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Patent Cross License
"I need a Patent Cross License Agreement for a semiconductor manufacturing company in South Africa licensing chip design patents with a US-based technology firm, including royalty payments and technology transfer provisions, to be effective from March 2025."
1. Parties: Identification of the contracting parties, including their full legal names, registration numbers, and registered addresses
2. Background: Context of the agreement, including each party's patent portfolio relevance and business relationship
3. Definitions: Detailed definitions of technical terms, patent categories, fields of use, and other key terms used throughout the agreement
4. Grant of Rights: Mutual patent license grants, including scope, territory, and field of use restrictions
5. License Restrictions: Specific limitations on the license grants, including any excluded patents or applications
6. Term and Termination: Duration of the agreement and circumstances under which it may be terminated
7. Royalties and Payment: Financial terms, including whether the cross-license is royalty-free or involves payments
8. Representations and Warranties: Each party's assertions regarding patent ownership and right to license
9. Confidentiality: Protection of confidential information exchanged under the agreement
10. Patent Prosecution and Maintenance: Obligations regarding maintaining licensed patents and prosecuting applications
11. Enforcement: Rights and obligations regarding enforcement against third-party infringers
12. General Provisions: Standard legal provisions including governing law, dispute resolution, and assignment rights
1. Most Favored Licensee: Used when parties want to ensure they receive terms at least as favorable as those granted to other licensees
2. Grant-Backs: Include when parties want rights to improvements or modifications made by the other party
3. Patent Marking: Required when specific patent marking obligations need to be imposed
4. Technology Transfer: Include when technical assistance or know-how transfer is part of the agreement
5. Export Control: Required for cross-border agreements involving controlled technology
6. Competition Law Compliance: Include detailed competition law provisions when agreement could raise antitrust concerns
7. Change of Control: Include when parties want specific provisions regarding corporate restructuring or acquisition
8. Patent Challenge: Include provisions regarding the consequences of challenging patent validity
1. Schedule A - Licensed Patents: Comprehensive list of patents and patent applications covered by the agreement for each party
2. Schedule B - Technical Specifications: Detailed technical specifications and standards relevant to the licensed patents
3. Schedule C - Fields of Use: Detailed description of permitted and restricted fields of use for the licenses
4. Schedule D - Royalty Calculation: If applicable, detailed methodology for calculating any royalties or payments
5. Schedule E - Patent Marking Requirements: Specific requirements and formats for patent marking
6. Appendix 1 - Affiliate List: List of affiliated companies covered by the agreement
7. Appendix 2 - Compliance Requirements: Detailed compliance requirements and reporting procedures
Authors
Agreement
Background Patents
Confidential Information
Effective Date
Field of Use
Improvement Patents
Licensed Patents
Licensed Products
Net Sales
Patent Applications
Patent Rights
Patents
Prosecution
Subsidiary
Technical Information
Territory
Third Party
Valid Claim
Licensed Technology
Intellectual Property Rights
Manufacturing Rights
Have Made Rights
Derivative Works
Excluded Patents
Grant-Back Rights
Implementation
Necessary Claims
Patent Families
Registered Rights
Standards
Technical Specifications
Term
Trade Secrets
Material Breach
Background IP
Commercially Reasonable Efforts
Control
Dispute
Force Majeure Event
Governing Law
License Fee
Related Company
Royalty Period
Working Day
Grant of Rights
License Restrictions
Patent Prosecution
Royalties and Payment
Technical Support
Confidentiality
Representations and Warranties
Term and Termination
Assignment
Competition Law Compliance
Patent Marking
Quality Control
Record Keeping
Audit Rights
Infringement
Enforcement
Export Control
Force Majeure
Governing Law
Dispute Resolution
Notices
Amendment
Severability
Entire Agreement
Waiver
Third Party Rights
Further Assurance
Counterparts
Most Favored Nation
Grant-Back Rights
Change of Control
Patent Challenge
Technology Transfer
Regulatory Compliance
Technology & Electronics
Telecommunications
Automotive
Manufacturing
Pharmaceuticals
Biotechnology
Semiconductor
Consumer Electronics
Industrial Equipment
Software & Computing
Medical Devices
Aerospace & Defense
Legal
Intellectual Property
Research & Development
Technology Transfer
Business Development
Executive Leadership
Innovation
Patent Operations
Compliance
Technical Standards
Chief Technology Officer
Head of Intellectual Property
Patent Counsel
Legal Director
IP Strategy Manager
Chief Legal Officer
Technology Licensing Manager
Patent Attorney
Head of Research & Development
Innovation Director
Business Development Director
Chief Executive Officer
General Counsel
IP Portfolio Manager
Technology Transfer Officer
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