Intellectual Property License Agreement - Template Form Pro · PH-law

INTELLECTUAL PROPERTY LICENSING AGREEMENT

KNOW ALL MEN BY THESE PRESENTS:

This Intellectual Property Licensing Agreement (the “Agreement”) is made and entered into this ________ day of ________, at the City/Municipality of ________, Province of ________, Republic of the Philippines, by and between:

________, a corporation duly organized and existing under and by virtue of the laws of the Republic of the Philippines, with principal office address at ________, and with SEC Registration No. ________ and Taxpayer Identification No. ________, herein represented by its duly authorized representative, ________, hereinafter referred to as the “LICENSOR”;

- and -

________, a corporation duly organized and existing under and by virtue of the laws of the Republic of the Philippines, with principal office address at ________, and with SEC Registration No. ________ and Taxpayer Identification No. ________, herein represented by its duly authorized representative, ________, hereinafter referred to as the “LICENSEE”.

The LICENSOR and the LICENSEE are hereinafter referred to individually as a “Party” and collectively as the “Parties”.

WITNESSETH: That —

WHEREAS, ________ has been duly appointed and authorized by the LICENSOR to execute this Agreement on its behalf pursuant to the board resolution dated ________, as evidenced by the attached Secretary’s Certificate dated ________;

WHEREAS, ________ has been duly appointed and authorized by the LICENSEE to execute this Agreement on its behalf pursuant to the board resolution dated ________, as evidenced by the attached Secretary’s Certificate dated ________;

WHEREAS, the LICENSOR represents and warrants that it owns all rights, title, and interest in and to a certain work of intellectual property (the “Work”), which is registered with the Intellectual Property Office of the Philippines under Registration No. ________, in accordance with Republic Act No. 8293, otherwise known as the “Intellectual Property Code of the Philippines”, as amended;

WHEREAS, the LICENSEE desires to use the Work, and the LICENSOR has the power, authority, and willingness to grant unto the LICENSEE the right, privilege, and license to use the Work, subject to the terms and conditions set forth herein;

NOW, THEREFORE, for and in consideration of the foregoing premises and of the mutual covenants and stipulations hereinafter set forth, the Parties hereby agree as follows:

§ 1. GRANT OF LICENSE

1.1. The Work. Subject to the terms and conditions of this Agreement, the LICENSOR hereby grants unto the LICENSEE a non-exclusive, non-transferable right and license to use the Work, more particularly described as follows:

________

1.2. Use of the Work. The license granted herein confers upon the LICENSEE the limited right to reproduce, publicly display, and distribute the Work solely for the purposes agreed upon in this Agreement. Any use of the Work for a purpose not directly related to the terms hereof shall require the prior express written consent of the LICENSOR and may be subject to the payment of additional fees, unless otherwise agreed in writing. The LICENSEE may use the Work only in the following manner:

________

1.3. Territory. This grant of license shall apply only to the following defined geographic area:

________

1.4. Modifications. The LICENSEE shall secure the prior written approval of the LICENSOR before making any change, alteration, or modification to the Work.

1.5. Moral Rights. Nothing in this Agreement shall be construed as a waiver or transfer of the moral rights of the LICENSOR or the author over the Work as provided under Sections 193 to 199 of Republic Act No. 8293. The LICENSEE shall at all times attribute the Work to the LICENSOR and shall not subject the Work to any distortion, mutilation, or other derogatory action.

§ 2. LICENSE FEES AND TAXES

2.1. In consideration of the use of the Work as provided in this Agreement, the LICENSEE shall pay the LICENSOR a one-time license fee in the amount of ________ (₱________), payable on or before the execution of this Agreement, in the following manner: ________. The said amount is inclusive of Value-Added Tax (VAT), if applicable.

2.2. Each Party shall bear and be responsible for its own taxes, fees, and impositions lawfully due to the Bureau of Internal Revenue and other government agencies arising from this Agreement, in accordance with the National Internal Revenue Code of 1997, as amended. Any withholding tax required by law shall be deducted and remitted by the paying Party, and the corresponding Certificate of Creditable Tax Withheld at Source (BIR Form 2307) shall be furnished to the other Party.

