Está en la página 1de 15

Exclusive Patent License Agreement

This EXCLUSIVE PATENT LICENSE AGREEMENT (Agreement) with an Effective Date of______________, is made by and between _____________________ (Licensor), a Corporation having its principal place of business at ___________________________,and ___________________________ (Licensee), a ____________________ Corporation having its principal place of business at _____________________
______________

WHEREAS, Licensor owns certain Patents and/or other Intellectual Property Rights in ________________________________ and WHEREAS, Licensee is __________________________ WHEREAS, Licensor desires to grant and Licensee desires to obtain an exclusive license to make, use, sell, offer for sale, import, export, and otherwise practice and utilize the invention, process, design, plant, or substance claimed in (Use) the Patents and Use the Patents and use other Intellectual Property Rights to Manufacture/Sell the Licensed Products; NOW, THEREFORE, in consideration of the mutual promises and covenants set forth in this Agreement, Licensor and Licensee, each intending to be legally bound hereby, agree as follows: 1. Definitions. Terms with initial capital letters have the meaning set forth in the Section that defines them, whether used in the plural or singular, in any tense or part of speech, and regardless of gender. The term including means including, but not limited to, or includes and/or. 1.1. Affiliate. The term Affiliate means a Person who controls, is controlled by, or is under common control, directly or indirectly with another Person. Persons are considered Affiliates if one of them has the power to direct the affairs or day-to-day operations of the other or if one of them, directly or indirectly, owns or has the power to vote a majority of voting interests of the other, to appoint or cause to be elected a majority of the board of directors, managers, or other controlling body of the Person, or has a veto or power to reject or approve the resolutions or other directives from that governing body. 1.2.
Field. The term Field means __________________________________

1.3. Licensed Products. The term Licensed Products means products whose Manufacture/Sale would infringe or violate the Patents or other Intellectual Property Rights; 1.4. Patents. The term Patents means the United States Letters Patent number and any divisions, continuations, substitute applications, continuations-in-part, [improvements,] reissues, reexaminations, or extensions [and any corresponding foreign applications and patents].
_______,

1.5. Person: The term Person means any natural person, court, agency, governmental body, corporation, partnership, proprietorship, or any other legal entity. 1.6.
Term: The Term of this Agreement means the period that begins on the Effective Date

and continues for so long as Licensor owns or controls unexpired and not invalidated rights in any of the Patents, unless earlier subjected to cancellation, termination, or rescission. 1.7.
Territory: means the fifty United States of America.

1.8. Intellectual Property Rights. The term Intellectual Property Rights means rights under the laws of patents, copyrights, mask works, trade secrets, trade dress, trade names, databases, ideas, trademarks, publicity rights, as well as any right created by a law that gives a person, independently of contract, a right to control or preclude another Persons use or access on the basis of the rights holders interest. 2. License Grant. Licensor hereby grants to Licensee an exclusive license to Use the Patents and other Intellectual Property Rights and to Use the Patents and other Intellectual Property Rights to Manufacture/Sell the Licensed Products within the Territory within the Field during the Term of this Agreement. No further or other rights are granted or implied; Licensor reserves all rights and licenses not expressly granted in this Agreement. 3. Licensor Disclosure. Licensor agrees to disclose to Licensee such information that Licensor possesses on the Effective Date and that it reasonably believes, or that Licensee reasonably requests, that relates to the Use of the Patents or Intellectual Property Rights to Manufacture/Sell the Licensed Products. Such disclosures are subject to the duties related to Confidential Information and are otherwise subject to Licensors Intellectual Property Rights. 4. Ownership of Intellectual Property Rights.

