Fill and Sign the Exclusive License Agreement for Patent with Schedule of Royalties Form

Exclusive License Agreement for Patent with Schedule of Royalties License Agreement made on the __________________ (date), between ________________________ (Name of Licensor) , a corporation organized and existing under the laws of the state of ________________________ (name), with its principal office located at _____________________________________________ (street address, city, county, state, zip code) , and referred to herein as Licensor , and ________________________ (Name of Licensee) , a corporation organized and existing under the laws of the state of ________________________ (name), with its principal office located at _____________________________________________ (street address, city, county, state, zip code) , referred to herein as Licensee . Whereas, Licensor is the sole and exclusive owner of, and has the sole and exclusive right to grant licenses under Letters Patent of the United States issued to it, specifically, No. ________________________ , dated ________________________ (date) , entitled _____________________________________________ (title of patent) ; and Whereas, w ithout admitting the validity of the above-mentioned Patent, but solely for commercial purposes, the Licensee wishes to acquire the exclusive right and license to manufacture, sell and use apparatus embodying, employing and containing the invention patented in such Letters Patent, throughout the United States and its territories; Now, therefore, for and in consideration of the mutual covenants contained in this Agreement, and other good and valuable consideration, the receipt and sufficiency of which is hereby acknowledged, the parties agree as follows: I. Grant of License. Licensor hereby grants to the Licensee the exclusive right and license to manufacture, sell and use apparatus embodying, employing and containing the inventions patented in the above-mentioned Letters Patent, throughout the United States and its territories, to the full end of the term or terms for which such Letters Patent have been or may be granted, and any reissue or reissues of such Letters Patent, unless this Agreement is terminated prior to such term or terms, as provided below. II. Representations of Licensor. Licensor represents and warrants that it is the sole and exclusive owner of the entire right, title and interest in and to the above- mentioned United States Letters Patent, and that it has the right to grant the exclusive right, license and privilege granted in this Agreement; that it has executed no Agreement in conflict with this Agreement; and that it has not granted to any other person, firm or corporation any right, license, shop-right, or privilege granted under this Agreement. III. Schedule of Royalties. Licensee agrees to pay the Licensor, commencing ________________________ (date) , and subsequently during the continuance of this Agreement, royalties on apparatus embodying and containing the above-mentioned inventions, which are manufactured, sold, and sued by the Licensee; and such royalties shall be computed in the following manner: A sum based on a sliding scale, decreasing in accordance with the increased volume of sales of the Licensee, during any fiscal year, in accordance with the schedule set forth as follows: _______________________________________________________________ _______________________________________________________________ _______________________________________________________________ (schedule of royalty payments) . IV. Rate of Royalties. Licensee shall have the right, option and privilege of selecting the rate of royalty to be paid according to the schedule contained in Section III of this Agreement, and for that purpose Licensee may for three quarterly periods of any fiscal year pay royalties on the minimum basis, and in the final quarter report upon the basis of the actual number of apparatus sold during the year, and the royalty for the entire year shall be computed on a basis of such reduced royalty, and adjustment and payment made accordingly. For example, the Licensee may for three quarterly periods report on the basis of sale of $ __________________ or under, and payments of royalties shall be made at the rate of __________________ (number) cents per hundred; when reporting for the fourth quarterly period, if the business done was much more extensive, Licensee may select a royalty at a lesser rate to cover the actual amount of sales, and the royalty payable for the entire year will be based upon such quantity. It is agreed, however, that the minimum guaranteed yearly royalty of the Licensor under this Agreement, commencing __________________ (date of commencement of guaranteed annual royalty) , shall be $ __________________ (dollar amount of minimum guaranteed annual royalty) and that Licensor shall not in any one year, after __________________ (date of commencement of guaranteed annual royalty) , during the continuance of this Agreement, receive less than that sum; and the Licensee shall not be chargeable with any sum in excess of $ __________________ (dollar amount of minimum guaranteed annual royalty) , unless the statements rendered by it show royalties due to the Licensor to be in excess of $ __________________ (dollar amount of minimum guaranteed annual royalty) , in which event the Licensee shall pay the actual royalties due in the manner specified. V. Statement of Sales. Licensee, within __________________ (number) days after the first day of __________________ (name of month) , __________________ (name of month) , __________________ (name of month) and __________________ (name of month) , in each year during the continuance of this Agreement, agrees to furnish to the Licensor written statements, under oath, specifying the total number of apparatus embodying and containing the above-mentioned inventions sold by the Licensee during the preceding quarter, such statement to be accompanied by check in payment of the royalty for the period covered. The first statement shall be rendered not later than the __________________ (ordinal number of day) day of __________________ (name of month) __________________ (identification of year) , and shall cover the period from the date of this Agreement to __________________ (end date of first quarter) . VI. Infringement. Licensee shall have the