those expressly granted in this Agreement.

EXCEPT FOR THE OBLIGATION TO MAKE PAYMENTS (IF ANY) IN SECTION 3, THE INDEMNIFICATION OBLIGATIONS IN SECTION 7, AND INFRINGEMENT OF ANY TRADEMARK OR INTELLECTUAL PROPERTY RIGHT, IN NO EVENT WILL EITHER PARTY HAVE ANY LIABILITY OF ANY KIND WHATSOEVER TO THE OTHER ARISING OUT OF THIS AGREEMENT, INCLUDING BUT NOT LIMITED TO, FOR INDIRECT, INCIDENTAL, CONSEQUENTIAL OR SPECIAL DAMAGES, EVEN IF ADVISED OF THE POSSIBILITY OF SUCH DAMAGES.

===Addendum A===

The purpose of this Addendum is to provide guidelines for a License Data Record, which may be either in paper or electronic form. This License Data Record is unique to each transaction and must specify a minimum information set in order to give effect to the Patent License Agreement.

To constitute an agreement that incorporates the terms of the Patent License Agreement, a License Data Record must:

*1) reference this Agreement by linking to the URL of the Patent License Agreement deed or legal code, attaching a copy of it, referencing it by name, or by any other means that uniquely and unambiguously identifies it; AND
*2) provide the following information:
*a. Name of Licensor: the name of the person or entities offering this license,
*b. Licensor Contact Information: address, contact person, phone number, fax, and/or email,
*c. Name of Licensee: the name of the person or entities accepting this license,
*d. Licensee Contact Information: address, contact person, phone number, fax, and/or email,
*e. Licensed Patent Rights: a list of patents and patent applications to be licensed,
*f. License Fees and Royalties (optional): a description of any required fees, royalties, or other monetary consideration;
*g. Field of Use (optional): a description of any scope of use limitations associated with the license,
*h. “Have Made” Limitations (optional): any limitations to the license to “have made”
*i. Choice of Law (optional): jurisdiction for choice of law,
*j. Choice of Venue (optional) jurisdiction for legal venue,
*k. Territory (optional): geographic limitations of the license,
*l. Offer Limitations (optional): any limitations associated with the offer

'''Sample License Data Record'''

This License Data Record references and incorporates the GX Model Patent License Agreement (located at URL: _________)

Licensor Name
Licensor Contact
Address:_____________________________
_____________________________
_____________________________
Phone: _____________________________
Fax: _____________________________
Email: _____________________________
Licensee Name
Licensee Contact
Address:_____________________________
_____________________________
_____________________________
Phone: _____________________________
Fax: _____________________________
Email: _____________________________

Licensed Patents Rights:

Patent No.____________________________

Patent Application No.__________________
…

License Fees & Royalties (optional):

Field of Use (optional):

Have Made Limitations (optional):

Choice of Law (optional) City_____________, State_____________

Choice of Venue (optional) City_____________, State_____________

Territory

Offer Limitations

Model Patent License

2010-07-20T15:17:09Z

Thinh: /* 1. DEFINITIONS */

See [[Patent Tools Public Discussion]]

==How to Use this Model Patent License Agreement==

This Model Patent License Agreement is intended to be used as part of a “public license offer” to license patent rights. A public license offer provides two main benefits:

a) it is publicly accessible: anyone can read the full terms of the offer; and
b) it is an “active” offer so that anyone can accept it if they agree to all its terms.

To have these benefits, the offer must be openly published, and it must be capable of being accepted by anyone on a non-discriminatory basis and without additional negotiation. Used in the right context, this type of offer can provide benefits for both licensor and licensee. A licensor can use a public license offer to publicize its willingness to license patent rights on reasonable and non-discriminatory terms, thus attracting innovators and potential licensees who might otherwise not have been either aware that such patent rights were available for license or who might otherwise be unwilling to approach the licensor due to anticipated, significant transaction costs typically associated with negotiating a favorable license. A potential licensee can rely on the public and non-discriminatory availability of this public license offer to make plans and decisions about technology implementation, which in the absence of such offers, would be complicated or impossible.

Patent licenses can be very complicated, particularly when complex commercialization and licensing strategies are involved. So it would be impossible for anyone to write a license that addresses everyone’s needs or fits every scenario. Instead, we developed this Model Patent License Agreement to be simple and easy to understand. It is intended to provide a simple standard model license to make patents that are being held for defensive purposes available for other uses—outside of those for which they are being maintained for defensive uses—on reasonable and non-discriminatory terms: preferably free of charge and without unnecessary field limitations. If you need to implement a more complex licensing strategy, then this may not be the right tool for you. In any case, please consult your own attorney before making an offer. Creative Commons is not a law firm, so we cannot provide you with advice on whether to use this instrument or how to tailor it to suit your needs or business strategy.

To use this Model Patent License Agreement, you need to supply some basic information, which is found in the License Data Record (see Addendum A). This information should be supplied in a standard electronic format for ease of reference, but you can use other formats if you wish. Some basic information is required in order to make a complete public license offer, while other fields may be optional. If you do not fill out the optional fields, then they will be defined by default provisions in the license. IN MOST CASES, THE DEFAULT OPTION ALLOWS FOR THE MOST PERMISSIVE AND FREE USE BY THE LICENSEE. For example, by default, there are no field of use restrictions, fees, royalties, or restrictions on the “have made” right. You may also add limitations to the offer itself (for example, an expiration date for the offer). We do not encourage you to impose other offer limitations beyond this. However, in some circumstances, it may be reasonable to specify that anyone currently engaged in litigation with you that would otherwise give you grounds for terminating the license (see Section 5) may not accept the offer in the first place.

Together, the License Data Record and the Model Patent License Agreement will be become your public license offer. When such an offer is made available on your Web site, or through clearinghouses like GX, anyone eligible to accept the offer may accept it through a registration and acceptance process. As part of that process, the Licensee will supply the Licensee-specific information needed to complete the License Data Record. This process, and the transaction record, then completes the license agreement.

----

==MODEL PATENT LICENSE AGREEMENT==

The owner of the Licensed Patent Rights, as defined below (the “Licensor”), grants a license on the terms and conditions set forth in this Patent License Agreement (the “Agreement”) to the person or entity accepting this Agreement (the “Licensee”).

===1. DEFINITIONS===

“Field of Use” means the fields of use specified in the License Data Record. If not so specified, Field of Use means all fields of use.

“License Data Record” means a written or electronic document that provides the information specified in Addendum A.

“Licensed Patent Rights” means (a) the patents and patent applications listed in the License Data Record, (b) all divisionals, continuations, and foreign counterpart applications claiming priority from any patent or patent application described in (a), (c) those claims of any continuations-in-parts that claim priority exclusively from the patents or patent applications described in (a) and (b); (d) all patents issuing from patent applications included in (a) through (c); and (e) all reissues, reexaminations, renewals, and extensions of any patents included in (a) through (d).

“Licensed Process(es)” means a process the practice of which would infringe, but for the license granted in this Agreement, one or more claims of the Licensed Patent Rights.

“Licensed Product(s)” means a machine, article of manufacture, composition of matter, or other product (a) the manufacture, use, sale, offer for sale, or import of which would infringe, but for the licenses granted in this Agreement, one or more claims of the Licensed Patent Rights, or (b) made or directly obtained by a Licensed Process.

'''{Proposed Addition: “Necessary Patent Claims” means any patent claim(s), now owned or hereafter acquired by Licensor in any patent that Licensor has the right to license, that would be infringed, but for the license granted in Section 2.2, by the making, using, selling, or importation of processes or products that implement the Specification, but excluding any claims that are not necessary to implement the Specification as written.}'''

'''{Proposed Addition: “Specification” means the specification, if any, set forth in the License Data Record by the "Specification" entry.}'''

“Territory” means a geographical or jurisdictional designation, as specified in the License Data Record. If not so specified, Territory means worldwide.

“Term” means the period of time specified in Section 5.

===2. GRANT OF LICENSE===

Subject to the terms and conditions of this Agreement and the License Data Record, Licensor grants to Licensee a non-exclusive, non-transferable (except as expressly permitted in Section 9) license, in the Territory and during the Term, without a right to sublicense, to make, use, sell, offer for sale, and import Licensed Products and to practice Licensed Processes, in each case, in the Field of Use.

The above license includes the right to have made, except as otherwise specified by the License Data Record.

===3. FEES===

Fees, royalties, or other monetary consideration, if any, shall be specified in the “License Fees and Royalties” section of License Data Record. If none are specified, then no payment is required under this Agreement.

===4. REPORTING===

Licensee shall provide quarterly reports to Licensor, along with any required payments, in sufficient detail to verify the calculation of royalties owed, including without limitation, gross receipts from the use, sale, or other disposition of Licensed Products and/or from the practice of a Licensed Process, deductions taken for calculating revenues, and the total royalty due. If no royalties are due, then the report shall so specify.