4.1. Ownership. The Patents and Intellectual Property Rights (including any title, claim, and interest) except as licensed in this Agreement shall, as between Licensor and Licensee, be the property of Licensor. Any other intellectual property rights in the Licensed Products shall, as between Licensor and Licensee, belong to Licensee. 4.2. Improvements. Licensee shall notify Licensor of any innovations, inventions, developments, modifications, or other improvements which reference or are based on one or more claims of the Patents or on the Intellectual Property Rights that Licensee discovers or makes. Any innovations, inventions, developments, modifications, or other improvements to the Patents or the Intellectual Property Rights created by either party shall belong to Licensor, and Licensee will assign ownership of any Intellectual Property Rights it may have in such to Licensor without payment of royalties or further consideration. However, Licensee shall have a license to Use such under the terms and conditions of this Agreement. 4.3. Cooperation. Each party agrees to cooperate, execute any documents, and perform any and all acts reasonably necessary and customary to permit a party to obtain, maintain, or enforce its Intellectual Property Rights as may be permitted under the provisions of any applicable law or agreement, including registrations or Claims that contain the other partys name or the name of Persons associated with the other party. 5. Patent Marking. Licensee shall permanently and legibly mark each Licensed Product or the

packaging of each Licensed Product with the number(s) of the Patents in a manner compliant with applicable law and that is reasonably acceptable to Licensor. 6. Underwriters Laboratories. Licensee, at its sole cost, shall obtain any Underwriters Laboratories (or other authorization) and apply the UL (or other marking) required for the Manufacture/Sale of the Licensed Products. 7. Compliance with Laws. Licensee shall Use the Patents and Intellectual Property Rights and Manufacture/Sell the Licensed Products in compliance with all applicable laws, and at its sole cost, obtain any permits, licenses, inspections, file any applications or reports, and pay any taxes, fees, charges, interest, penalties, governmental assessments, or other costs associated with the Use of the Patents or Intellectual Property Rights, Manufacture/Sale of the Licensed Products, or the transactions or other matters arising out of or related to this Agreement. Licensee shall Indemnify Licensor and its Indemnified Persons against any third party claims related to violations of this Section. 8. Efforts to Exploit Patent. Licensee shall use commercially reasonable efforts to develop, design, create, manufacture (Manufacture), market, import, export, sell, offer for sale, and distribute (Sell) (collectively, Manufacture/Sell) the Licensed Products. Thus, throughout the term of this Agreement, Licensee shall have an effective, ongoing, and active: research, development, manufacturing, marketing, and sales program directed to Manufacture/Sell the Licensed Products. 9. Royalties.

9.1. Payment. Royalties shall be paid in accordance with the Royalty Schedule (Attachment A) and payable within thirty (30) days after the end of [each semi-annual period, one that ends on the last day of June for the previous six month period, and a period that ends on the last day of December for the previous six month period.][the applicable calendar month]. Royalties paid are not refundable due a subsequent finding of invalidity of any Patent or Intellectual Property Right. 9.2. Royalty Report. Each payment sum shall be accompanied by a written report setting forth in reasonable detail: (1) the number of units of the Licensed Products Manufactured, the number Sold, and the number returned or destroyed; (2) each applicable element of the Net Selling Price; and (3) the basis of calculation of the royalties. 9.3. Interest. In addition to other remedies available to Licensor, all royalties which are overdue shall bear an annual interest at a rate equal to the lesser of [one and one-half percent (I 1/2%) per month] [four per cent (4%) above the prime rate published in the Wall Street Journal (or another national newspaper if the Wall Street Journal does not provide such information)], or the highest rate permitted by applicable law, calculated each ~ day from the date such royalty was overdue and assessed on the balance then due. 9.4. Net Selling Price. Net Selling Price shall mean the [gross consideration at which Licensee invoices the Sale of] [gross consideration received by Licensee from] the Sales of the Licensed Products to customers who are not affiliates of Licensee, minus the value of any value-added

