Fill and Sign the License Agreement How Form

Nonexclusive License Agreement for Process Patent, Know-How and Trademark 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 originator of a process [(of the kind disclosed in its U.S. Letters Patent No. __________________ (number) granted __________________ (date) ], for the use of _____________________________________________ (description of process) , and has the right to grant licenses for the use of this process; and Whereas, Licensor represents and warrants that it holds the entire right, title and interest in and to U.S. Trademark Registration No. __________________ (number) dated __________________ (date) , for the trademark _____________________________________________ (description of trademark) as applied to _____________________________________________ (type of products) products; and Whereas, Licensor has obtained approval of the ________________________ (description of process) process and approval of its trademark ________________________ (description of trademark) for use on ________________________ (type of product) from the U.S. Department of Agriculture; and Whereas, Licensor has developed specific know-how based on practical experience in employing ________________________ (description of process) , which know-how is of great commercial importance and is not readily available from any patents or other publications; and Whereas, Licensee at present has no experience, knowledge or information concerning Licensor's ________________________ (description of process) process other than that disclosed in U.S. Patent No. ________________________ (number) ; and Whereas, Licensee desires to obtain nonexclusive rights to Licensor's (description of process) process, and Licensor is willing to grant such rights on the terms and conditions contained in this Agreement; 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. Rights of Licensee. A. Know-How Rights. 1. Know-How License. Licensor grants to Licensee a nonexclusive license, without the right to sublicense, to practice ________________________ (description of process) in the United States of America only, using any and all know-how that Licensor now has or may subsequently acquire during the term of this Agreement. 2. Transfer of Know-How. Licensor shall teach Licensee: (description of techniques) , including those techniques that Licensor has learned since filing the application on which U.S. Patent No. __________________ (number) issued. Licensor will update such information from time-to-time throughout the term of this Agreement. Licensor shall provide troubleshooting services and general technical assistance requested by Licensee when difficulties are experienced, as well as routine checkups to verify the correctness of Licensee's procedures; provided that the amount of time that Licensor personnel are required to spend in pursuance of such troubleshooting services, general technical assistance and routine checkups shall be limited to a maximum of __________________ (number) hours per year after the first anniversary of the effective date of this Agreement. Licensor shall design __________________ (type of equipment) equipment and accessory devices suitable for optimum practice of the licensed technology and shall provide detailed parts and assembly drawings sufficient for the manufacture and installation of such equipment in Licensee's plant. Licensor shall supervise the manufacture and installation of such equipment and train Licensee in its operation, cleaning and maintenance for best results in ________________________ (description of operation) to maintain quality and sanitation. 3. Equipment Sources. At Licensee's request, Licensor shall build and install all or any part of the necessary ________________________ (type of equipment) equipment in Licensee's plant for a price equal to Licensor's cost (i.e., direct costs plus general and administrative overhead) plus _______ %. Licensee shall be free, however, to obtain all or any part of such equipment and its installation from any other source. 4. Government Approval. Licensor shall procure, and assist Licensee in procuring, extension of Licensor's ________________________ (type of approval) approval of the licensed technology and trademark ________________________ (type of trademark) to cover Licensor's plants and operations under this Agreement. B. Trademark Rights. 1. Trademark License. Licensor grants to Licensee a nonexclusive license, without the right to sublicense, to use the trademark ________________________ (description of trademark) in the United States of America only, in the manner and form and subject to the quality control requirements defined in this Agreement, during the term of this Agreement, on ________________________ (type of product) processed under the know-how license granted in Section I, Paragraph A, above. 2. Graphics. Licensor shall supply Licensee with sample graphics for the use of the trademark ________________________ (description of trademark) in printed material. C. Material. Licensor will supply, at Licensee's request, ________________________ (description of material) suitable for ________________________ (description of use) in accordance with the know-how licensed under this Agreement, such material to be sold at Licensor's then current price and terms. Licensee shall be free, however, to purchase such material from any other source. D. Infringement. Licensor shall indemnify and hold Licensee harmless from damage arising out of, and shall defend Licensee against, any charge of infringement of any patent or trademark, or improper use of proprietary technology, of any party, including Licensor, in connection with Licensee's practice of the know-how license under this Agreement in the United States of America during the term of this Agreement; but only to the extent that the technical recommendations, and the recommendations for use of copy, made by Licensor under this Agreement, cannot be carried out without such patent or trademark infringement or improper use of proprietary technology. Licensor's liability under this Paragraph D shall not exceed the royalties paid by Licensee. E. Most-Favored Licensee. Licensor shall give Licensee the benefit of any other license agreement that, taken as a whole, is more favorable to the Licensee than this Agreement and that grants the same rights as this Agreement; provided the first license ever granted to the other Licensee in the same technological area has an effective date subsequent to the effective date of this Agreement. II. Obligations of Licensee A. Payments. Licensee will remit all payments required under this Agreement within ________________________ (number) days after the close of the calendar quarter in which they accrue. B. Records and Reports. Licensee will maintain