If no royalties are required under this Agreement, then Licensee shall instead provide such reports as may be reasonably requested by Licensor to perform the analysis and activities described below.

Licensor may use the information provided by Licensee to analyze and publish metrics and impact statistics related to the use of the Licensed Patent Rights and have others do so, as long as such information is used only in aggregated and anonymous form. Licensor may also use or disclose the information to enforce this Agreement, and/or to comply with a court order, or otherwise as required by law.

===5. TERM===

The Term of this Agreement commences on its execution and ends upon the expiration, abandonment, or final invalidity of all claims within the Licensed Patent Rights, unless earlier terminated as permitted below.

Licensor may terminate this Agreement in the event of a material breach of this Agreement that is not cured within thirty (30) days after Licensor provides written notice to Licensee specifying such breach.

To the extent permitted by applicable law, Licensor may terminate this Agreement immediately in the event Licensee becomes insolvent, files for bankruptcy protection, makes an assignment for the benefit of creditors, or becomes the subject of involuntary bankruptcy proceedings. Licensee shall immediately notify Licensor upon the occurrence of one of these conditions.

Licensor may terminate this Agreement upon written notice to Licensee in the event that Licensee asserts a claim of patent infringement against Licensor or any third party with respect to products or services of Licensor, unless (a) such claim is first asserted after Licensor has asserted a claim of patent infringement against Licensee or any third party with respect to products or services of Licensee, or (b) Licensee fully withdraws such claim within ten (10) days after being notified by Licensor. For purposes of this paragraph, “Licensor” and “Licensee” shall also include their respective affiliates.

Licensee may terminate this Agreement by providing Licensor with at least thirty (30) days prior written notice.

Upon any termination of this Agreement, Licensee shall provide Licensor with a final royalty report within thirty (30) days after termination, along with full payment of all amounts due. The following sections shall also survive termination of this Agreement: 6, 7, 8, and 9.

===6. WARRANTIES===

Licensor warrants that it has the right and authority to grant the rights and licenses granted in this Agreement.

Licensor disclaims all other warranties, representations, and conditions, whether express, implied, or statutory, including, but not limited to, the warranties of merchantability, fitness for a particular purpose, or non-infringement.

Without limiting the generality of the above disclaimer, Licensor makes no representation or warranties that: a) it will prosecute or continue to prosecute, maintain, or defend any patent or patent application, b) it will bring an infringement suit, assert any claim against third parties accused of infringement, or otherwise enforce any patent or patent application, c) it will join as a party to any suit or legal action, d) it will provide Licensee with know-how or assistance necessary or useful to practice the Licensed Patent Rights, e) the Licensed Patent Rights are valid or enforceable, or f) the Licensed Products or Licensed Processes may be exploited or practiced without infringing third party patents.

===7. INDEMNIFICATION===

Licensee shall indemnify and hold Licensor, and its officers, directors, employees, representatives, agents, and affiliates harmless from any and all damages, liabilities, costs, and expenses (including reasonable attorneys’ fees) arising out of or caused by Licensee’s practice or exploitation of the license granted by this Agreement or by the sale, use, or exploitation of Licensed Products or Licensed Processes by or under the authority of Licensee. Licensor shall notify Licensee promptly of any claim of which Licensor is aware and for which Licensor seeks indemnification. Licensee shall have the right to control the defense of such claims, except to the extent that the scope or validity of the Licensed Patent Rights are at issue, in which case Licensor may assume the sole control and defense of such claims at its own expense.

===8. TRADEMARKS AND ATTRIBUTION===

Licensee agrees to mark Licensed Products and their packaging with patent markings as required by applicable law to preserve Licensor’s rights and otherwise enforce the Licensed Patents.

At Licensor’s request, Licensee shall reasonably cooperate with Licensor and provide such information as may be necessary for Licensor to prepare use case studies that document Licensee’s use of the Licensed Patent Rights and related usage or impact metrics. Each party may copy, distribute, and publish such use case studies, including by means of its Web sites, and authorize others to do so, to demonstrate the uses and impact of the technology.

Except solely as permitted above, neither party may use the other’s trademarks, service marks, trade names, company names, or logos (“Marks”) to offer, market, sell, or otherwise endorse any product or service or to engage in any other trademark usage, unless with the prior written authorization of the owner. Any uses of a party’s Marks shall inure solely to the benefit of that party, along with all goodwill associated therewith.

===9. GENERAL PROVISIONS===

Notices to the parties shall be provided at the address set forth in the License Data Record, unless a party provides written notice to the other party of a change of address. Notices may be provided by personal delivery, express delivery service, or registered mail. Notices shall be effective on the date received.

Nothing in this Agreement constitutes the parties as partners, joint venturers, principal and agent, or fiduciaries of each other.

A delay or failure in enforcing a right or obligation under this Agreement shall not be construed as an implied waiver of that right or obligation or of any other provision or breach under this Agreement. A waiver under this Agreement is only effective if made in writing and signed by the party granting the waiver.

An amendment or modification of this Agreement is effective only if made in writing and signed by the duly authorized representatives of the parties.

This Agreement constitutes the entire agreement between the parties as to the subject matter herein and supersedes all prior or contemporaneous negotiations, agreements, representations, memorandums, and understandings.

If any provision of this Agreement is deemed to be invalid or unenforceable, then that provision, to the extent unenforceable, is severable and the remainder of this Agreement shall continue in full force and effect.

Licensee may not assign any of its rights under this Agreement, delegate any of its obligations under this Agreement, or otherwise transfer this Agreement, without the prior written consent of Licensor, and any attempted assignment, transfer, or delegation shall be voidable by Licensor. Any change of control of Licensee shall be deemed an attempted transfer of this Agreement. Licensor may assign this Agreement in connection with a sale, merger, or transfer of the assets to which this Agreement relates, provided that the assignee assumes all rights and obligations under this Agreement.

Licensee agrees to maintain insurance in amounts prudent for Licensee’s operations and adequate to discharge Licensee’s obligations under Section 7.

This Agreement is governed by and interpreted in accordance with the laws of the jurisdiction set forth in the License Data Record, if any. The parties agree that the proper jurisdiction and venue for any disputes arising out of this Agreement shall be in the courts of the venue specified in the License Data Record, if any. If none are specified, then jurisdiction and venue shall be deemed to be in the relevant jurisdiction for Licensor’s address, as stated in the License Data Record.

No rights or forbearances are granted, or may arise (whether through implication, estoppel, exhaustion or otherwise) other than those expressly granted in this Agreement.

EXCEPT FOR THE OBLIGATION TO MAKE PAYMENTS (IF ANY) IN SECTION 3, THE INDEMNIFICATION OBLIGATIONS IN SECTION 7, AND INFRINGEMENT OF ANY TRADEMARK OR INTELLECTUAL PROPERTY RIGHT, IN NO EVENT WILL EITHER PARTY HAVE ANY LIABILITY OF ANY KIND WHATSOEVER TO THE OTHER ARISING OUT OF THIS AGREEMENT, INCLUDING BUT NOT LIMITED TO, FOR INDIRECT, INCIDENTAL, CONSEQUENTIAL OR SPECIAL DAMAGES, EVEN IF ADVISED OF THE POSSIBILITY OF SUCH DAMAGES.

===Addendum A===

The purpose of this Addendum is to provide guidelines for a License Data Record, which may be either in paper or electronic form. This License Data Record is unique to each transaction and must specify a minimum information set in order to give effect to the Patent License Agreement.

To constitute an agreement that incorporates the terms of the Patent License Agreement, a License Data Record must:

*1) reference this Agreement by linking to the URL of the Patent License Agreement deed or legal code, attaching a copy of it, referencing it by name, or by any other means that uniquely and unambiguously identifies it; AND
*2) provide the following information:
*a. Name of Licensor: the name of the person or entities offering this license,
*b. Licensor Contact Information: address, contact person, phone number, fax, and/or email,
*c. Name of Licensee: the name of the person or entities accepting this license,
*d. Licensee Contact Information: address, contact person, phone number, fax, and/or email,
*e. Licensed Patent Rights: a list of patents and patent applications to be licensed,
*f. License Fees and Royalties (optional): a description of any required fees, royalties, or other monetary consideration;
*g. Field of Use (optional): a description of any scope of use limitations associated with the license,
*h. “Have Made” Limitations (optional): any limitations to the license to “have made”
*i. Choice of Law (optional): jurisdiction for choice of law,
*j. Choice of Venue (optional) jurisdiction for legal venue,
*k. Territory (optional): geographic limitations of the license,
*l. Offer Limitations (optional): any limitations associated with the offer

'''Sample License Data Record'''

This License Data Record references and incorporates the GX Model Patent License Agreement (located at URL: _________)

Licensor Name
Licensor Contact
Address:_____________________________
_____________________________
_____________________________
Phone: _____________________________
Fax: _____________________________
Email: _____________________________
Licensee Name
Licensee Contact
Address:_____________________________
_____________________________
_____________________________
Phone: _____________________________
Fax: _____________________________
Email: _____________________________

Licensed Patents Rights:

Patent No.____________________________

Patent Application No.__________________
…

License Fees & Royalties (optional):

Field of Use (optional):

Have Made Limitations (optional):

Choice of Law (optional) City_____________, State_____________

Choice of Venue (optional) City_____________, State_____________

Territory

Offer Limitations

Patent Tools Feedback

2010-06-25T19:30:29Z

Thinh:

See [[Patent Tools Public Discussion]]

'''Model Patent License'''

''Issue: Is the scope of the definition of "Licensed Patent Rights" sufficiently broad?''