features present on the product which are not covered by Use of the Patents or Intellectual Property Rights, less any finance or interest charges, delivery and shipping charges, taxes, duties, or governmental fees of any kind (including tariffs), returns, and any and all credits, discounts, and allowances. [Sales commissions [bad debts and reserves,] and other selling expenses not set forth above shall not be deducted from the gross [selling price] [revenue] in calculating the Net Selling Price.] The gross [selling price] [revenue] of products with value-added features will be the gross [selling price] [revenue] of the equivalent product that does not have the value-added features. 10. Records and Audits. Licensee shall maintain complete and accurate books and records from which the information required in the periodic reports and from which the payments due hereunder can be determined, as well as the accounting practices used to produce such books and records. Such books and records shall be kept for a period of no less than six (6) years and shall be available for inspection by Licensor during the normal business day upon ten (10) business days written Notice. [Licensor shall have the right to have Licensees books and records audited only by an accounting firm or representative of its selection reasonably acceptable to Licensee.]. [Any audit shall not be more frequent than annually]. Books and records shall be deemed to be Confidential Information.] Licensee shall pay any underpayments, plus interest from the date the royalty should have been paid. Licensor shall pay for the cost of such audit, however, in the event that such an audit determines that Licensee underpaid the amount of royalties due Licensor by more than five per cent (5%), the Licensee shall also pay the costs of the audit. 11. Manufacturing Sublicense. Licensee shall retain the right, subject to written reasonable objection from Licensor, to designate any sub-manufacturer(s) of its choosing and to sub-license the Patents or Intellectual Property Rights to that sub-manufacturer for the sole purpose of Manufacturing the Licensed Products (or portions of the Licensed Products for use by Licensee in finishing the Licensed Product) solely for Licensee, provided the Licensee obtains from each such sub-manufacturer an agreement to abide by the terms of this Agreement, including a written confidentiality agreement that obligates the sub-manufacturer to protect information deemed to be Confidential Information under this Agreement to at least the requirements contained in this Agreement. Other than the foregoing, without the prior written approval of Licensor, Licensee shall have no right to sublicense the Use of the Patents, any Intellectual Property Rights, or the Manufacture/Sale of the Licensed Products to any third Person. 12. No Contest of Rights. At no time during or after the term of this Agreement shall Licensee challenge or contest the validity or enforceability of any Patents or Intellectual Property Right, or permit or cause such to be done, or aid a third Person in its challenge or contest. 13. Intellectual Property Rights Suits.

13.1. Suits Against Third Persons. If Licensee becomes aware of any claim of infringement or violation of any Patents or Intellectual Property Rights by a third Person, Licensee shall notify Licensor of the facts known to it regarding such claim (unless Licensor is already aware of such claim). [The Licensor shall have the sole right to bring a Claim against a third Person for any alleged past or future infringement or violation of the Patents or other Intellectual Property Rights.] [Licensor shall have ninety (90) days to make a determination whether to file a Claim against such third person. If, in its discretion, Licensor either elects not to pursue acclaim or determines that no

infringement or violation exists, then Licensee shall have the option, at its sole expense, to pursue acclaim for infringement with respect to such third Person; in which case the Licensee shall retain any monetary recovery from such Claim and pay or perform any award granted the third Person.]. Licensor may but shall not have any obligation under this Agreement or otherwise to institute any Claim against third Person for past and future infringement or violation of any Patents or Intellectual Property Rights or to defend any Claim brought by a third Person which challenges or concerns the validity of any Patents or Intellectual Property Rights, and it may handle, prosecute, settle, or dismiss such Claim as its sees fit in its sole discretion. Licensor may request Licensees reasonably cooperation in any proceeding to defend or prosecute its Intellectual Property Rights, including but not limited to suing in Licensees name, and Licensor shall reimburse Licensee for its reasonable out-of-pocket expenses in connection with any such requested assistance. Licensor shall bear the expenses and retain any award or other legal or equitable benefit from such claim. 14. Licensor IP Indemnification. Licensor shall indemnify, hold harmless, and defend (Indemnify) Licensee, its Affiliates and their respective authorized agents, [licensees] employees, officers, contractors, and directors (collectively Indemnified Persons), against all claims, proceedings, suits, and threats of these (Claims) and resulting damages, losses, liabilities, costs, third Persons reasonable attorneys fees, and expenses (Losses), which Licensee or an Indemnified Person becomes obligated to pay a third Person, by reason of any lien or encumbrance on the Patents or Intellectual Property Rights affecting Licensees ability to Use the Patents use the Intellectual Property Rights, or Manufacture/Sell the Licensed Products, as permitted under this Agreement. [Licensor does not warrant or Indemnify Licensee or any other Person against any Claim by a third party that the Patents are invalid, or that the Patents or the Licensed Products violate or infringe any third Persons Intellectual Property Rights.] In the event all the Patents are declared invalid, or a party is permanently enjoined from Use of the Patents, use of the Intellectual Property Rights, or Manufacture/Sale of the Licensed Products because of an infringement or violation of any Intellectual Property Rights, either party may terminate this Agreement. [____EXCEPTIONS_____ violation of any third party Intellectual Property Rights; buyers, Sales agents.]
,