§ 3. RIGHT, INTEREST, AND TITLE

3.1. The Parties acknowledge and agree that, as between them, the LICENSOR is and shall remain the sole and exclusive owner of all rights, title, and interest in and to the Work. This Agreement does not effect any transfer of ownership of the Work.

3.2. In the event of a systematic transfer of knowledge under this Agreement, the LICENSOR shall provide the LICENSEE continued access to improvements in techniques and processes related to the Work during the term hereof.

§ 4. LICENSOR RIGHTS TO DERIVATIVE WORKS

In the event the LICENSEE creates any derivative work of the Work, the LICENSEE hereby grants back to the LICENSOR, effective as of the Effective Date, a non-exclusive, non-transferable, royalty-free license to use any such derivative work; provided, that said grant-back shall not limit the rights of the LICENSEE under this Agreement.

§ 5. TERM

This Agreement shall commence on ________ (the “Effective Date”) and shall continue in full force and effect until ________, or until the expiration of the registration of the Work, whichever comes first, unless sooner terminated in accordance with the provisions hereof.

§ 6. CONFIDENTIALITY

6.1. The LICENSEE acknowledges and agrees that, during the term of this Agreement, it may have access to information that is confidential and/or commercially valuable to the LICENSOR (“Confidential Information”), which may include, but is not limited to:

(a) information of whatever nature relating to the business activities, practices, and finances of the LICENSOR;

(b) any evaluation material, design work, technologies, technological ideas or strategies, strategic plans and ideas, marketing strategies, innovations, creative plans, concepts, and any other plans or ideas developed by or on behalf of the LICENSOR, or used by the LICENSOR;

(c) any information derived from any other information falling within this definition of Confidential Information; and

(d) any copy of any Confidential Information.

6.2. Confidential Information shall not include information which:

(a) was known to or in the lawful possession of the LICENSEE before it was provided by the LICENSOR, and not as a result of any breach of this Agreement or any other confidentiality obligation;

(b) is, or becomes, publicly available through no fault of the LICENSEE;

(c) is lawfully provided to the LICENSEE without restriction by a third party who did not breach any confidentiality obligation in doing so;

(d) is provided by the LICENSOR and marked “Non-Confidential”; or

(e) is required by law, regulation, or competent governmental or judicial authority to be disclosed, in which case the disclosure shall be limited to the minimum necessary and the LICENSOR shall first be consulted to determine whether and to what extent such disclosure may be prevented or restricted.

6.3. Where there is any doubt as to whether particular information constitutes Confidential Information, the LICENSEE shall presume the same to be Confidential Information until it obtains explicit confirmation from the LICENSOR to the contrary.

6.4. The LICENSEE shall keep the Confidential Information confidential and secret, and shall use the same only in accordance with the license created under this Agreement.

6.5. The LICENSEE shall not disclose the Confidential Information to any person or entity without the prior written consent of the LICENSOR, nor copy or modify the same except as expressly permitted herein.

6.6. The LICENSEE shall promptly notify the LICENSOR upon becoming aware of any actual or possible unauthorized disclosure or use of the Confidential Information.

6.7. The LICENSEE shall disclose Confidential Information only to those of its employees who require such information to perform their duties in connection with the limited purposes of this Agreement, and each such employee shall execute a non-disclosure undertaking substantially the same as this provision upon the request of the LICENSOR.

6.8. To the extent any Confidential Information or other data constitutes personal information, the Parties shall process the same in accordance with Republic Act No. 10173, otherwise known as the “Data Privacy Act of 2012”, its Implementing Rules and Regulations, and the issuances of the National Privacy Commission, and shall implement reasonable and appropriate organizational, physical, and technical security measures to protect such information.