''Discussion''

The definition of Licensed Patent Rights currently reads:

“Licensed Patent Rights” means (a) the patents and patent applications listed in the License Data Record, (b) all divisionals, continuations, and foreign counterpart applications claiming priority from any patent or patent application described in (a), (c) those claims of any continuations-in-parts that claim priority exclusively from the patents or patent applications described in (a) and (b); (d) all patents issuing from patent applications included in (a) through (c); and (e) all reissues, reexaminations, renewals, and extensions of any patents included in (a) through (d).

The current definition includes patents and applications that are expressly listed as well as most types of subsequent daughter applications that are related to them by priority.

One criticism of this definition is that may not be broad enough to protect the Licensee from the situation in which the Licensor does not include all necessary patents in the license grant (for example, where the Licensor licenses an improvement patent without licensing a dominant blocking patent). In those situations, a Licensee who fails to conduct sufficient due diligence may think that it has licensed all necessary rights from the Licensor, and may be surprised later if the Licensor seeks to enforce dominant patents. This outcome can be unfair to the extent that it defeats the expectations of the Licensee with the respect to the benefit of its bargain or induces the Licensee to infringe the Licensor's unlicensed dominant patents.

While some courts have addressed this situation (e.g., "TransCore v. Electronic Transaction Consultants Corp.", 563 F.3d 1271 (Fed. Cir. 2009)), under the doctrine of equitable or legal estoppel, the case law does not provide adequate certainty for drafting purposes. Thus, it would be desirable to take a clear position with respect to the draft language.

An earlier draft of this provision also included certain parent applications, to which the listed applications may claim priority. However, some commentators objected to the inclusion of parent applications, on the basis that this would create ambiguity and uncertainty. They pointed out, for example, that the claims of a daughter application are entitled to claim priority based on the specifications of a parent application, but there is no clear method for determining to what extent the claims of the parent application should be licensed based merely on priority. In addition, such a definition, while broader than the current definition, would not entirely address the issue. For example, the dominant patent may not be related by priority.

Thus, commentators have suggested a number of alternatives:

* use language similar to GPL 3.0 ("A contributor's 'essential patent claims' are all patent claims owned or controlled by the contributor, whether already acquired or hereafter acquired, that would be infringed by some manner, permitted by this License, of making, using, or selling its contributor version, but do not include claims that would be infringed only as a consequence of further modification of the contributor version")

Discussion: One difficult of adapting such a definition is that the object of the license in the case of GPL is a software program, which serves as a specification around which the scope of the license can be limited. In the present license, it is a patent or patent application itself which is being licensed, and thus there is no separate specification or software code which serves to limit the scope of the license.

* include all patents "necessary to practice" a Covered Specification or standard (an example would be Microsoft's Open Specification Promise, which specifically defines a "Covered Specification" in technical terms)

Discussion: This type of definition would probably provide the maximum comfort the the Licensee that it has obtained the rights necessary to practice a Covered specification. However, there may be other relevant or related patents that are useful to practice, but no strictly necessary. Also, it does require that a clear specification be given as part of the license. (But such a specification could come from the licensed patent itself, or from a particular physical embodiment, software code, or standard). Furthermore, it would shift the burden of conducting patent due diligence onto the Licensor, to the extent that it needs to conduct analysis to reassure itself that granting such a broad scope is consistent with its business strategy and legal obligations. Nevertheless, this remains a viable and useful option alternative to address those scenarios where providing certainty to the Licensee is critical (e.g., for adoption and implementation of common industry standards and specifications).

* limit the licensed patent rights only to listed patents (e.g., the Eco-Patent Commons defines the pledged patents as "patents on the Patent List, and no other license...")

Discussion: This is the narrowest and most specific definition. Unlike the current definition, it would not include daughter applications, such as continuations and divisionals. However, this would greatly raise the level of uncertainty for the Licensee, particularly because daughter applications claiming the same subject matter may not yet be published and discoverable, even with due diligence by the Licensee. In the context of the Eco-Patent Commons, which is a free public non-assertion, it may be appropriate to provide such a "quit-claim" type of license, which confers no further assurances. And indeed, this is that situation with the Research Non-Assertion. However, in the context of the Patent License, which in some cases may carry a royalty, we want to provide a little more certainty for the Licensee.

* Some commentators have suggested that we provide two alternative definitions of Licensed Patent Rights, which the Licensor may choose from when making its offer. One definition would be the current definition, accompanied by warning to the Licensee regarding the need to conduct its own due diligence prior to licensing. The second alternative would be some version of the "necessary to practice" type definition, along with the option for the Licensor to supply the Specification that it wishes to license (which could be a specification of a patent).

Discussion: We are currently considering this approach because it provides greater choice and flexibility in any given situation to shift the burden of conducting due diligence, which may vary for the technology, its intended uses, and the intended audience. Having these alternative definitions may also facilitate Licensees and Licensors bargaining over the allocation of risks and uncertainties.

''Other Feedback''

1. Some Commentators suggested that the preamble should clearly that that the Licensor reserves the right to refuse to grant a license to anyone who has been accused of the Licensor's patents or with whom they may be engaged in patent litigation (to prevent potential licensees from willfully infringing and waiting to only take a license after they have been caught).

2. It is suggested that the phrase "under the Licensed Patent Rights" be added as follows:

"Subject to the terms and conditions of this Agreement and the License Data Record, Licensor grants to Licensee a non-exclusive, non-transferable (except as expressly permitted in Section 9) license ''under the Licensed Patent Rights'', in the Territory and during the Term, without a right to sublicense, to make, use, sell, offer for sale, and import Licensed Products and to practice Licensed Processes..."

Discussion: Such a change would be useful to clarify that the Licensed Patent Rights serve as a scope limitation on the license (and not merely a specification for Licensed Products and Licensed Processes).

3. It was suggested that the ability to qualify the scope of the "have made right" should similarly be extended to the "make", "use", "sell", "offer for sale", and "import" rights as well.

Discussion: While this may provide greater flexibility for the Licensor, is this level of complexity useful for this type of license? Would it make the license too difficult for Licensees to interpret? Might this be reserved as a future option to implement if there is demand for it?

4. It was suggested that the Term should be flexible and an option should be permitted to set a definite Term of years (or months) rather than always be for the life of the patent.

Discussion: Again, the relevant question is whether this would introduce unnecessary complexity, whether there is real demand for it, and whether it might cause "patent hold-up" problems for unsophisticated licensees when the Term expires and they are required to renegotiate after having adopted and invested in the technology.

5. It was suggested that the Licensor's right to terminate for defensive purposes should not be limited to when the Licensee initiates patent claims against the Licensor, but also be permitted even when the Licensee tries to assert its patents "defensively" against a Licensor who initiates patent litigation first (i.e, as a counter-claim to a patent suit initiated by the Licensor).

Discussion: We start with the assumption that Licensor who is holding patents for defensive purposes would not be willing to license those patents unless that defensive use was reserved, which is the effect of the current clause. However, in the situation where the Licensor itself initiates an infringement action against the Licensee on unrelated patents, should the Licensee be confronted with the choice of giving up the defensive use of its patents or losing the license that it has bargained for (and possibly facing an injunction on current products)? Since in the latter case, the stakes are much higher for the Licensee, we believe the current definition of defensive use as responding to, rather than initiating, a patent lawsuit is appropriate.

6. It has been suggested that patent marking should be done at the request of the licensor (Section 8), since patent marking by the licensee may not always appropriate or it may have difficulty determining what or how to mark.

7. A comment was made that the preamble should not explicitly recommend the use of the Public License for defensive purposes, because in some cases, it may not be appropriate for some defensive patent strategies.