14.1. Alternative Remedies. In the event that any Patent or Intellectual Property Right or any portion thereof, or the exercise of any Licensee rights infringes/violates or is believed by Licensor to infringe/violate the Patent or Intellectual Property Right of any third Person, Licensor shall have the option, at its expense: (a) to obtain for Licensee a license to continue exercising its rights under this Agreement; (b) to take other action to render the Patents or Intellectual Property Rights noninfringing or non-violative; or (c) to terminate this Agreement immediately upon notice to Licensee. 14.2. Sole Indemnification Obligation. The foregoing states the entire Indemnification obligation and liability, and the exclusive remedy available to Licensee and any and all other Person in any and all events of any infringement or violation of the Patents or Intellectual Property Rights of any third Person by the Patents, the Intellectual Property Rights or by their Use or use, or by the Manufacture/Sale of the Licensed Products. 14.3. Licensee Indemnification. Licensee shall Indemnify Licensor and its Indemnified Persons against all Claims and Losses, which Licensor or an Indemnified Person becomes obligated to pay

a third Person, arising out of or related to this Agreement, including violations or infringements of a third Persons Intellectual Property Rights (except to the extent Licensor is Indemnifying Licensee or its Indemnified Persons hereunder), product liability, false advertising, anti-trust, unfair competition, product warranty (including express or implied warranties, or the implied warranties of merchantability and fitness for a particular purpose), or any Claim against Licensor or an Indemnified Person or Loss involving personal injury (including death), damage to property, or violation of any laws or regulations by Licensee or its Indemnified Persons (as well as their suppliers and customers). 15. Mutual Indemnification. Each party shall Indemnify the other party and its Indemnified Persons against all Claims and Losses, which the other party or its Indemnified Persons become obligated to pay a third party, by reason of any breach of its representations and warranties in this Agreement. 16. Indemnification Procedures. The right to be Indemnified is contingent upon: 16.1.1. (a) the Person seeking indemnification promptly, and within no more than 10 calendar days of its receipt of notice of a Claim (but in no event in a time frame that prejudices the Indemnifying partys ability to defend) Notify the Indemnifying party; 16.1.2. (b) the Person seeking to be Indemnified cooperates fully with the indemnifying party in the defense/prosecution/settlement thereof (such cooperation does not require and is without waiver by a Persons attorney/client, work product, or other privilege); 16.1.3. (c) the Indemnifying party has sole control of the defense and all related settlement negotiations. 17. Confidentiality.

17.1. Definition; Marking. Written, electronic, or graphic information conspicuously marked, or oral information otherwise designated, as PROPRIETARY or CONFIDENTIAL, provided by, through, or on behalf of a party (including information of a third Person to whom the Disclosing Party owes a duty of confidentiality), shall be deemed confidential information hereunder, unless subject to the exceptions in the next sub-section (Confidential Information). Information revealed electronically or orally becomes subject to protection when related to previously marked or designated Confidential Information. Each copy made of Confidential Information, including its storage media, shall be marked CONFIDENTIAL; CONFIDENTIAL or PROPRIETARY markings which appear on the original shall be retained. 17.2. Duty. Each party shall protect Confidential Information from the other as strictly confidential and shall exercise the same degree of care in the protection of the Confidential Information as the recipient exercises with respect to its own similar confidential information and trade secrets, but in no event shall it be less than a reasonable degree of care given the nature of the Confidential Information. Except as provided in this Agreement, no Intellectual Property Rights