6.9. This Section shall survive the termination or expiration of this Agreement.

§ 7. PROTECTION OF INTELLECTUAL PROPERTY RIGHTS

7.1. Each Party shall promptly notify the other upon becoming aware of any actual or threatened infringement, imitation, dilution, misappropriation, or other unauthorized use of, or conduct in derogation of, the Work.

7.2. The LICENSOR shall have the sole and exclusive right to institute and control all matters relating to any legal action or remedy with respect to any such infringement and shall bear the costs thereof. All damages, compensation, and amounts recovered or obtained by way of compromise from any such action shall accrue to and for the benefit of the LICENSOR.

7.3. Nothing herein shall be construed to require the LICENSOR to enforce its intellectual property rights to the Work against any third party.

7.4. The LICENSEE shall cooperate fully and in good faith with the LICENSOR in protecting, securing, and preserving the LICENSOR’s rights to the Work, and hereby releases the LICENSOR from any claim arising from the LICENSOR’s decisions or actions regarding the prosecution and maintenance of any action concerning the Work.

§ 8. TERMINATION

8.1. This Agreement shall automatically terminate on ________, unless sooner terminated or renewed as provided herein.

8.2. Upon a material breach of this Agreement by either Party, the other Party may terminate this Agreement by written notice; provided, that such termination shall be effective only if the breaching Party fails to cure the breach within thirty (30) days from receipt of written notice thereof. Material breaches include, but are not limited to:

(a) the LICENSEE’s failure to pay the license fees when due;

(b) the LICENSEE’s use of the Work contrary to the terms and conditions of this Agreement; and

(c) either Party’s assignment or attempted assignment of any rights granted herein to a third party without the other Party’s written consent, except as allowed under this Agreement.

8.3. Either Party may, at its option, terminate this Agreement upon written notice if the other Party:

(a) is declared insolvent, or enters into rehabilitation, administration, or liquidation under Republic Act No. 10142 (the “Financial Rehabilitation and Insolvency Act of 2010”); or

(b) undergoes a substantial change in ownership, whether by merger, acquisition, consolidation, or otherwise.

8.4. Upon termination of this Agreement for any reason, the LICENSEE shall cease and discontinue all use of the Work within the following period from the date of termination: ________.

8.5. Upon the termination or expiration of this Agreement or of the registration of the Work, whether by operation of law or otherwise, all rights, privileges, and obligations arising herefrom shall cease to exist, except those relating to Confidentiality and Indemnity, which shall survive.

§ 9. WARRANTIES AND REPRESENTATIONS

The LICENSOR represents and warrants that: (a) it is the lawful and sole owner of the Work; (b) it has full power and authority to grant the license herein; and (c) to the best of its knowledge, the Work does not infringe upon the intellectual property rights of any third party. Each Party further represents that it is duly organized and validly existing, and that the execution of this Agreement has been duly authorized by all necessary corporate action.

§ 10. INDEMNITY

The LICENSEE shall indemnify and hold free and harmless the LICENSOR and its directors, officers, employees, agents, and representatives from and against any and all damages, losses, penalties, costs, and expenses, including reasonable attorney’s fees, arising out of the LICENSEE’s breach of any term or condition of this Agreement.

§ 11. ASSIGNMENT

11.1. The LICENSEE shall not assign, sublicense, transfer, or otherwise dispose of any of its rights or obligations under this Agreement, in whole or in part, to any third party without the prior written consent of the LICENSOR. Any purported assignment, sublicense, or transfer made without such written consent shall be null and void and of no force and effect.

11.2. The LICENSOR may freely assign or transfer its rights and obligations under this Agreement to any third party, provided that such assignment or transfer shall not diminish the rights granted to the LICENSEE herein. This Agreement shall be binding upon and shall inure to the benefit of the Parties and their respective successors and permitted assigns.

§ 12. GOVERNING LAW

This Agreement shall be governed by, construed, and interpreted in accordance with the laws of the Republic of the Philippines, without regard to its conflict of laws principles.