'''Research Non-Assertion Pledge'''

1. It was suggested that the Research Non-Assertion Pledge should specify that in the event that the patents are transferred or undergo a change of ownership that the Grantor would contractually require the assignee to agree to abide by the terms of the pledge with respect to those patents (which includes the right to terminate the pledge in accordance with its terms). Or alternatively, that the Pledge should be converted to a royalty-free, non-exclusive license.

2. Should 501(c)(6) organizations (business leagues) be included under the Pledge? If so, how do you define non-commercial uses for them?

3. It was recommended that the following modification be made:

“Non-Commercial Research Use” means any internal experimental, research, developmental, or educational use or practice of the Patent Rights '''by or on behalf of a Non-Profit Institution''', other than in exchange for money or other valuable consideration.

This is to clarify further that a Non-Profit Institution cannot use the patents on behalf of third parties who may be for-profit businesses in "loss-leader" situations.

4. A similar comment for the defensive termination as was made for issue #5 above.

Patent Tools Feedback

2010-06-22T19:12:47Z

Thinh:

See [[Patent Tools Public Discussion]]

'''Model Patent License'''

''Issue: Is the scope of the definition of "Licensed Patent Rights" sufficiently broad?''

''Discussion''

The definition of Licensed Patent Rights currently reads:

“Licensed Patent Rights” means (a) the patents and patent applications listed in the License Data Record, (b) all divisionals, continuations, and foreign counterpart applications claiming priority from any patent or patent application described in (a), (c) those claims of any continuations-in-parts that claim priority exclusively from the patents or patent applications described in (a) and (b); (d) all patents issuing from patent applications included in (a) through (c); and (e) all reissues, reexaminations, renewals, and extensions of any patents included in (a) through (d).

The current definition includes patents and applications that are expressly listed as well as most types of subsequent daughter applications that are related to them by priority.

One criticism of this definition is that may not be broad enough to protect the Licensee from the situation in which the Licensor does not include all necessary patents in the license grant (for example, where the Licensor licenses an improvement patent without licensing a dominant blocking patent). In those situations, a Licensee who fails to conduct sufficient due diligence may think that it has licensed all necessary rights from the Licensor, and may be surprised later if the Licensor seeks to enforce dominant patents. This outcome can be unfair to the extent that it defeats the expectations of the Licensee with the respect to the benefit of its bargain or induces the Licensee to infringe the Licensor's unlicensed dominant patents.

While some courts have addressed this situation (e.g., "TransCore v. Electronic Transaction Consultants Corp.", 563 F.3d 1271 (Fed. Cir. 2009)), under the doctrine of equitable or legal estoppel, the case law does not provide adequate certainty for drafting purposes. Thus, it would be desirable to take a clear position with respect to the draft language.

An earlier draft of this provision also included certain parent applications, to which the listed applications may claim priority. However, some commentators objected to the inclusion of parent applications, on the basis that this would create ambiguity and uncertainty. They pointed out, for example, that the claims of a daughter application are entitled to claim priority based on the specifications of a parent application, but there is no clear method for determining to what extent the claims of the parent application should be licensed based merely on priority. In addition, such a definition, while broader than the current definition, would not entirely address the issue. For example, the dominant patent may not be related by priority.

Thus, commentators have suggested a number of alternatives:

* use language similar to GPL 3.0 ("A contributor's 'essential patent claims' are all patent claims owned or controlled by the contributor, whether already acquired or hereafter acquired, that would be infringed by some manner, permitted by this License, of making, using, or selling its contributor version, but do not include claims that would be infringed only as a consequence of further modification of the contributor version")

Discussion: One difficult of adapting such a definition is that the object of the license in the case of GPL is a software program, which serves as a specification around which the scope of the license can be limited. In the present license, it is a patent or patent application itself which is being licensed, and thus there is no separate specification or software code which serves to limit the scope of the license.

* include all patents "necessary to practice" the licensed invention (an example would be Microsoft's Open Specification Promise, which states in part "'Microsoft Necessary Claims' are those claims of Microsoft-owned or Microsoft-controlled patents that are necessary to implement only the required portions of the Covered Specification that are described in detail and not merely referenced in such Specification. 'Covered Specifications' are listed below.")

Discussion: This type of definition would probably provide the maximum comfort the the Licensee that it has obtained the rights necessary to practice a particular specification. However, it does require that a clear specification be given as part of the license. (But such a specification could come from the licensed patent itself, or from a particular physical embodiment, software code, or standard). Furthermore, it would shift the burden of conducting patent due diligence onto the Licensor, to the extent that it needs to conduct analysis to reassure itself that granting such a broad scope is consistent with its business strategy and legal obligations. Nevertheless, this remains a viable and useful option alternative to address those scenarios where providing certainty to the Licensee is critical (e.g., for adoption and implementation of common industry standards and specifications).

* limit the licensed patent rights only to listed patents (e.g., the Eco-Patent Commons defines the pledged patents as "patents on the Patent List, and no other license...")

Discussion: This is the narrowest and most specific definition. Unlike the current definition, it would not include daughter applications, such as continuations and divisionals. However, this would greatly raise the level of uncertainty for the Licensee, particularly because daughter applications claiming the same subject matter may not yet be published and discoverable, even with due diligence by the Licensee. In the context of the Eco-Patent Commons, which is a free public non-assertion, it may be appropriate to provide such a "quit-claim" type of license, which confers no further assurances. And indeed, this is that situation with the Research Non-Assertion. However, in the context of the Patent License, which in some cases may carry a royalty, we want to provide a little more certainty for the Licensee.

* Some commentators have suggested that we provide two alternative definitions of Licensed Patent Rights, which the Licensor may choose from when making its offer. One definition would be the current definition, accompanied by warning to the Licensee regarding the need to conduct its own due diligence prior to licensing. The second alternative would be some version of the "necessary to practice" type definition, along with the option for the Licensor to supply the Specification that it wishes to license (which could be a specification of a patent).

Discussion: We are currently considering this approach because it provides greater choice and flexibility in any given situation to shift the burden of conducting due diligence, which may vary for the technology, its intended uses, and the intended audience. Having these alternative definitions may also facilitate Licensees and Licensors bargaining over the allocation of risks and uncertainties.

''Other Feedback''

1. Some Commentators suggested that the preamble should clearly that that the Licensor reserves the right to refuse to grant a license to anyone who has been accused of the Licensor's patents or with whom they may be engaged in patent litigation (to prevent potential licensees from willfully infringing and waiting to only take a license after they have been caught).

2. It is suggested that the phrase "under the Licensed Patent Rights" be added as follows:

"Subject to the terms and conditions of this Agreement and the License Data Record, Licensor grants to Licensee a non-exclusive, non-transferable (except as expressly permitted in Section 9) license ''under the Licensed Patent Rights'', in the Territory and during the Term, without a right to sublicense, to make, use, sell, offer for sale, and import Licensed Products and to practice Licensed Processes..."

Discussion: Such a change would be useful to clarify that the Licensed Patent Rights serve as a scope limitation on the license (and not merely a specification for Licensed Products and Licensed Processes).

3. It was suggested that the ability to qualify the scope of the "have made right" should similarly be extended to the "make", "use", "sell", "offer for sale", and "import" rights as well.

Discussion: While this may provide greater flexibility for the Licensor, is this level of complexity useful for this type of license? Would it make the license too difficult for Licensees to interpret? Might this be reserved as a future option to implement if there is demand for it?

4. It was suggested that the Term should be flexible and an option should be permitted to set a definite Term of years (or months) rather than always be for the life of the patent.

Discussion: Again, the relevant question is whether this would introduce unnecessary complexity, whether there is real demand for it, and whether it might cause "patent hold-up" problems for unsophisticated licensees when the Term expires and they are required to renegotiate after having adopted and invested in the technology.

5. It was suggested that the Licensor's right to terminate for defensive purposes should not be limited to when the Licensee initiates patent claims against the Licensor, but also be permitted even when the Licensee tries to assert its patents "defensively" against a Licensor who initiates patent litigation first (i.e, as a counter-claim to a patent suit initiated by the Licensor).

Discussion: We start with the assumption that Licensor who is holding patents for defensive purposes would not be willing to license those patents unless that defensive use was reserved, which is the effect of the current clause. However, in the situation where the Licensor itself initiates an infringement action against the Licensee on unrelated patents, should the Licensee be confronted with the choice of giving up the defensive use of its patents or losing the license that it has bargained for (and possibly facing an injunction on current products)? Since in the latter case, the stakes are much higher for the Licensee, we believe the current definition of defensive use as responding to, rather than initiating, a patent lawsuit is appropriate.

6. It has been suggested that patent marking should be done at the request of the licensor (Section 8), since patent marking by the licensee may not always appropriate or it may have difficulty determining what or how to mark.

7. A comment was made that the preamble should not explicitly recommend the use of the Public License for defensive purposes, because in some cases, it may not be appropriate for some defensive patent strategies.

