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Many examples of licenses and agreements available
Actual form of clauses not important, content is
Clause by clause review doesn’t deal with language but the concepts
Business Terms - Use of a term sheet or Memorandum of Understanding
Reviewing the first draft Associated Documents
Not legally binding Statement of
background and intentions
Good place to identify problems such as conflicts of interest
What should be defined; avoided Capitalize defined terms External references to other material Consistency among agreements Reference appendices for variable
information Watch for ‘cut and paste’ definitions
Exclusive versus non-exclusive Transferable versus non-transferable Field of use / Territory Right to sublicense Use of Technology Grant of License to an affiliated
company Cross-licensing Improvements
Reservation of certain rights by the Licensor
Non-commercial purposes
Right to Sublicense Control over Sublicensing Approvals: consent versus notice, timelines Flow through provisions: indemnity, royalties What happens in the event of default of the
head licence (comfort letters) End licenses (often attached as an appendix) Obligation to submit copies of licences
Fully paid up Licenses Royalties based upon gross,
net or product sales Royalty “reach through” on sublicences Minimum royalties (creditable?) Milestone payments Interest on over-due amounts Stacking provisions Abeyance of payment pending results of
infringement action
Management may pass from licensor to licensee over time
Issues of control, report, consent and abandonment
Who pays? Who is the assignee? Obligation to mark or label licensed
products
Use and scope of an indemnity Limitation on amount of claim
Who wants them Who should give them What does a Licensor warrant?
› Different types of licensors› What can you actually control?
Ownership; non-infringement Disclaim technology “fitness for
purpose”
Permitted circumstances of disclosure What constitutes “confidential
information” Importance of confidentiality for trade
secrets or know-how
Report of activities with respect to exploitation of the technology
Frequency Right to audit Accounting
standards
Term of the license Events of termination
› Automatic (insolvency)› Curable breaches
Termination process Consequences to sub-licensees of
terminating the head licence
Public liability or product liability insurance
Absolute need for both in most circumstances
Indemnity vs. Insurance
Proper law of the contract Attornment clause
