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Patent License

Patent License Template for New Zealand

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Key Requirements PROMPT example:

Patent License

"I need a Patent License Agreement for licensing our pharmaceutical manufacturing patent to a New Zealand-based company, with exclusive rights for New Zealand and Australia, including provisions for royalty payments of 5% of net sales and quality control requirements."

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Document background
A Patent License Agreement is essential when a party wishes to commercially exploit a patented invention owned by another entity in New Zealand. This document is crucial for businesses and individuals seeking to legally use patented technology while ensuring the patent owner's rights are protected and appropriately compensated. The agreement must comply with New Zealand's Patents Act 2013 and related legislation, including the Contract and Commercial Law Act 2017. It typically includes detailed provisions about the scope of rights granted, territory restrictions, royalty structures, quality control measures, and obligations regarding patent maintenance and enforcement. The document is particularly important in sectors involving technological innovation, manufacturing, or research and development, where patent licensing is a common practice for technology transfer and commercialization.
Suggested Sections

1. Parties: Identification of the licensor and licensee, including full legal names and registered addresses

2. Background: Context of the agreement, identification of the patent(s), and the parties' intentions

3. Definitions: Definitions of key terms used throughout the agreement

4. Grant of License: Specific rights being granted, including scope, territory, and field of use

5. License Fees and Royalties: Payment terms, calculation of royalties, reporting requirements, and audit rights

6. Quality Control: Standards for products/processes using the patent, inspection rights

7. Protection of Patent Rights: Obligations regarding patent maintenance, infringement actions, and cooperation

8. Representations and Warranties: Warranties regarding patent ownership, validity, and non-infringement

9. Term and Termination: Duration of the license, termination rights, and consequences of termination

10. Confidentiality: Protection of confidential information exchanged under the agreement

11. General Provisions: Standard clauses including governing law, dispute resolution, and entire agreement

Optional Sections

1. Sublicensing Rights: Terms for granting sublicenses, applicable when licensee is permitted to sublicense

2. Improvements: Rights and obligations regarding improvements to the patented technology

3. Cross-Licensing Provisions: Terms for mutual licensing of patents between parties

4. Manufacturing Rights: Specific terms for manufacturing rights, if applicable

5. Export Restrictions: Restrictions on export of licensed products, if applicable

6. Technology Transfer: Terms for transfer of know-how and technical assistance

7. Research and Development: Provisions for ongoing R&D collaboration

8. Competition Law Compliance: Specific provisions ensuring compliance with competition laws

Suggested Schedules

1. Schedule 1 - Licensed Patents: Detailed list of patents covered by the agreement, including patent numbers and jurisdictions

2. Schedule 2 - Licensed Products: Specification of products or processes covered by the license

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

4. Schedule 4 - Quality Standards: Detailed quality requirements and specifications

5. Schedule 5 - Technical Documentation: Technical information and documentation related to the patent

6. Appendix A - Reporting Templates: Templates for royalty reports and other required reporting

7. Appendix B - Approved Sublicensees: List of pre-approved sublicensees, if applicable

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

Linkedin in social icon imageX social icon image
alex.den.21@genieai.co
Relevant legal definitions
Agreement
Affiliate
Background IP
Commencement Date
Confidential Information
Effective Date
Field of Use
Improvements
Intellectual Property Rights
Know-How
Licensed Patents
Licensed Products
Licensed Process
Licensed Technology
Net Sales
Patent Rights
Patent Term
Permitted Use
Quarter
Royalties
Subsidiary
Technical Information
Territory
Term
Third Party
Trade Secrets
Valid Claim
Working Day
Year
Force Majeure Event
Gross Sales
Implementation Date
Improvement Patent
License Fee
Minimum Royalty
Patent Application
Patent Family
Quality Standards
Regulatory Approval
Related Company
Sublicense
Technical Documentation
Technology Transfer
Clauses
Intellectual Property Rights
License Grant
Territory Restrictions
Field of Use
Sublicensing
Royalties
Payment Terms
Quality Control
Record Keeping
Audit Rights
Confidentiality
Warranties
Indemnification
Patent Prosecution
Patent Maintenance
Infringement
Term
Termination
Assignment
Improvements
Technical Assistance
Regulatory Compliance
Force Majeure
Dispute Resolution
Governing Law
Competition Law
Technology Transfer
Best Endeavors
Reporting
Insurance
Export Control
Marking Requirements
Non-Competition
Severability
Entire Agreement
Amendment
Notice
Waiver
Third Party Rights
Relevant Industries

Technology

Pharmaceuticals

Biotechnology

Manufacturing

Research and Development

Software Development

Healthcare

Electronics

Telecommunications

Chemical Industry

Automotive

Clean Technology

Agricultural Technology

Relevant Teams

Legal

Intellectual Property

Research and Development

Technology Transfer

Business Development

Product Development

Commercial

Innovation

Strategy

Corporate Development

Relevant Roles

Chief Technology Officer

Intellectual Property Manager

Patent Attorney

Legal Counsel

Research and Development Director

Innovation Manager

Licensing Manager

Technology Transfer Officer

Commercial Director

Chief Legal Officer

Business Development Manager

Product Development Manager

Technical Director

Chief Executive Officer

Chief Scientific Officer

Industries
Patents Act 2013: The primary legislation governing patents in New Zealand, covering patent rights, licensing, infringement, and enforcement
Contract and Commercial Law Act 2017: Provides the legal framework for formation and enforcement of commercial contracts in New Zealand
Fair Trading Act 1986: Ensures fair trading practices and prevents misleading conduct in commercial arrangements including licensing
Commerce Act 1986: Regulates competition law aspects and prevents anti-competitive practices in commercial agreements
Property Law Act 2007: Governs property rights and their transfer, which may be relevant to patent licensing arrangements
Patents (Trans-Tasman Patent Attorneys and Other Matters) Amendment Act 2016: Relevant for cross-border patent matters, particularly in relation to Australia
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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