'''Research Non-Assertion Pledge'''

1. It was suggested that the Research Non-Assertion Pledge should specify that in the event that the patents are transferred or undergo a change of ownership that the Grantor would contractually require the assignee to agree to abide by the terms of the pledge with respect to those patents (which includes the right to terminate the pledge in accordance with its terms). Or alternatively, that the Pledge should be converted to a royalty-free, non-exclusive license.

2. Should 501(c)(6) organizations (business leagues) be included under the Pledge? If so, how do you define non-commercial uses for them?

3. It was recommended that the following modification be made:

“Non-Commercial Research Use” means any internal experimental, research, developmental, or educational use or practice of the Patent Rights '''by or on behalf of a Non-Profit Institution''', other than in exchange for money or other valuable consideration.

This is to clarify further that a Non-Profit Institution cannot use the patents on behalf of third parties who may be for-profit businesses in "loss-leader" situations.

4. A similar comment for the defensive termination as was made for issue #5 above.

Patent Tools Feedback

2010-06-22T19:12:05Z

Thinh:

See [[Patent Tools Public Discussion]]

'''Model Patent License'''

''Issue: Is the scope of the definition of "Licensed Patent Rights" sufficiently broad?''

''Discussion''

The definition of Licensed Patent Rights currently reads:

“Licensed Patent Rights” means (a) the patents and patent applications listed in the License Data Record, (b) all divisionals, continuations, and foreign counterpart applications claiming priority from any patent or patent application described in (a), (c) those claims of any continuations-in-parts that claim priority exclusively from the patents or patent applications described in (a) and (b); (d) all patents issuing from patent applications included in (a) through (c); and (e) all reissues, reexaminations, renewals, and extensions of any patents included in (a) through (d).

The current definition includes patents and applications that are expressly listed as well as most types of subsequent daughter applications that are related to them by priority.

One criticism of this definition is that may not be broad enough to protect the Licensee from the situation in which the Licensor does not include all necessary patents in the license grant (for example, where the Licensor licenses an improvement patent without licensing a dominant blocking patent). In those situations, a Licensee who fails to conduct sufficient due diligence may think that it has licensed all necessary rights from the Licensor, and may be surprised later if the Licensor seeks to enforce dominant patents. This outcome can be unfair to the extent that it defeats the expectations of the Licensee with the respect to the benefit of its bargain or induces the Licensee to infringe the Licensor's unlicensed dominant patents.

While some courts have addressed this situation (e.g., "TransCore v. Electronic Transaction Consultants Corp.", 563 F.3d 1271 (Fed. Cir. 2009)), under the doctrine of equitable or legal estoppel, the case law does not provide adequate certainty for drafting purposes. Thus, it would be desirable to take a clear position with respect to the draft language.

An earlier draft of this provision also included certain parent applications, to which the listed applications may claim priority. However, some commentators objected to the inclusion of parent applications, on the basis that this would create ambiguity and uncertainty. They pointed out, for example, that the claims of a daughter application are entitled to claim priority based on the specifications of a parent application, but there is no clear method for determining to what extent the claims of the parent application should be licensed based merely on priority. In addition, such a definition, while broader than the current definition, would not entirely address the issue. For example, the dominant patent may not be related by priority.

Thus, commentators have suggested a number of alternatives:

* use language similar to GPL 3.0 ("A contributor's 'essential patent claims' are all patent claims owned or controlled by the contributor, whether already acquired or hereafter acquired, that would be infringed by some manner, permitted by this License, of making, using, or selling its contributor version, but do not include claims that would be infringed only as a consequence of further modification of the contributor version")

Discussion: One difficult of adapting such a definition is that the object of the license in the case of GPL is a software program, which serves as a specification around which the scope of the license can be limited. In the present license, it is a patent or patent application itself which is being licensed, and thus there is no separate specification or software code which serves to limit the scope of the license.

* include all patents "necessary to practice" the licensed invention (an example would be Microsoft's Open Specification Promise, which states in part "'Microsoft Necessary Claims' are those claims of Microsoft-owned or Microsoft-controlled patents that are necessary to implement only the required portions of the Covered Specification that are described in detail and not merely referenced in such Specification. 'Covered Specifications' are listed below.")

Discussion: This type of definition would probably provide the maximum comfort the the Licensee that it has obtained the rights necessary to practice a particular specification. However, it does require that a clear specification be given as part of the license. (But such a specification could come from the licensed patent itself, or from a particular physical embodiment, software code, or standard). Furthermore, it would shift the burden of conducting patent due diligence onto the Licensor, to the extent that it needs to conduct analysis to reassure itself that granting such a broad scope is consistent with its business strategy and legal obligations. Nevertheless, this remains a viable and useful option alternative to address those scenarios where providing certainty to the Licensee is critical (e.g., for adoption and implementation of common industry standards and specifications).

* limit the licensed patent rights only to listed patents (e.g., the Eco-Patent Commons defines the pledged patents as "patents on the Patent List, and no other license...")

Discussion: This is the narrowest and most specific definition. Unlike the current definition, it would not include daughter applications, such as continuations and divisionals. However, this would greatly raise the level of uncertainty for the Licensee, particularly because daughter applications claiming the same subject matter may not yet be published and discoverable, even with due diligence by the Licensee. In the context of the Eco-Patent Commons, which is a free public non-assertion, it may be appropriate to provide such a "quit-claim" type of license, which confers no further assurances. And indeed, this is that situation with the Research Non-Assertion. However, in the context of the Patent License, which in some cases may carry a royalty, we want to provide a little more certainty for the Licensee.

* Some commentators have suggested that we provide two alternative definitions of Licensed Patent Rights, which the Licensor may choose from when making its offer. One definition would be the current definition, accompanied by warning to the Licensee regarding the need to conduct its own due diligence prior to licensing. The second alternative would be some version of the "necessary to practice" type definition, along with the option for the Licensor to supply the Specification that it wishes to license (which could be a specification of a patent).

Discussion: We are currently considering this approach because it provides greater choice and flexibility in any given situation to shift the burden of conducting due diligence, which may vary for the technology, its intended uses, and the intended audience. Having these alternative definitions may also facilitate Licensees and Licensors bargaining over the allocation of risks and uncertainties.

''Other Feedback''

1. Some Commentators suggested that the preamble should clearly that that the Licensor reserves the right to refuse to grant a license to anyone who has been accused of the Licensor's patents or with whom they may be engaged in patent litigation (to prevent potential licensees from willfully infringing and waiting to only take a license after they have been caught).

2. It is suggested that the phrase "under the Licensed Patent Rights" be added as follows:

"Subject to the terms and conditions of this Agreement and the License Data Record, Licensor grants to Licensee a non-exclusive, non-transferable (except as expressly permitted in Section 9) license ''under the Licensed Patent Rights'', in the Territory and during the Term, without a right to sublicense, to make, use, sell, offer for sale, and import Licensed Products and to practice Licensed Processes..."

Discussion: Such a change would be useful to clarify that the Licensed Patent Rights serve as a scope limitation on the license (and not merely a specification for Licensed Products and Licensed Processes).

3. It was suggested that the ability to qualify the scope of the "have made right" should similarly be extended to the "make", "use", "sell", "offer for sale", and "import" rights as well.

Discussion: While this may provide greater flexibility for the Licensor, is this level of complexity useful for this type of license? Would it make the license too difficult for Licensees to interpret? Might this be reserved as a future option to implement if there is demand for it?

4. It was suggested that the Term should be flexible and an option should be permitted to set a definite Term of years (or months) rather than always be for the life of the patent.

Discussion: Again, the relevant question is whether this would introduce unnecessary complexity, whether there is real demand for it, and whether it might cause "patent hold-up" problems for unsophisticated licensees when the Term expires and they are required to renegotiate after having adopted and invested in the technology.

5. It was suggested that the Licensor's right to terminate for defensive purposes should not be limited to when the Licensee initiates patent claims against the Licensor, but also be permitted even when the Licensee tries to assert its patents "defensively" against a Licensor who initiates patent litigation first (i.e, as a counter-claim to a patent suit initiated by the Licensor).

Discussion: We start with the assumption that Licensor who is holding patents for defensive purposes would not be willing to license those patents unless that defensive use was reserved, which is the effect of the current clause. However, in the situation where the Licensor itself initiates an infringement action against the Licensee on unrelated patents, should the Licensee be confronted with the choice of giving up the defensive use of its patents or losing the license that it has bargained for (and possibly facing an injunction on current products)? Since in the latter case, the stakes are much higher for the Licensee, we believe the current definition of defensive use as responding to, rather than initiating, a patent lawsuit is appropriate.

6. It has been suggested that patent marking should be done at the request of the licensor (Section 8), since patent marking by the licensee may not always appropriate or it may have difficulty determining what or how to mark.