associated with the Confidential Information are granted or transferred by delivery or, or access to, the Confidential Information. The obligation of non-disclosure shall survive any termination, cancellation or rescission of this Agreement for a period of three (3) years from the date of disclosure. Recipient shall neither disclose Confidential Information to any Person (except its Affiliates and its and their respective employees, directors, officers, consultants, and agents, collectively Authorized Personnel) with a need to know who are involved in fulfilling its obligations under this Agreement), nor use the Confidential Information for any purpose other than fulfilling the receiving partys obligations under this Agreement. Access to or disclosure of Confidential Information by recipient shall further be limited to those Authorized Personnel covered by a then effective legal obligation or agreement with recipient that prohibits the disclosure or unauthorized use of information deemed confidential by recipient. The existence of such an agreement with an employee shall not operate to relieve the recipient from liability for acts of such employee or partner that result in a breach of this Confidentiality Agreement; the receiving party shall be liable for the acts or omissions of its Authorized Personnel as if it did the act or omission. 17.3. Exceptions. Confidential Information shall not include: (1) information which is then already in the possession of the party while not under a duty of non-disclosure; (2) information which is generally known or revealed to the public or within the applicable industry; (3) information which is revealed to the party by a third Person--unless the third Person is under a duty of non-disclosure; or (4) information which that party develops independently of the disclosure. 17.4. Compliance with Orders of Governmental Authorities. Where it is required by the applicable law (including a valid order or process) of a Governmental Authority that a Person must give access to Confidential Information to Un-Authorized Personnel, the receiving Person shall Notify the Disclosing Party of the requirement within 5 days of its notice of the requirement (but in no event in a time frame that prejudices the rights of the Disclosing Party) and shall cooperate with the Disclosing Party or the owner in securing an opportunity to intervene and to shield or protect the disclosure or use of the Confidential Information; any disclosure shall be the minimum required by the applicable legal process. 18. Manufacturing Quality. Licensee agrees to Manufacture the Licensed Product with a quality control equivalent to the higher of the quality control for similar products that Licensor Manufactures, or for products that Licensee Manufactures that are similar to the Licensed Products. Upon the reasonable request of Licensor, Licensee will provide Licensor with representative samples of the Licensed Products it Manufactures under this Agreement. 19. Licensor Warranties. Licensor represents and warrants that as of the date of this Agreement: 19.1.1. Its title to the Patents and the Intellectual Property Rights are free and clear of any liens or encumbrances; 19.1.2. neither the execution nor its performance of its obligations under this Agreement shall be a breach of any other agreement or obligation, nor requires any consent, application, or grant of authority from any person or entity;

19.1.3. neither the execution nor the performance of its obligations under this Agreement will be impaired by other agreements or obligations of Licensor 19.1.4. Licensor knows of no litigation that could materially and adversely affect its ability to execute or performance its obligations under this Agreement; and 19.1.5. as of the Effective Date, Licensor is not aware of any patent that would be infringed by the Use of the Patents; 20. Licensee Warranties. Licensee represents and warrants that: 20.1.1. it possesses all corporate or other authorities and any licenses or permits needed to fulfill its obligations under this Agreement; 20.1.2. neither the execution nor its performance of its obligations under this Agreement shall be a breach of any other agreement or obligation, nor requires any consent, application, or grant of authority from any person or entity; 20.1.3. the execution nor its performance of its obligations under this Agreement will not be impaired by other agreements or obligations of Licensee 20.1.4. Licensee knows of no litigation that could materially and adversely affect its ability to execute or performance its obligations under this Agreement; 20.1.5. as of the Effective Date, Licensor is not aware of any patent that would be infringed by the Use of the Patents; and 20.1.6. it will maintain in force during the term of this Agreement a policy or policies insuring against product liability for the Licensed Products with such limits as are commercially reasonable. Such policy or policies shall name Licensor as an additional insured. In the event of cancellation of such policy or policies, Licensee will promptly give notice to Licensor of such cancellation, and in no event later than thirty (30) days after such cancellation. 21. Cancellation.