§ 13. DISPUTE RESOLUTION AND VENUE

13.1. In the event of any dispute, controversy, or claim arising out of or in connection with this Agreement, the Parties shall first endeavor to settle the same amicably through good-faith negotiations within thirty (30) days from written notice of the dispute.

13.2. Should such negotiations fail, the dispute shall be resolved exclusively before the proper courts of ________, to the exclusion of all other courts, without prejudice to the right of either Party to seek provisional remedies as may be available under law.

§ 14. NOTICES

Lorem ipsum dolor sit amet consectetur adipiscing elit sed do eiusmod tempor incididunt ut labore et dolore magna aliqua ut enim ad minim veniam quis nostrud exercitation ullamco laboris nisi ut aliquip ex ea commodo consequat duis aute irure dolor in reprehenderit voluptate velit esse cillum dolore eu fugiat nulla pariatur lorem ipsum dolor sit amet consectetur adipiscing elit sed do eiusmod tempor incididunt ut labore et dolore magna aliqua ut enim ad minim veniam quis nostrud exercitation ullamco laboris.

§ 15. WAIVER

Lorem ipsum dolor sit amet consectetur adipiscing elit sed do eiusmod tempor incididunt ut labore et dolore magna aliqua ut enim ad minim veniam quis nostrud exercitation ullamco laboris nisi ut aliquip ex ea commodo consequat duis aute irure dolor in reprehenderit voluptate velit esse cillum dolore eu fugiat nulla pariatur lorem ipsum dolor sit amet consectetur adipiscing elit sed do eiusmod tempor incididunt ut labore et dolore magna aliqua ut enim ad minim veniam quis nostrud exercitation ullamco laboris.

§ 16. COUNTERPARTS

This Agreement may be executed in counterparts, each of which shall be deemed an original, but all of which together shall constitute one and the same instrument. If the dates of signing differ, this Agreement shall be considered effective as of the date on which both Parties have signed.

§ 17. SEVERABILITY

The invalidity or unenforceability of any provision of this Agreement shall not affect the validity of the remaining provisions. In the event any provision is held invalid or unenforceable, the Parties agree that the remaining provisions shall remain in full force and effect as if executed subsequent to the expungement of the invalid provision.

§ 18. CUMULATIVE RIGHTS

The rights of the Parties under this Agreement and under the law are cumulative and shall not be construed as exclusive unless otherwise required by law.

§ 19. HEADINGS

The headings used in this Agreement are for convenience of reference only and shall not affect the interpretation of any provision hereof.

§ 20. ENTIRETY OF AGREEMENT

This Agreement constitutes the entire agreement between the Parties and supersedes all prior negotiations, representations, and agreements, whether oral or written, with respect to the subject matter hereof.

§ 21. AMENDMENTS AND MODIFICATIONS

This Agreement may be amended or modified only by a written instrument duly signed by both Parties.

IN WITNESS WHEREOF, the Parties have hereunto affixed their signatures on the date and at the place first above written.

________
Licensor

By:

________
Authorized Representative

________
Licensee

By:

________
Authorized Representative

SIGNED IN THE PRESENCE OF:

________          ________

ACKNOWLEDGMENT

REPUBLIC OF THE PHILIPPINES )
PROVINCE OF ________ )
CITY/MUNICIPALITY OF ________ ) S.S.

BEFORE ME, a Notary Public for and in the City/Municipality of ________, ________, this ________ day of ________, personally appeared the following persons:

1. ________, with competent proof of identification: ________ with number ________, which expires on ________; and

2. ________, with competent proof of identification: ________ with number ________, which expires on ________,

all known to me and to me known to be the same persons who executed the foregoing Intellectual Property Licensing Agreement, consisting of ________ pages, including this page on which this Acknowledgment is written, and they acknowledged to me that the same is their free and voluntary act and deed, as well as that of the corporations herein represented, and that they are duly authorized to execute the same.

WITNESS MY HAND AND SEAL on the day and at the place first above written.

Doc. No. ________;
Page No. ________;
Book No. ________;
Series of ________.