7. A comment was made that the preamble should not explicitly recommend the use of the Public License for defensive purposes, because in some cases, it may not be appropriate for some defensive patent strategies.

''Comments on the Research Non-Assertion Pledge''

1. It was suggested that the Research Non-Assertion Pledge should specify that in the event that the patents are transferred or undergo a change of ownership that the Grantor would contractually require the assignee to agree to abide by the terms of the pledge with respect to those patents (which includes the right to terminate the pledge in accordance with its terms). Or alternatively, that the Pledge should be converted to a royalty-free, non-exclusive license.

2. Should 501(c)(6) organizations (business leagues) be included under the Pledge? If so, how do you define non-commercial uses for them?

3. It was recommended that the following modification be made:

“Non-Commercial Research Use” means any internal experimental, research, developmental, or educational use or practice of the Patent Rights '''by or on behalf of a Non-Profit Institution''', other than in exchange for money or other valuable consideration.

This is to clarify further that a Non-Profit Institution cannot use the patents on behalf of third parties who may be for-profit businesses in "loss-leader" situations.

4. A similar comment for the defensive termination as was made for issue #5 above.

Patent Tools Feedback

2010-06-22T19:10:15Z

Thinh:

See [[Patent Tools Public Discussion]]

'''Model Patent License'''

''Issue: Is the scope of the definition of "Licensed Patent Rights" sufficiently broad?''

''Discussion''

The definition of Licensed Patent Rights currently reads:

“Licensed Patent Rights” means (a) the patents and patent applications listed in the License Data Record, (b) all divisionals, continuations, and foreign counterpart applications claiming priority from any patent or patent application described in (a), (c) those claims of any continuations-in-parts that claim priority exclusively from the patents or patent applications described in (a) and (b); (d) all patents issuing from patent applications included in (a) through (c); and (e) all reissues, reexaminations, renewals, and extensions of any patents included in (a) through (d).

The current definition includes patents and applications that are expressly listed as well as most types of subsequent daughter applications that are related to them by priority.

One criticism of this definition is that may not be broad enough to protect the Licensee from the situation in which the Licensor does not include all necessary patents in the license grant (for example, where the Licensor licenses an improvement patent without licensing a dominant blocking patent). In those situations, a Licensee who fails to conduct sufficient due diligence may think that it has licensed all necessary rights from the Licensor, and may be surprised later if the Licensor seeks to enforce dominant patents. This outcome can be unfair to the extent that it defeats the expectations of the Licensee with the respect to the benefit of its bargain or induces the Licensee to infringe the Licensor's unlicensed dominant patents.

While some courts have addressed this situation (e.g., "TransCore v. Electronic Transaction Consultants Corp.", 563 F.3d 1271 (Fed. Cir. 2009)), under the doctrine of equitable or legal estoppel, the case law does not provide adequate certainty for drafting purposes. Thus, it would be desirable to take a clear position with respect to the draft language.

An earlier draft of this provision also included certain parent applications, to which the listed applications may claim priority. However, some commentators objected to the inclusion of parent applications, on the basis that this would create ambiguity and uncertainty. They pointed out, for example, that the claims of a daughter application are entitled to claim priority based on the specifications of a parent application, but there is no clear method for determining to what extent the claims of the parent application should be licensed based merely on priority. In addition, such a definition, while broader than the current definition, would not entirely address the issue. For example, the dominant patent may not be related by priority.

Thus, commentators have suggested a number of alternatives:

* use language similar to GPL 3.0 ("A contributor's 'essential patent claims' are all patent claims owned or controlled by the contributor, whether already acquired or hereafter acquired, that would be infringed by some manner, permitted by this License, of making, using, or selling its contributor version, but do not include claims that would be infringed only as a consequence of further modification of the contributor version")

Discussion: One difficult of adapting such a definition is that the object of the license in the case of GPL is a software program, which serves as a specification around which the scope of the license can be limited. In the present license, it is a patent or patent application itself which is being licensed, and thus there is no separate specification or software code which serves to limit the scope of the license.

* include all patents "necessary to practice" the licensed invention (an example would be Microsoft's Open Specification Promise, which states in part "'Microsoft Necessary Claims' are those claims of Microsoft-owned or Microsoft-controlled patents that are necessary to implement only the required portions of the Covered Specification that are described in detail and not merely referenced in such Specification. 'Covered Specifications' are listed below.")

Discussion: This type of definition would probably provide the maximum comfort the the Licensee that it has obtained the rights necessary to practice a particular specification. However, it does require that a clear specification be given as part of the license. (But such a specification could come from the licensed patent itself, or from a particular physical embodiment, software code, or standard). Furthermore, it would shift the burden of conducting patent due diligence onto the Licensor, to the extent that it needs to conduct analysis to reassure itself that granting such a broad scope is consistent with its business strategy and legal obligations. Nevertheless, this remains a viable and useful option alternative to address those scenarios where providing certainty to the Licensee is critical (e.g., for adoption and implementation of common industry standards and specifications).

* limit the licensed patent rights only to listed patents (e.g., the Eco-Patent Commons defines the pledged patents as "patents on the Patent List, and no other license...")

Discussion: This is the narrowest and most specific definition. Unlike the current definition, it would not include daughter applications, such as continuations and divisionals. However, this would greatly raise the level of uncertainty for the Licensee, particularly because daughter applications claiming the same subject matter may not yet be published and discoverable, even with due diligence by the Licensee. In the context of the Eco-Patent Commons, which is a free public non-assertion, it may be appropriate to provide such a "quit-claim" type of license, which confers no further assurances. And indeed, this is that situation with the Research Non-Assertion. However, in the context of the Patent License, which in some cases may carry a royalty, we want to provide a little more certainty for the Licensee.

* Some commentators have suggested that we provide two alternative definitions of Licensed Patent Rights, which the Licensor may choose from when making its offer. One definition would be the current definition, accompanied by warning to the Licensee regarding the need to conduct its own due diligence prior to licensing. The second alternative would be some version of the "necessary to practice" type definition, along with the option for the Licensor to supply the Specification that it wishes to license (which could be a specification of a patent).

Discussion: We are currently considering this approach because it provides greater choice and flexibility in any given situation to shift the burden of conducting due diligence, which may vary for the technology, its intended uses, and the intended audience. Having these alternative definitions may also facilitate Licensees and Licensors bargaining over the allocation of risks and uncertainties.

''Other Feedback''

1. Some Commentators suggested that the preamble should clearly that that the Licensor reserves the right to refuse to grant a license to anyone who has been accused of the Licensor's patents or with whom they may be engaged in patent litigation (to prevent potential licensees from willfully infringing and waiting to only take a license after they have been caught).

2. It is suggested that the phrase "under the Licensed Patent Rights" be added as follows:

"Subject to the terms and conditions of this Agreement and the License Data Record, Licensor grants to Licensee a non-exclusive, non-transferable (except as expressly permitted in Section 9) license ''under the Licensed Patent Rights'', in the Territory and during the Term, without a right to sublicense, to make, use, sell, offer for sale, and import Licensed Products and to practice Licensed Processes..."

Discussion: Such a change would be useful to clarify that the Licensed Patent Rights serve as a scope limitation on the license (and not merely a specification for Licensed Products and Licensed Processes).

3. It was suggested that the ability to qualify the scope of the "have made right" should similarly be extended to the "make", "use", "sell", "offer for sale", and "import" rights as well.

Discussion: While this may provide greater flexibility for the Licensor, is this level of complexity useful for this type of license? Would it make the license too difficult for Licensees to interpret? Might this be reserved as a future option to implement if there is demand for it?

4. It was suggested that the Term should be flexible and an option should be permitted to set a definite Term of years (or months) rather than always be for the life of the patent.

Discussion: Again, the relevant question is whether this would introduce unnecessary complexity, whether there is real demand for it, and whether it might cause "patent hold-up" problems for unsophisticated licensees when the Term expires and they are required to renegotiate after having adopted and invested in the technology.

5. It was suggested that the Licensor's right to terminate for defensive purposes should not be limited to when the Licensee initiates patent claims against the Licensor, but also be permitted even when the Licensee tries to assert its patents "defensively" against a Licensor who initiates patent litigation first (i.e, as a counter-claim to a patent suit initiated by the Licensor).

Discussion: We start with the assumption that Licensor who is holding patents for defensive purposes would not be willing to license those patents unless that defensive use was reserved, which is the effect of the current clause. However, in the situation where the Licensor itself initiates an infringement action against the Licensee on unrelated patents, should the Licensee be confronted with the choice of giving up the defensive use of its patents or losing the license that it has bargained for (and possibly facing an injunction on current products)? Since in the latter case, the stakes are much higher for the Licensee, we believe the current definition of defensive use as responding to, rather than initiating, a patent lawsuit is appropriate.

