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Out Licensing Agreement Template for England and Wales

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Key Requirements PROMPT example:

Out Licensing Agreement

"I need an Out Licensing Agreement for licensing our proprietary software technology to multiple distributors across Europe, with specific provisions for revenue sharing and quality control mechanisms, to be effective from March 2025."

What is a Out Licensing Agreement?

Out Licensing Agreements are essential tools for businesses looking to monetize their intellectual property while maintaining ownership rights. These agreements, governed by English and Welsh law, provide a structured framework for licensing arrangements, defining the rights granted, territorial limitations, payment terms, and obligations of both parties. An Out Licensing Agreement is particularly valuable when a company wants to expand market reach without direct involvement in production or distribution, or when seeking to generate revenue from intellectual property assets through third-party commercialization.

What sections should be included in a Out Licensing Agreement?

1. Parties: Identification and details of the licensor and licensee

2. Background: Context of the agreement and brief description of the intellectual property being licensed

3. Definitions: Key terms used throughout the agreement

4. Grant of License: Scope, territory, and nature of the license granted

5. Payment Terms: Royalties, fees, payment schedules, and reporting requirements

6. IP Protection: Rights and obligations regarding IP protection and enforcement

7. Term and Termination: Duration of agreement and circumstances for termination

8. Confidentiality: Protection of confidential information

9. Governing Law: Applicable law and jurisdiction

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

1. Quality Control: Standards and inspection rights for manufacturing or product creation

2. Sub-licensing Rights: Terms and conditions under which sub-licensing is permitted

3. Technology Transfer: Process and requirements for transferring technical knowledge and expertise

4. Improvements: Rights and obligations regarding improvements and modifications to the licensed IP

5. Export Control: Compliance requirements for international trade and export regulations

What schedules should be included in a Out Licensing Agreement?

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

2. Schedule 2 - Territory: Detailed description of geographic scope and territorial limitations

3. Schedule 3 - Royalty Calculations: Detailed payment terms, calculation methods and examples

4. Schedule 4 - Technical Specifications: Technical details, requirements and standards for the licensed IP

5. Schedule 5 - Quality Standards: Detailed quality requirements, processes and compliance standards

6. Appendix A - Reporting ¶¶ÒõÊÓÆµ: Standard forms and templates for required reports and notifications

Authors

Alex Denne

Head of Growth (Open Source Law) @ ¶¶ÒõÊÓÆµ | 3 x UCL-Certified in Contract Law & Drafting | 4+ Years Managing 1M+ Legal Documents | Serial Founder & Legal AI Author

Relevant legal definitions




















Clauses




















Industries

Patents Act 1977: Key legislation governing patent rights, registration, and enforcement in the UK. Essential for protecting and licensing patented innovations.

Copyright, Designs and Patents Act 1988: Fundamental legislation protecting creative works, designs, and related rights. Critical for licensing of copyright-protected materials.

Trade Marks Act 1994: Primary legislation governing trademark protection and licensing in the UK. Important for brand-related licensing.

Common Law - Trade Secrets: Legal principles protecting confidential information and trade secrets, essential for protecting proprietary information in licensing agreements.

Unfair Contract Terms Act 1977: Regulates unfair terms in contracts, including limitations on liability and reasonableness of contractual terms.

Contracts (Rights of Third Parties) Act 1999: Governs how third parties may enforce terms of a contract, relevant for sub-licensing and assignment provisions.

Competition Act 1998: Ensures licensing agreements don't violate competition law, particularly regarding market restrictions and anti-competitive practices.

Enterprise Act 2002: Provides framework for market regulation and competition law enforcement, impacting licensing restrictions and terms.

Technology Transfer Block Exemption Regulation: Provides safe harbor for certain technology transfer agreements under competition law, particularly relevant for technical licensing.

UK GDPR: Regulates processing and transfer of personal data, important when licensing involves data transfer or processing.

Data Protection Act 2018: UK's implementation of data protection requirements, complementing UK GDPR in data-related aspects of licensing.

Corporation Tax Act 2009: Governs taxation of corporate entities, including treatment of royalties and licensing income.

Employment Rights Act 1996: Relevant when licensing involves transfer of employees or knowledge transfer provisions.

Teams

Employer, Employee, Start Date, Job Title, Department, Location, Probationary Period, Notice Period, Salary, Overtime, Vacation Pay, Statutory Holidays, Benefits, Bonus, Expenses, Working Hours, Rest Breaks,  Leaves of Absence, Confidentiality, Intellectual Property, Non-Solicitation, Non-Competition, Code of Conduct, Termination,  Severance Pay, Governing Law, Entire Agreemen

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