21.1. A party may cancel this Agreement, upon at least 30 days Notice with an opportunity to cure within the stated period, if the other party has failed to perform any material obligation under this Agreement. 21.2. A party may elect to immediately cancel this Agreement upon Notice, if a petition in bankruptcy has been filed by or against the other party (and such involuntary petition is not dismissed with 60 days) or the other party has made an assignment for the benefit of creditors, or a receiver has been appointed for the other party or any substantial portion of other partys property, or the other partys or its officers or directors takes action approving or makes an application for

any of the above. 21.3. [Change of Ownership. In the event of a change in ownership or control of fifty per cent (50%) or more of the ownership or control of Licensee (as compared to the ownership and control that exists of the Effective Date), Licensor may cancel this Agreement, upon thirty (30) days written notice to Licensee with an opportunity to cure within such period,] 21.4. Effect of Termination. Upon the termination, cancellation, or rescission of this Agreement for any reason, each party will promptly identify and return all Confidential Information of the other party. Licensee shall immediately cease all Use of the Patents use of the Intellectual Property Rights, and any Manufacture[/Sell] of the Licensed Products [;Licensee may continue to Sell the Licensed Products whose creation has been fully completed before the termination/cancellation date for a period of sixty (60) days thereafter, provided that the applicable terms of this Agreement continue to govern such Sales.]
,

21.5.

WARRANTIES AND DISCLAIMERS. EXCEPT WHERE THE WORDS WARRANTY ARE USED IN

THIS AGREEMENT, THE PATENTS AND INTELLECTUAL PROPERTY RIGHTS ARE AS

IS, AND

LICENSOR MAKES NO WARRANTIES, AND IT HEREBY DISCLAIMS ANY OTHER WARRANTIES, EXPRESS OR IMPLIED, WRITTEN OR ORAL, BY OPERATION OF LAW OR OTHERWISE, ARISING OR RELATED TO THE INTELLECTUAL PROPERTY RIGHTS, THE TRANSACTIONS, OR THIS AGREEMENT. LICENSOR DISCLAIMS THE IMPLIED WARRANTIES OF MERCHANTABILITY AND FITNESS FOR A PARTICULAR PURPOSE, OR WARRANTIES THAT MAY ARISE FROM TRADE USAGE OR CUSTOM.

22.

LIMITATION OF LIABILITY. EXCEPT WITH RESPECT TO INDEMNIFICATION OBLIGATIONS SET

FORTH IN THIS AGREEMENT, CONFIDENTIALITY BREACHES, OR WILLFUL TORTIOUS MISCONDUCT OR GROSS NEGLIGENCE, IN NO EVENT SHALL EITHER PARTY (INCLUDING ITS INDEMNIFIED PERSONS) BE LIABLE TO THE OTHER PARTY OR ANY OTHER PERSON FOR ANY MATTERS ARISING OUT OF OR RELATED TO THIS AGREEMENT, THE INTELLECTUAL PROPERTY RIGHTS, OR THE TRANSACTIONS, WHETHER BASED UPON WARRANTY, CONTRACT, TORT (INCLUDING NEGLIGENCE) OR OTHERWISE, FOR AN AMOUNT EXCEED $50,000.

23.