sole and exclusive right to institute and prosecute any and all suits to enjoin any and all infringers of the above-mentioned Letters Patent; and from time-to-time during the continuance of this Agreement, and at its own expense, may institute any suit or suits which it may deem necessary. Licensee shall have the sole right to institute and prosecute such suits, and to employ its own counsel for such suits; and Licensee shall pay for all services rendered by counsel so retained, and for all incidental costs and expenses. VII. Joinder of Licensor. Licensor agrees that the Licensee may join as party plaintiff if the Licensee should find it necessary or desirable in any suit or suits which the Licensee may institute involving the above-mentioned Letters Patent, it being agreed that in such event the Licensor shall not be chargeable for any costs or expenses by reason of being joined as party plaintiff, but that the Licensee shall bear all such expenses. VIII. Cooperation of Licensor. Licensor agrees to execute any and all papers, documents or other instruments which may be found necessary or desirable to effect the exclusive right and license granted to the Licensee; and also to execute any and all papers which may be found necessary or desirable in any suit or suits brought under and pursuant to this Agreement; and the Licensor further agrees that it will testify in any interference or litigation, whenever requested to do so by the Licensee, all at the expense of the Licensee. IX. Invalidity of Letters Patent. If in any suit involving the Letters Patent, under and pursuant to which the exclusive right and license has been granted, charging infringement of such right and license, any of the Letters Patent should be declared to be invalid by the court, or be construed by the court as not to cover a defendant's apparatus, pertaining especially to _________________________________________ (description of invention) , then the royalty agreed to be paid under this Agreement shall afterwards be waived, and the Licensee shall be immediately released of and from any and all obligations under this Agreement. X. Termination. It is agreed that this Agreement shall continue during the lives of the above mentioned United States Letters Patent, but that the Licensee shall have the right at any time, upon __________________ (number) years' notice in writing, delivered to the Licensor by the Licensee, at its last known address (and for that purpose mailing of notice under registered shall be deemed sufficient), to terminate this Agreement, and at the expiration of the __________________ (number) years from the date of such delivery of such notice, this Agreement shall cease and terminate, for reasons stated in Section IX above, or if the patents have become of no value to the Licensee in view of other patents or other improvements in the __________________ (type of industry) industry, and become null and void; and any and all rights which the Licensee shall have or possess under this Agreement shall be by it relinquished and surrendered to the Licensor; except that the Licensee shall have the right to sell all apparatus already manufactured, embodying the inventions, upon which royalties will be paid as provided for above. XV. Severability. The invalidity of any portion of this Agreement will not and shall not be deemed to affect the validity of any other provision. If any provision of this Agreement is held to be invalid, the parties agree that the remaining provisions shall be deemed to be in full force and effect as if they had been executed by both parties subsequent to the expungement of the invalid provision. XVI. No Waiver. The failure of either party to this Agreement to insist upon the performance of any of the terms and conditions of this Agreement, or the waiver of any breach of any of the terms and conditions of this Agreement, shall not be construed as subsequently waiving any such terms and conditions, but the same shall continue and remain in full force and effect as if no such forbearance or waiver had occurred. XVII. Governing Law. This Agreement shall be governed by, construed, and enforced in accordance with the laws of the State of __________________ (name of state). XVIII. Notices. Unless provided herein to the contrary, any notice provided for or concerning this Agreement shall be in writing and shall be deemed sufficiently given when sent by certified or registered mail if sent to the respective address of each party as set forth at the beginning of this Agreement. XIX. Mandatory Arbitration . Any dispute under this Agreement shall be required to be resolved by binding arbitration of the parties hereto. If the parties cannot agree on an arbitrator, each party shall select one arbitrator and both arbitrators shall then select a third. The third arbitrator so selected shall arbitrate said dispute. The arbitration shall be governed by the rules of the American Arbitration Association then in force and effect. XX. Entire Agreement . This Agreement shall constitute the entire agreement between the parties and any prior understanding or representation of any kind preceding the date of this Agreement shall not be binding upon either party except to the extent incorporated in this Agreement. XXI. Modification of Agreement. Any modification of this Agreement or additional obligation assumed by either party in connection with this Agreement shall be binding only if placed in writing and signed by each party or an authorized representative of each party. XXII. Counterparts. This Agreement may be executed in any number of counterparts, each of which shall be deemed to be an original, but all of which together shall constitute but one and the same instrument. XXIII. Compliance with Laws. In performing under this Agreement, all applicable governmental laws, regulations, orders, and other rules of duly-constituted authority will be followed and complied with in all respects by both parties. WITNESS our signatures as of the day and date first above stated. _____________________________ _____________________________ (Name of Licensor) (Name of Licensee ) By: ________________________ By: _________________________ (Signature of Officer) (Signature of Officer) _____________________________ _____________________________ (P rinted Name & Office in Corporation) (P rinted Name & Office in Corporation)