Technology Licence Agreement Template for United States

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Key Requirements PROMPT example:

Technology Licence Agreement

"I need a Technology License Agreement for licensing our proprietary machine learning software to enterprise customers in the healthcare sector, with specific provisions for data protection and HIPAA compliance, and the ability for licensees to create custom implementations while protecting our core IP."

Document background
The Technology License Agreement is a critical legal instrument used when a technology owner wishes to monetize their intellectual property by granting usage rights to other parties while maintaining ownership. This agreement, governed by United States federal and state laws, is essential for businesses seeking to expand their technological capabilities without developing solutions from scratch. It details the scope of permitted use, territorial restrictions, payment structures, and protection mechanisms for the licensed technology. The document requires careful consideration of various US regulations including patent laws, export controls, and industry-specific requirements. It's particularly important in scenarios involving software licensing, patent licensing, or transfer of proprietary technical knowledge.
Suggested Sections

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

2. Background: Context of the agreement, including brief description of the technology and purpose of the license

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

4. Grant of License: Scope of the license, including type (exclusive/non-exclusive), territory, and permitted uses

5. License Fees and Payment Terms: Financial terms, including license fees, royalties, payment schedule, and reporting requirements

6. Intellectual Property Rights: Ownership of IP, protection of rights, and handling of improvements or modifications

7. Confidentiality: Protection of confidential information exchanged during the license term

8. Warranties and Representations: Warranties regarding ownership, non-infringement, and technology performance

9. Indemnification: Protection against third-party claims and allocation of risks

10. Term and Termination: Duration of the agreement, renewal terms, and termination rights

11. Post-Termination Obligations: Obligations that survive termination and wind-down procedures

12. General Provisions: Standard legal provisions including governing law, dispute resolution, and assignment rights

Optional Sections

1. Source Code Escrow: For software licenses where source code access may be required under specific conditions

2. Field of Use Restrictions: When the license needs to be restricted to specific industries or applications

3. Performance Requirements: When minimum performance or commercialization efforts are required from the licensee

4. Quality Control: For licenses where maintaining quality standards is crucial

5. Export Control: When the technology is subject to export control regulations

6. Sublicensing Rights: When the licensee is permitted to sublicense the technology

7. Technical Support and Maintenance: When ongoing support or maintenance is part of the agreement

8. Training and Implementation: When the license includes initial training or implementation services

9. Data Protection: When the technology involves processing personal data

10. Change Control: When formal procedures for technology modifications are required

Suggested Schedules

1. Schedule A - Technical Specification: Detailed technical description of the licensed technology

2. Schedule B - Licensed Patents/IP: List of specific patents, copyrights, or other IP covered by the license

3. Schedule C - Fee Schedule: Detailed breakdown of all fees, royalties, and payment terms

4. Schedule D - Service Levels: Performance metrics and service levels if applicable

5. Schedule E - Support Services: Details of technical support and maintenance services if included

6. Schedule F - Implementation Plan: Timeline and milestones for technology implementation if relevant

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

8. Appendix 1 - Form of Reports: Templates for required technical or financial reports

9. Appendix 2 - Security Requirements: Security standards and requirements for technology use

10. Appendix 3 - Acceptance Testing: Procedures and criteria for acceptance testing 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

Relevant legal definitions
Clauses
Relevant Industries

Software and Technology

Biotechnology

Telecommunications

Manufacturing

Healthcare Technology

Financial Technology

Clean Technology

Aerospace and Defense

Consumer Electronics

Automotive

Industrial Automation

Medical Devices

Research and Development

Entertainment and Media

Relevant Teams

Legal

Intellectual Property

Research and Development

Information Technology

Business Development

Commercial

Compliance

Finance

Technical Operations

Product Development

Relevant Roles

Chief Technology Officer

Intellectual Property Counsel

Licensing Manager

Technology Transfer Director

General Counsel

Chief Legal Officer

Business Development Director

Innovation Manager

Patent Attorney

Commercial Director

Head of Research and Development

Chief Information Officer

Technology Commercialization Manager

Contract Manager

Legal Operations 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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