The Intellectual Property License Agreement is a crucial document used when an IP owner wishes to grant rights to their intellectual property while maintaining ownership. This agreement is particularly relevant in New Zealand's growing innovation and technology sectors, where IP commercialization is increasingly important. The document provides a comprehensive framework for IP licensing transactions, covering all aspects from rights granted to commercial terms and quality control measures. It ensures compliance with New Zealand's IP laws and regulations, including the Patents Act 2013, Copyright Act 1994, and Trade Marks Act 2002. The agreement is essential for businesses and individuals looking to monetize their IP assets or acquire rights to use others' IP in their operations, while maintaining legal protection and clear boundaries of use.
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1. Parties: Identifies and defines the licensor and licensee with full legal names and addresses
2. Background: Sets out the context of the agreement, ownership of the IP, and purpose of the license
3. Definitions: Defines key terms used throughout the agreement, including specific IP definitions
4. Grant of License: Specifies the exact rights being granted, including type (exclusive/non-exclusive), scope, and field of use
5. License Fee and Payment Terms: Details the financial terms, including royalties, payment schedule, and calculation methods
6. Protection of IP Rights: Outlines measures to protect the licensed IP, including confidentiality and security requirements
7. Quality Control: Establishes standards for use of the IP and licensor's right to monitor compliance
8. Representations and Warranties: States parties' warranties, particularly regarding IP ownership and right to license
9. Term and Termination: Specifies duration of the license and circumstances for termination
10. Post-Termination Obligations: Details obligations after agreement ends, including return of materials and continuing confidentiality
11. General Provisions: Standard clauses including governing law, dispute resolution, and entire agreement
1. Development Rights: Include when licensee has right to modify or develop the IP
2. Sub-licensing Rights: Include when licensee is permitted to sub-license the IP to third parties
3. Territory Restrictions: Include when license is limited to specific geographic regions
4. Performance Obligations: Include when licensee must meet specific performance targets
5. Marketing and Promotion: Include when agreement involves trademark usage or marketing requirements
6. Improvements: Include when dealing with future improvements to the IP
7. Source Code Escrow: Include for software licenses where source code protection is needed
8. Export Control: Include when IP transfer might be subject to export regulations
9. Data Protection: Include when license involves processing of personal data
1. Schedule 1 - Licensed Intellectual Property: Detailed description of all IP being licensed, including registration numbers
2. Schedule 2 - Technical Specifications: Technical details and requirements for using the licensed IP
3. Schedule 3 - Royalty Calculations: Detailed methodology for calculating royalties and payments
4. Schedule 4 - Quality Control Standards: Specific quality standards and compliance requirements
5. Schedule 5 - Approved Sub-licensees: List of pre-approved sub-licensees if applicable
6. Schedule 6 - Territory Definition: Detailed description of licensed territories if geographically restricted
7. Appendix A - Usage Guidelines: Guidelines for proper use of the licensed IP
8. Appendix B - Reporting Templates: Standard forms for required reporting under the agreement
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