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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