DISCLAIMER OF CONSEQUENTIAL DAMAGES. EXCEPT WITH RESPECT TO INDEMNIFICATION

OBLIGATIONS SET FORTH IN THIS AGREEMENT, CONFIDENTIALITY BREACHES, OR WILLFUL TORTIOUS MISCONDUCT OR GROSS NEGLIGENCE, IN NO EVENT SHALL EITHER PARTY (INCLUDING ITS INDEMNIFIED PERSONS) BE LIABLE TO THE OTHER PARTY OR ANY OTHER PERSON FOR LOSS OF PROFITS, LOSS OF OPPORTUNITY, LOSS OF USE DAMAGES, SPECIAL, INDIRECT, PUNITIVE, INCIDENTAL, CONSEQUENTIAL OR EXEMPLARY DAMAGES ARISING OUT OF OR RELATED TO THIS

AGREEMENT, THE INTELLECTUAL PROPERTY RIGHTS, OR THE TRANSACTIONS, EVEN IF SUCH PARTY HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES OR LOSSES.

24. Independence of Last Two Sections. The above two Sections are meant to be independent of each other and a failure of essential purpose of one shall not affect the enforceability of the other. 25. Dispute Resolution.

26. Arbitration. Any claim, dispute, controversy or other matter in question arising or related to this Agreement, including its validity, enforceability, performance, or breach (Dispute) shall exclusively (except as provided below) be subject to final binding arbitration in accordance with the Commercial Arbitration Rules of the American Arbitration Association (AAA), utilizing a single arbitrator. All arbitrations shall be conducted in the City of____________ The arbitrator shall attempt to expedite the hearing (commencing it within 60 days of the Notice of arbitration, or as shortly thereafter as possible) by minimizing discovery and other pre-hearing matters. The arbitrator shall produce a written award (an award includes a judgment) and a decision within 30 days of the end of the arbitration hearing. The award and the decision shall be deemed Confidential Information, except as needed to enforce the award or judgment. Appeals may only be taken on the grounds required by the Federal Arbitration Act (or other applicable law). All awards may be filed with the one or more courts (or the clerk of such court(s)), state, federal or foreign having jurisdiction over the Person against whom such award is rendered or its property, as a basis ofjudicial award, and of the issuance of execution for its collection.
.

26.1. The foregoing shall not preclude either party from pursuing injunctive relief for infringement or violation of the Patents or an Intellectual Property Right, provided, that the remainder of the Dispute, unless precluded by applicable law, will be submitted to arbitration. The parties shall not submit claims for punitive or exemplary damages, and do hereby waive any right to the same, and the arbitrators shall not be authorized to award punitive or exemplary damages. 26.2. During the pendency of any Dispute, Licensee shall not have the right to terminate or suspend, including escrowing, payment of royalties to Licensor. 26.3. Limited Relationship. Nothing in the Agreement, express or implied, is intended to or shall (a) confer on any Person other than the parties hereto or their respective permitted successors or assigns, any rights to remedies under or by reason of this Agreement; (b) constitute the parties hereto employers, partners, or participants in a joint venture; or (c) appoint one party the agent of the other or permit one party to legally bind the other. 26.4. Non-Endorsement. Except as expressly provided in this Agreement, Licensee may not use the corporate names of Licensor, its copyrights, trademarks, or other Intellectual Property Rights in the Manufacture/Sale of the Licensed Products or Use of the Patents or use of the Intellectual Property Rights, or state or imply an endorsement by Licensor of the Licensed Products or of Licensee.

