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Out Licensing Agreement Template for Indonesia

A comprehensive legal agreement governed by Indonesian law that enables the owner of intellectual property (licensor) to grant specific rights to another party (licensee) for the use, manufacture, distribution, or commercialization of their intellectual property within defined parameters. This agreement must comply with Indonesian IP laws, including Law No. 13 of 2016 on Patents, Law No. 20 of 2016 on Trademarks, and Law No. 28 of 2014 on Copyright, while addressing specific requirements for technology transfer, regulatory compliance, and mandatory use of Indonesian language in agreements involving Indonesian parties.

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What is a Out Licensing Agreement?

An Out Licensing Agreement under Indonesian law is essential when a business wants to monetize its intellectual property by granting rights to another party while maintaining ownership. This document is particularly relevant for both domestic and cross-border licensing transactions in Indonesia, requiring careful consideration of local regulations including mandatory language requirements, technology transfer regulations, and investment laws. The agreement typically includes detailed provisions on license scope, territory restrictions, royalty structures, quality control measures, and compliance with Indonesian regulatory requirements. It's commonly used in various scenarios from technology licensing to trademark franchising, and must address specific Indonesian legal requirements such as those under Law No. 13 of 2016 on Patents and related IP regulations.

What sections should be included in a Out Licensing Agreement?

1. Parties: Identification of licensor and licensee, including registration details as required by Indonesian law

2. Background: Context of the agreement, ownership of intellectual property, and purpose of the licensing arrangement

3. Definitions: Comprehensive definitions including Licensed IP, Territory, Field of Use, and other key terms

4. Grant of License: Scope of license, territory, exclusivity/non-exclusivity, and field of use restrictions

5. Term and Termination: Duration of agreement, renewal terms, and termination conditions

6. Financial Terms: License fees, royalties, payment terms, and currency considerations

7. Obligations of the Parties: Specific duties of licensor and licensee, including quality control and reporting

8. IP Protection and Enforcement: Maintenance of IP rights, handling of infringement, and prosecution responsibilities

9. Representations and Warranties: Standard warranties regarding IP ownership, right to license, and non-infringement

10. Confidentiality: Protection of confidential information and trade secrets

11. Indemnification: Indemnification obligations and liability limitations

12. Governing Law and Dispute Resolution: Choice of Indonesian law and dispute resolution mechanisms

13. General Provisions: Standard boilerplate clauses including notices, assignment, and amendment procedures

What sections are optional to include in a Out Licensing Agreement?

1. Technology Transfer: Include when the license involves significant technical knowledge transfer or training

2. Quality Control: Required for trademark licenses or when product quality standards are crucial

3. Regulatory Compliance: Include when licensed products/services require specific regulatory approvals

4. Export Control: Include for cross-border licenses involving controlled technology or products

5. Improvements and New Developments: Include when parties anticipate development of improvements to licensed IP

6. Supply Chain Requirements: Include when license involves manufacturing or distribution arrangements

7. Marketing and Promotion: Include for licenses requiring specific marketing commitments or restrictions

8. Anti-Corruption Compliance: Include for international licensing deals to ensure FCPA/local anti-corruption compliance

What schedules should be included in a Out Licensing Agreement?

1. Schedule 1 - Licensed IP: Detailed description of all intellectual property being licensed

2. Schedule 2 - Territory and Field of Use: Specific definition of geographic territory and permitted applications

3. Schedule 3 - Financial Terms: Detailed royalty calculations, minimum payments, and payment procedures

4. Schedule 4 - Technical Specifications: Technical details of licensed technology or products

5. Schedule 5 - Quality Control Standards: Quality requirements and testing procedures

6. Schedule 6 - Reporting Requirements: Templates and procedures for required reports

7. Appendix A - Form of Royalty Report: Standard template for royalty reporting

8. Appendix B - Technical Documentation: Supporting technical documents and specifications

9. Appendix C - Trademark Usage Guidelines: Guidelines for proper use of licensed trademarks if applicable

Authors

Alex Denne

Head of Growth (Open Source Law) @ tiktok成人版 | 3 x UCL-Certified in Contract Law & Drafting | 4+ Years Managing 1M+ Legal Documents

Jurisdiction

Indonesia

Document Type

License Agreement

Sector

IP

Cost

Free to use

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