accurate records of amounts and kinds of ________________________ (type of products) processed by use of the licensed know-how and will submit monthly reports reflecting its operations under this Agreement in such form as Licensor shall require from time-to-time. C. Quality Control. Licensee agrees to maintain in its operations all those standards of quality that Licensor shall establish in connection with the trademark ________________________ (description of trademark) . D. Inspection of Premises and Records. Licensor shall have the right at all times to inspect the premises of Licensee (including all materials and supplies used by Licensee in its operations under this Agreement) and to audit Licensee's records for the purpose of determining compliance with any or all portions of this Agreement. Licensee will also make ________________________ (description of premises) available during normal working hours to demonstrate its ________________________ (description of operations) operations under this Agreement to other (description of prospective licensees) who are prospective licensees of Licensor. E. Use of Trademarks. Licensee agrees: 1. To apply the trademark ________________________ (description of trademark) to all ________________________ (type of products) processed by Licensee by means of the know-how licensed in this Agreement. 2. To employ the trademark ________________________ (description of trademark) in the manner and form required by Licensor, as changed from time-to-time, and consistent with the latest sample graphics supplied Licensor and with all applicable government requirements. 3. To apply the trademark ________________________ (description of trademark) only to ________________________ (description of product) that has been (description of process) at a plant, and according to a process, approved by Licensor and all cognizant government authorities. 4. To require all of Licensee's retail outlets that sell ________________________ (type of products) , processed in accordance with the process licensed by this Agreement, to apply the trademark ________________________ (description of trademark) to ________________________ (type of products) , and to do so in the manner and form required by Licensor and consistent with the latest sample graphics supplied by Licensor and with all applicable government requirements, and to take all steps necessary to preserve the nature and quality of such ________________________ (type of products) . 5. To submit to Licensor for its prior approval samples of all proposed ________________________ (description of trademark) copy and oral scripts, including promotional, advertising, labeling, and packaging material. 6. To report to Licensor any use by others of trademarks or other terms that may be confusingly similar to ________________________ (description of trademark) or that may tend to dilute the value of the trademark. 7. That all use of the trademark ________________________ (description of trademark) by Licensee and those in its chain of distribution shall inure to the benefit of Licensor as the owner of such trademark. F. Quality Requirements. Licensee shall process ________________________ (type of products) marked with the trademark ________________________ (description of trademark) in accordance with all applicable specifications established by Licensor from time- to-time for the quality and nature of ________________________ (type of products) , which specifications shall include, but are not limited to, those submitted by Licensor for ________________________ (type of approval) approval of ________________________ (type of products) processed by the method licensed under this Agreement. During Licensor's on-site visits, Licensee will permit Licensor to inspect ________________________ (type of products) processed by means of the technology licensed under this Agreement or marked with the trademark ________________________ (description of trademark) , and will supply Licensor's representative such samples of ________________________ (type of products) as are reasonably necessary to determine compliance with Licensor's or government specifications. If the samples do not meet Licensor's specifications or any applicable government specifications, Licensee shall, immediately on written notification from Licensor, withhold the affected ________________________ (type of products) from the market or, if the same has been released for market, shall with due diligence either recover ________________________ (type of products) that has been distributed or remove the trademark ________________________ (description of trademark) from such (type of products) . G. Licensor's Developments. Any inventions, new developments or improvements (including, but not limited to, unpatentable know-how) that relate to the processes licensed under this Agreement, or equipment for use with these processes, and are originated by Licensee at any time prior to the termination, for any reason, of this Agreement shall be promptly disclosed to Licensor, and all relevant information pertaining to such inventions, new developments or improvements shall be furnished. Licensee further agrees to grant Licensor a perpetual worldwide nonexclusive royalty-free license, with the right to sublicense, under any and all such inventions, developments, and improvements, and all patents covering the same. H. Royalty Rates. Licensee shall pay royalties to Licensor for the use of the know-how licensed under this Agreement during the term of this Agreement, according to the Royalty Schedule attached hereto as Exhibit A and made a part hereof I. Accrual of Royalties. All royalties under this Agreement shall accrue at the time of processing ________________________ (type of products) to which such royalties are applicable. J. Confidentiality of Know-How. During and after the term of this Agreement, Licensee shall not disclose the know-how received under this Agreement to any other party and shall also require all its employees who receive such know-how to sign written agreements requiring them not to disclose such know-how during and after their tenure with Licensee. If Licensee or any of its employees disclose or allow such know-how to be disclosed, Licensee shall pay Licensor liquidated damages of $ ________________________ for each ________________________ (type of products) processed during the ________________________ (number) -year period following such disclosure by any party not licensed by Licensor by means of know-how licensed under this Agreement and received directly or indirectly as a result of a violation of this paragraph. K. Minimum Royalty. Licensee shall not be required to pay a minimum royalty prior to the calendar year beginning after the first anniversary of the effective date of this