26.5. Assignment. Except as expressly provided in this Agreement, neither party may assign, or otherwise transfer, voluntarily, involuntarily, including by operation of law or otherwise, any of its rights or obligations under this Agreement without, in each instance, the prior written consent of the other party. Any attempt to assign, subcontract, or otherwise transfer is null and void. Licensor may transfer its rights and obligations in whole or in part to an Affiliate or to a third Person as part of a sale, acquisition, merger, reorganization, or other transfer or assignment that involves substantially all of Licensors business or assets related to the Patents. 26.6. Entire Agreement. This Agreement includes all agreements and understandings with respect to and supersedes all previous or contemporaneous agreements and understandings relating to the subject matter hereof, whether oral or in writing, and constitutes the final and entire agreement of the parties hereto. 26.7. Survival Of Provisions. The terms of this Agreement shall apply to any performance or breach that occurs before--and to the following obligations that arise after--the cancellation, termination, or rescission of this Agreement, namely--Confidentiality, Non-Endorsement, Indemnification. 26.8. Governing Law; Remedies Cumulative. All matters arising out or related to this Agreement, the transactions, or the Intellectual Property Rights shall be governed and interpreted in accordance with the laws of the State of New York, U.S.A., without reference to its conflicts of law principles. [Both parties hereby irrevocably consent to submit to the exclusive jurisdiction and venue, and waive any right to contest the jurisdiction or venue of the courts for or in the County of New York, New York, U.S.A., in connection with any action or proceeding instituted arising out of or relating to this Agreement, the transactions, or the Intellectual Property Rights.] Except as stated in this Agreement, all remedies are cumulative and may be exercised concurrently or successively, and the exercise of one remedy shall not be deemed to be an election of such remedy to the exclusion of other remedies, so long as there is no double recovery for the same damage. 26.9. Headings. The headings contained in this Agreement are set forth for the convenience of the parties only, do not form a part of this Agreement, and are not to be considered a part hereof for the purpose of construction or interpretation hereof, or otherwise. 26.10. Notices. All invoices, reports, and payments shall be sent by first-class mail to: _______________________________________________________________ All Notices and other communications required to be given in writing under the Agreement shall be directed to the applicable individuals identified below and shall be deemed to have been duly given upon actual receipt by the individual, or upon constructive receipt if sent by certified or registered mail or overnight courier service, return receipt requested, postage pre-paid (as of the date of signature on, or first refusal to sign, the return receipt), to the following addresses or to such other address as any party hereto shall hereafter specify by prior Notice to the other party:

If to Licensor:

Name: _______________________________________ Title:


_____________________________________________

Address:

__________________________________________

Telephone: _____________________________________

With, in the event of notices of Dispute or default, a required copy by one of the above methods to: [Attorney]

If to Licensee: Name: _________________________________________ Title:


___________________________________________

Address:

__________________________________________

Telephone: ___________________________________

26.11. Amendment. Except as otherwise provided herein, no provision of this Agreement may be amended, modified, or waived, unless by an instrument in writing executed by a duly authorized officer of the party against whom enforcement of such amendment, modification, or waiver is sought. 26.12. Waiver. No failure on the part of a party to exercise, no delay in exercising, and no course of dealing with respect to any right, power, or privilege under this Agreement shall operate as a waiver thereof, nor shall any single or partial exercise of any such right, power, or privilege preclude any other or future exercise thereof or the exercise of any other right, power, or privilege under this Agreement. 26.13. Severability. If any of the provisions of this Agreement, or application thereof invalid or unenforceable to any Person or in any circumstance, the remainder of this Agreement or the

application of such terms or provisions to Persons or circumstances other than those as to which they are held invalid or unenforceable, shall not be affected thereby and each such term and provision of this Agreement shall be valid and enforceable to the fullest extent permitted by law. 26.14. Authorization. This Agreement shall not be binding upon Licensor unless executed by an authorized officer. The persons executing this Agreement represent that such persons are duly authorized by all necessary and appropriate corporate or other action to execute the Agreement of behalf of Licensor or Licensee, respectively. 26.15. Counterparts. The Agreement may be executed in one or more counterparts, each of which shall be deemed an original, and such counterparts together shall constitute but one and the same instrument. 27. Schedule of Attachments. The following Attachments are referred to in this Agreement and are incorporated as if set forth in full herein. In the event of a conflict between the Attachments and this Agreement, the Attachments shall govern: Attachment A: Patents Attachment B: Royalty Schedule IN WITNESS WHEREOF, authorized officers of the parties have signed this Agreement with the intent to be legally bound:
________________________ (Licensor), ______________________________. (Licensee),

By_______________________ Name: __________________________ Title ______________________________ Date: ___________________________

By Name: Title Date:


-

Attachment A

Patents:

Attachment B
Royalty Schedule