6. It has been suggested that patent marking should be done at the request of the licensor (Section 8), since patent marking by the licensee may not always appropriate or it may have difficulty determining what or how to mark.

7. A comment was made that the preamble should not explicitly recommend the use of the Public License for defensive purposes, because in some cases, it may not be appropriate for some defensive patent strategies.

''Comments on the Research Non-Assertion Pledge''

1. It was suggested that the Research Non-Assertion Pledge should specify that in the event that the patents are transferred or undergo a change of ownership that the Grantor would contractually require the assignee to agree to abide by the terms of the pledge with respect to those patents (which includes the right to terminate the pledge in accordance with its terms). Or alternatively, that the Pledge should be converted to a royalty-free, non-exclusive license.

2. Should 501(c)(6) organizations (business leagues) be included under the Pledge? If so, how do you define non-commercial uses for them?

3. It was recommended that the following modification be made:

“Non-Commercial Research Use” means any internal experimental, research, developmental, or educational use or practice of the Patent Rights '''by or on behalf of a Non-Profit Institution''', other than in exchange for money or other valuable consideration.

This is to clarify further that a Non-Profit Institution cannot use the patents on behalf of third parties who may be for-profit businesses in "loss-leader" situations.

Patent Tools Feedback

2010-06-22T18:47:10Z

Thinh:

See [[Patent Tools Public Discussion]]

'''Model Patent License'''

''Issue: Is the scope of the definition of "Licensed Patent Rights" sufficiently broad?''

''Discussion''

The definition of Licensed Patent Rights currently reads:

“Licensed Patent Rights” means (a) the patents and patent applications listed in the License Data Record, (b) all divisionals, continuations, and foreign counterpart applications claiming priority from any patent or patent application described in (a), (c) those claims of any continuations-in-parts that claim priority exclusively from the patents or patent applications described in (a) and (b); (d) all patents issuing from patent applications included in (a) through (c); and (e) all reissues, reexaminations, renewals, and extensions of any patents included in (a) through (d).

The current definition includes patents and applications that are expressly listed as well as most types of subsequent daughter applications that are related to them by priority.

One criticism of this definition is that may not be broad enough to protect the Licensee from the situation in which the Licensor does not include all necessary patents in the license grant (for example, where the Licensor licenses an improvement patent without licensing a dominant blocking patent). In those situations, a Licensee who fails to conduct sufficient due diligence may think that it has licensed all necessary rights from the Licensor, and may be surprised later if the Licensor seeks to enforce dominant patents. This outcome can be unfair to the extent that it defeats the expectations of the Licensee with the respect to the benefit of its bargain or induces the Licensee to infringe the Licensor's unlicensed dominant patents.

While some courts have addressed this situation (e.g., "TransCore v. Electronic Transaction Consultants Corp.", 563 F.3d 1271 (Fed. Cir. 2009)), under the doctrine of equitable or legal estoppel, the case law does not provide adequate certainty for drafting purposes. Thus, it would be desirable to take a clear position with respect to the draft language.

An earlier draft of this provision also included certain parent applications, to which the listed applications may claim priority. However, some commentators objected to the inclusion of parent applications, on the basis that this would create ambiguity and uncertainty. They pointed out, for example, that the claims of a daughter application are entitled to claim priority based on the specifications of a parent application, but there is no clear method for determining to what extent the claims of the parent application should be licensed based merely on priority. In addition, such a definition, while broader than the current definition, would not entirely address the issue. For example, the dominant patent may not be related by priority.

Thus, commentators have suggested a number of alternatives:

* use language similar to GPL 3.0 ("A contributor's 'essential patent claims' are all patent claims owned or controlled by the contributor, whether already acquired or hereafter acquired, that would be infringed by some manner, permitted by this License, of making, using, or selling its contributor version, but do not include claims that would be infringed only as a consequence of further modification of the contributor version")

Discussion: One difficult of adapting such a definition is that the object of the license in the case of GPL is a software program, which serves as a specification around which the scope of the license can be limited. In the present license, it is a patent or patent application itself which is being licensed, and thus there is no separate specification or software code which serves to limit the scope of the license.

* include all patents "necessary to practice" the licensed invention (an example would be Microsoft's Open Specification Promise, which states in part "'Microsoft Necessary Claims' are those claims of Microsoft-owned or Microsoft-controlled patents that are necessary to implement only the required portions of the Covered Specification that are described in detail and not merely referenced in such Specification. 'Covered Specifications' are listed below.")

Discussion: This type of definition would probably provide the maximum comfort the the Licensee that it has obtained the rights necessary to practice a particular specification. However, it does require that a clear specification be given as part of the license. (But such a specification could come from the licensed patent itself, or from a particular physical embodiment, software code, or standard). Furthermore, it would shift the burden of conducting patent due diligence onto the Licensor, to the extent that it needs to conduct analysis to reassure itself that granting such a broad scope is consistent with its business strategy and legal obligations. Nevertheless, this remains a viable and useful option alternative to address those scenarios where providing certainty to the Licensee is critical (e.g., for adoption and implementation of common industry standards and specifications).

* limit the licensed patent rights only to listed patents (e.g., the Eco-Patent Commons defines the pledged patents as "patents on the Patent List, and no other license...")

Discussion: This is the narrowest and most specific definition. Unlike the current definition, it would not include daughter applications, such as continuations and divisionals. However, this would greatly raise the level of uncertainty for the Licensee, particularly because daughter applications claiming the same subject matter may not yet be published and discoverable, even with due diligence by the Licensee. In the context of the Eco-Patent Commons, which is a free public non-assertion, it may be appropriate to provide such a "quit-claim" type of license, which confers no further assurances. And indeed, this is that situation with the Research Non-Assertion. However, in the context of the Patent License, which in some cases may carry a royalty, we want to provide a little more certainty for the Licensee.

* Some commentators have suggested that we provide two alternative definitions of Licensed Patent Rights, which the Licensor may choose from when making its offer. One definition would be the current definition, accompanied by warning to the Licensee regarding the need to conduct its own due diligence prior to licensing. The second alternative would be some version of the "necessary to practice" type definition, along with the option for the Licensor to supply the Specification that it wishes to license (which could be a specification of a patent).

Discussion: We are currently considering this approach because it provides greater choice and flexibility in any given situation to shift the burden of conducting due diligence, which may vary for the technology, its intended uses, and the intended audience. Having these alternative definitions may also facilitate Licensees and Licensors bargaining over the allocation of risks and uncertainties.

''Other Feedback''

1. Some Commentators suggested that the preamble should clearly that that the Licensor reserves the right to refuse to grant a license to anyone who has been accused of the Licensor's patents or with whom they may be engaged in patent litigation (to prevent potential licensees from willfully infringing and waiting to only take a license after they have been caught).

2. It is suggested that the phrase "under the Licensed Patent Rights" be added as follows:

"Subject to the terms and conditions of this Agreement and the License Data Record, Licensor grants to Licensee a non-exclusive, non-transferable (except as expressly permitted in Section 9) license ''under the Licensed Patent Rights'', in the Territory and during the Term, without a right to sublicense, to make, use, sell, offer for sale, and import Licensed Products and to practice Licensed Processes..."

Discussion: Such a change would be useful to clarify that the Licensed Patent Rights serve as a scope limitation on the license (and not merely a specification for Licensed Products and Licensed Processes).

3. It was suggested that the ability to qualify the scope of the "have made right" should similarly be extended to the "make", "use", "sell", "offer for sale", and "import" rights as well.

Discussion: While this may provide greater flexibility for the Licensor, is this level of complexity useful for this type of license? Would it make the license too difficult for Licensees to interpret? Might this be reserved as a future option to implement if there is demand for it?

4. It was suggested that the Term should be flexible and an option should be permitted to set a definite Term of years (or months) rather than always be for the life of the patent.

Discussion: Again, the relevant question is whether this would introduce unnecessary complexity, whether there is real demand for it, and whether it might cause "patent hold-up" problems for unsophisticated licensees when the Term expires and they are required to renegotiate after having adopted and invested in the technology.

5. It was suggested that the Licensor's right to terminate for defensive purposes should not be limited to when the Licensee initiates patent claims against the Licensor, but also be permitted even when the Licensee tries to assert its patents "defensively" against a Licensor who initiates patent litigation first (i.e, as a counter-claim to a patent suit initiated by the Licensor).

Discussion: We start with the assumption that Licensor who is holding patents for defensive purposes would not be willing to license those patents unless that defensive use was reserved, which is the effect of the current clause. However, in the situation where the Licensor itself initiates an infringement action against the Licensee on unrelated patents, should the Licensee be confronted with the choice of giving up the defensive use of its patents or losing the license that it has bargained for (and possibly facing an injunction on current products)? Since in the latter case, the stakes are much higher for the Licensee, we believe the current definition of defensive use as responding to, rather than initiating, a patent lawsuit is appropriate.