Agreement, nor in any calendar year in which the total number of ________________________ (type of products) processed under this license by Licensee is less than ________________________ (number of units of product) . In each calendar year after the first anniversary of the effective date of this Agreement during which Licensee processes at least __________________ (number of units of product) ________________________ (type of products) under this License, Licensee shall pay Licensor a minimum annual royalty, which shall be credited against the unit royalties required under Section II, Paragraph H, above. This minimum royalty shall be either $ __________________ annually for each __________________ (type of machine) machine installed on Licensee's premises and designed in accordance with or for use with the __________________ (type of products) know-how licensed under this Agreement, or $ __________________ annually, whichever is greater. Within __________________ (number) days after the close of each calendar year during the term of this Agreement, Licensee shall remit the difference, if any, between the minimum annual royalty and the total unit royalties payable in that calendar year. The minimum annual royalty shall be prorated for any period shorter than one calendar year for which minimum royalty is required under this Agreement. III. Termination. A. Notice. Licensor shall have the option of terminating this Agreement at any time by giving __________________ (number) days' written notice of a material breach by Licensee, followed by Licensee's failure within the above- mentioned __________________ (number) -day period to cure the breach or take steps reasonably calculated to prevent its re-occurrence. Included, without limitation, in the types of breach for which such notice of termination may be sent are: (i) failure to employ the trademark __________________ (description of trademark) to the extent or in the manner required under this Agreement; (ii) failure to clear trademark copy in advance as required under this Agreement; (iii) disclosure of the licensed know-how by Licensee or its employees or former employees to another party; (iv) violation of quality control standards or specifications on __________________ (description of trademark) trademarked goods; (v) denial of plant visitation or inspection rights in connection with __________________ (description of trademark) trademarked goods; and (vi) failure to pay minimum or unit royalties required under this Agreement. B. Failure to Exploit. If Licensee processes fewer than __________________ (number of units of product) __________________ (type of products) in any full calendar year that begins after the first anniversary of the effective date of this Agreement, Licensor shall have the option of terminating this Agreement by written notice mailed within __________________ (number) days following the end of such calendar year; and this termination shall take effect __________________ (number) days following the mailing of such notice, unless on or before that date, Licensee pays to Licensor an amount equal to the minimum royalty that would have been due if Licensee had processed at least __________________ (number of units of product) __________________ (type of products) under this License in that calendar year. C. Termination of Know-How Rights. Licensee agrees that after termination of this Agreement for any reason, Licensee and its employees and former employees will not use in their own behalf, or disclose to others, any of the know-how licensed under this Agreement, and will surrender to Licensor any documents and copies of documents embodying this know-how and will dismantle all equipment for the practice of the know-how. Violation of this provision shall subject Licensee to the liquidated damages provision of Section II, Paragraph J, above. D. Final Accounting. On any termination of this Agreement, Licensee shall promptly remit payment of all unpaid amounts accrued to Licensor under this Agreement, including minimum and unit royalties, together with a final report of all Licensee's activities under this Agreement since the last previous report. IV. Miscellaneous Provisions. A. Assignability. This Agreement shall inure to the benefit of the successors and assigns of the parties; provided, however, that all rights of Licensee under this Agreement are not transferable without the prior written consent of Licensor, except as a part of an assignment of the entire business to which the license under this Agreement pertains. B. Severability. If any term or provision of this Agreement shall for any reason be judicially held to be invalid, illegal or unenforceable in any respect, Licensor, in its sole discretion, shall have the right to either terminate this Agreement [in which event it shall give at least __________________ (number) days prior written notice of such termination to Licensee] or declare, by written notification to Licensee, that such invalidity, illegality or unenforceability shall not affect any other term or provision of this Agreement. In the latter event, this Agreement shall be interpreted and construed as if such term or provision, to the extent the same shall have been held to be invalid, illegal or unenforceable, had never been contained in this Agreement. C. Performance Waivers and Amendments. None of the terms of this Agreement shall be deemed to be waived by either party or amended, unless such waiver or amendment is in writing and executed on behalf of the party to be charged with such waiver or amendment by its authorized officer and unless such waiver or amendment recites specifically that it is a waiver of or amendment to the terms of this Agreement. The failure of either party to insist strictly on any of the terms or provisions in this Agreement shall not be deemed a waiver of any subsequent breach or default of its terms or provisions. Also, the acceptance by Licensor of any money paid under this Agreement after any breach or default by Licensee of any one or more of its terms or provisions, whether before or after notice of knowledge of such breach or default to or by Licensor, shall not constitute a waiver by Licensor of such breach or default. D. Notices. All notices under this Agreement shall be deemed effective as of the date they are mailed, by certified or registered mail, postage fully prepaid, to the last known address of the recipient. E. Governing Law. This Agreement shall be governed by, construed, and enforced in accordance with the laws of the State of __________________ (name of state). F. 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. G. 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. H. 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. I. 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)