Out Licensing Agreement Template for Australia

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Key Requirements PROMPT example:

Out Licensing Agreement

"I need an Out Licensing Agreement for licensing our patented solar panel technology to manufacturers in Western Australia, with strict quality control requirements and a 5% royalty rate on net sales, to be effective from March 2025."

Document background
The Out Licensing Agreement is a critical document used when an organization wishes to commercialize its intellectual property by granting rights to third parties while maintaining ownership. This agreement is particularly relevant in the Australian legal context, where it must comply with federal and state legislation governing intellectual property rights, competition law, and commercial contracts. The document typically includes detailed provisions on license scope, territory restrictions, royalty structures, quality control measures, and compliance requirements. It's commonly used for licensing patents, trademarks, copyright, trade secrets, or a combination thereof. The agreement should be tailored to address specific Australian legal requirements, including mandatory provisions under the Competition and Consumer Act 2010 and relevant IP statutes. This type of agreement is essential for businesses looking to expand their market reach, generate additional revenue streams, or establish strategic partnerships while maintaining control over their intellectual property.
Suggested Sections

1. Parties: Identification of licensor and licensee with full legal entities

2. Background: Context of the agreement, ownership of IP, and purpose of the licensing arrangement

3. Definitions: Defined terms used throughout the agreement

4. Grant of License: Scope of license, territory, exclusivity, and field of use

5. Payment Terms: License fees, royalties, payment schedule, and reporting requirements

6. IP Ownership and Protection: Confirmation of IP ownership, protection obligations, and infringement procedures

7. Quality Control: Standards, specifications, and quality assurance requirements

8. Obligations of the Parties: Specific duties of licensor and licensee

9. Term and Termination: Duration, renewal options, and termination rights

10. Confidentiality: Protection of confidential information and trade secrets

11. Warranties and Indemnities: Representations, warranties, and indemnification provisions

12. General Provisions: Standard legal clauses including governing law, notices, and assignment

Optional Sections

1. Sublicensing Rights: Include when licensee is permitted to sublicense the IP to third parties

2. Improvements: Include when parties anticipate developments or improvements to the licensed IP

3. Manufacturing Rights: Include for licenses involving production of physical goods

4. Marketing and Promotion: Include when specific marketing obligations or restrictions apply

5. Export Control: Include for international licensing arrangements

6. Source Code Escrow: Include for software licensing agreements

7. Clinical Trial Provisions: Include for pharmaceutical or medical device licensing

8. Data Protection: Include when personal data processing is involved

9. Competition Law Compliance: Include for arrangements that might raise competition law concerns

10. Change of Control: Include when continuity after ownership changes is crucial

Suggested Schedules

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

2. Schedule 2 - Technical Specifications: Technical requirements and standards for licensed products/technology

3. Schedule 3 - Royalty Calculations: Detailed methodology for calculating royalties

4. Schedule 4 - Quality Control Procedures: Specific quality control requirements and processes

5. Schedule 5 - Territory Definition: Detailed description of licensed territory if complex

6. Schedule 6 - Approved Sublicensees: List of pre-approved sublicensees if applicable

7. Schedule 7 - Form of Report: Template for required periodic reports

8. Appendix A - Brand Guidelines: Guidelines for use of trademarks and branding

9. Appendix B - Support Services: Details of technical support or maintenance services

10. Appendix C - Development Milestones: Timeline and specifications for development obligations

Authors

Alex Denne

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

Relevant legal definitions
Clauses
Relevant Industries

Technology and Software

Pharmaceuticals and Healthcare

Manufacturing and Industrial

Consumer Goods and Retail

Media and Entertainment

Biotechnology

Telecommunications

Automotive

Research and Development

Energy and Resources

Relevant Teams

Legal

Intellectual Property

Commercial

Business Development

Finance

Research and Development

Compliance

Technology Transfer

Innovation

Product Development

Strategy

Relevant Roles

Chief Legal Officer

Intellectual Property Counsel

Licensing Manager

Commercial Director

Chief Technology Officer

Business Development Manager

Contract Manager

IP Portfolio Manager

General Counsel

Chief Financial Officer

Technology Transfer Officer

Compliance Officer

Research and Development Director

Innovation Manager

Industries
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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