This Patent License agreement template is designed for use under German law when a patent owner (licensor) wishes to grant rights to use their patented technology to another party (licensee). The document is essential for technology transfer transactions in Germany and must comply with the German Patent Act (Patentgesetz), German Civil Code (BGB), and EU competition laws. It is particularly important when commercializing intellectual property in the German market or when either party is based in Germany. The agreement includes detailed provisions for license scope, territory, royalty calculations, quality control, and technical specifications, all structured to meet German legal requirements. It's commonly used in various scenarios from simple single-patent licenses to complex multi-patent portfolio licenses, and can be customized for exclusive or non-exclusive rights.
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1. Parties: Identification of the licensor and licensee with full legal names and addresses
2. Background: Context of the agreement, including patent ownership confirmation and parties' intentions
3. Definitions: Definitions of key terms used throughout the agreement, including technical terms and specific German legal concepts
4. Grant of License: Detailed specification of licensed rights, including scope, territory, and type (exclusive/non-exclusive)
5. License Fees and Payment Terms: Royalty rates, payment schedules, calculation methods, and reporting requirements
6. Maintenance and Prosecution: Obligations regarding patent maintenance, prosecution responsibilities, and cost allocation
7. Improvements: Treatment of improvements to the licensed patent, including ownership and license rights
8. Representations and Warranties: Standard warranties regarding patent ownership, right to license, and non-infringement
9. Confidentiality: Protection of confidential information exchanged during the license relationship
10. Term and Termination: Duration of the agreement, renewal terms, and termination provisions
11. Post-Termination Obligations: Obligations surviving termination and wind-down procedures
12. Governing Law and Jurisdiction: Specification of German law application and jurisdiction for disputes
13. Miscellaneous: Standard boilerplate provisions including severability, entire agreement, and amendments
1. Sub-licensing Rights: Include when licensee is permitted to grant sub-licenses to third parties
2. Quality Control: Include for licenses involving manufacturing of products using the patent
3. Field of Use Restrictions: Include when the license is limited to specific applications or industries
4. Export Control: Include when the licensed technology is subject to export control regulations
5. Competition Law Compliance: Include detailed provisions when the license might raise competition law concerns
6. Patent Marking: Include requirements for marking products with patent numbers when physical products are involved
7. Technology Transfer: Include when technical assistance or know-how transfer is part of the license
8. Employee Invention Rights: Include when the licensed patents involve employee inventions under German law
1. Schedule 1: Licensed Patents: Detailed list of licensed patents including registration numbers and jurisdictions
2. Schedule 2: Technical Specifications: Technical details and specifications of the licensed technology
3. Schedule 3: Royalty Calculations: Detailed methodology for calculating royalties and examples
4. Schedule 4: Reporting Templates: Templates for required periodic reports and royalty statements
5. Schedule 5: Quality Standards: Technical standards and quality requirements for licensed products
6. Appendix A: Patent Assignment Documentation: Copies of relevant patent assignments and chain of title documents
7. Appendix B: Prior Agreements: Referenced agreements affecting the licensed patents
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