6. It has been suggested that patent marking should be done at the request of the licensor (Section 8), since patent marking by the licensee may not always appropriate or it may have difficulty determining what or how to mark.

7. A comment was made that the preamble should not explicitly recommend the use of the Public License for defensive purposes, because in some cases, it may not be appropriate for some defensive patent strategies.

''Comments on the Research Non-Assertion Pledge''

1. It was suggested that the Research Non-Assertion Pledge should specify that in the event that the patents are transferred or undergo a change of ownership that the Grantor would contractually require the assignee to agree to abide by the terms of the pledge with respect to those patents (which includes the right to terminate the pledge in accordance with its terms). Or alternatively, that the Pledge should be converted to a royalty-free, non-exclusive license.

Patent Tools Feedback

2010-06-22T18:20:25Z

Thinh: Summary of Public Comments

See [[Patent Tools Public Discussion]]

'''Model Patent License'''

''Issue: Is the scope of the definition of "Licensed Patent Rights" sufficiently broad?''

''Discussion''

The definition of Licensed Patent Rights currently reads:

“Licensed Patent Rights” means (a) the patents and patent applications listed in the License Data Record, (b) all divisionals, continuations, and foreign counterpart applications claiming priority from any patent or patent application described in (a), (c) those claims of any continuations-in-parts that claim priority exclusively from the patents or patent applications described in (a) and (b); (d) all patents issuing from patent applications included in (a) through (c); and (e) all reissues, reexaminations, renewals, and extensions of any patents included in (a) through (d).

The current definition includes patents and applications that are expressly listed as well as most types of subsequent daughter applications that are related to them by priority.

One criticism of this definition is that may not be broad enough to protect the Licensee from the situation in which the Licensor does not include all necessary patents in the license grant (for example, where the Licensor licenses an improvement patent without licensing a dominant blocking patent). In those situations, a Licensee who fails to conduct sufficient due diligence may think that it has licensed all necessary rights from the Licensor, and may be surprised later if the Licensor seeks to enforce dominant patents. This outcome can be unfair to the extent that it defeats the expectations of the Licensee with the respect to the benefit of its bargain or induces the Licensee to infringe the Licensor's unlicensed dominant patents.

While some courts have addressed this situation (e.g., "TransCore v. Electronic Transaction Consultants Corp.", 563 F.3d 1271 (Fed. Cir. 2009)), under the doctrine of equitable or legal estoppel, the case law does not provide adequate certainty for drafting purposes. Thus, it would be desirable to take a clear position with respect to the draft language.

An earlier draft of this provision also included certain parent applications, to which the listed applications may claim priority. However, some commentators objected to the inclusion of parent applications, on the basis that this would create ambiguity and uncertainty. They pointed out, for example, that the claims of a daughter application are entitled to claim priority based on the specifications of a parent application, but there is no clear method for determining to what extent the claims of the parent application should be licensed based merely on priority. In addition, such a definition, while broader than the current definition, would not entirely address the issue. For example, the dominant patent may not be related by priority.

Thus, commentators have suggested a number of alternatives:

* use language similar to GPL 3.0 ("A contributor's 'essential patent claims' are all patent claims owned or controlled by the contributor, whether already acquired or hereafter acquired, that would be infringed by some manner, permitted by this License, of making, using, or selling its contributor version, but do not include claims that would be infringed only as a consequence of further modification of the contributor version")

Discussion: One difficult of adapting such a definition is that the object of the license in the case of GPL is a software program, which serves as a specification around which the scope of the license can be limited. In the present license, it is a patent or patent application itself which is being licensed, and thus there is no separate specification or software code which serves to limit the scope of the license.

* include all patents "necessary to practice" the licensed invention (an example would be Microsoft's Open Specification Promise, which states in part "'Microsoft Necessary Claims' are those claims of Microsoft-owned or Microsoft-controlled patents that are necessary to implement only the required portions of the Covered Specification that are described in detail and not merely referenced in such Specification. 'Covered Specifications' are listed below.")

Discussion: This type of definition would probably provide the maximum comfort the the Licensee that it has obtained the rights necessary to practice a particular specification. However, it does require that a clear specification be given as part of the license. (But such a specification could come from the licensed patent itself, or from a particular physical embodiment, software code, or standard). Furthermore, it would shift the burden of conducting patent due diligence onto the Licensor, to the extent that it needs to conduct analysis to reassure itself that granting such a broad scope is consistent with its business strategy and legal obligations. Nevertheless, this remains a viable and useful option alternative to address those scenarios where providing certainty to the Licensee is critical (e.g., for adoption and implementation of common industry standards and specifications).

* limit the licensed patent rights only to listed patents (e.g., the Eco-Patent Commons defines the pledged patents as "patents on the Patent List, and no other license...")

Discussion: This is the narrowest and most specific definition. Unlike the current definition, it would not include daughter applications, such as continuations and divisionals. However, this would greatly raise the level of uncertainty for the Licensee, particularly because daughter applications claiming the same subject matter may not yet be published and discoverable, even with due diligence by the Licensee. In the context of the Eco-Patent Commons, which is a free public non-assertion, it may be appropriate to provide such a "quit-claim" type of license, which confers no further assurances. And indeed, this is that situation with the Research Non-Assertion. However, in the context of the Patent License, which in some cases may carry a royalty, we want to provide a little more certainty for the Licensee.

* Some commentators have suggested that we provide two alternative definitions of Licensed Patent Rights, which the Licensor may choose from when making its offer. One definition would be the current definition, accompanied by warning to the Licensee regarding the need to conduct its own due diligence prior to licensing. The second alternative would be some version of the "necessary to practice" type definition, along with the option for the Licensor to supply the Specification that it wishes to license (which could be a specification of a patent).

Discussion: We are currently considering this approach because it provides greater choice and flexibility in any given situation to shift the burden of conducting due diligence, which may vary for the technology, its intended uses, and the intended audience. Having these alternative definitions may also facilitate Licensees and Licensors bargaining over the allocation of risks and uncertainties.

''Other Feedback''

1. Some Commentators suggested that the preamble should clearly that that the Licensor reserves the right to refuse to grant a license to anyone who has been accused of the Licensor's patents or with whom they may be engaged in patent litigation (to prevent potential licensees from willfully infringing and waiting to only take a license after they have been caught).

2. It is suggested that the phrase "under the Licensed Patent Rights" be added as follows:

"Subject to the terms and conditions of this Agreement and the License Data Record, Licensor grants to Licensee a non-exclusive, non-transferable (except as expressly permitted in Section 9) license ''under the Licensed Patent Rights'', in the Territory and during the Term, without a right to sublicense, to make, use, sell, offer for sale, and import Licensed Products and to practice Licensed Processes..."

Discussion: Such a change would be useful to clarify that the Licensed Patent Rights serve as a scope limitation on the license (and not merely a specification for Licensed Products and Licensed Processes).

3. It was suggested that the ability to qualify the scope of the "have made right" should similarly be extended to the "make", "use", "sell", "offer for sale", and "import" rights as well.

Discussion: While this may provide greater flexibility for the Licensor, is this level of complexity useful for this type of license? Would it make the license too difficult for Licensees to interpret? Might this be reserved as a future option to implement if there is demand for it?

4. It was suggested that the Term should be flexible and an option should be permitted to set a definite Term of years (or months) rather than always be for the life of the patent.

Discussion: Again, the relevant question is whether this would introduce unnecessary complexity, whether there is real demand for it, and whether it might cause "patent hold-up" problems for unsophisticated licensees when the Term expires and they are required to renegotiate after having adopted and invested in the technology.

5. It was suggested that the Licensor's right to terminate for defensive purposes should not be limited to when the Licensee initiates patent claims against the Licensor, but also be permitted even when the Licensee tries to assert its patents "defensively" against a Licensor who initiates patent litigation first (i.e, as a counter-claim to a patent suit initiated by the Licensor).

Discussion: We start with the assumption that Licensor who is holding patents for defensive purposes would not be willing to license those patents unless that defensive use was reserved, which is the effect of the current clause. However, in the situation where the Licensor itself initiates an infringement action against the Licensee on unrelated patents, should the Licensee be confronted with the choice of giving up the defensive use of its patents or losing the license that it has bargained for (and possibly facing an injunction on current products)? Since in the latter case, the stakes are much higher for the Licensee, we believe the current definition of defensive use as responding to, rather than initiating, a patent lawsuit is appropriate.

6. It has been suggested that the determination of when patent marking is appropriate should be made by the licensor (Section 8), since patent marking by the licensee is not always appropriate.