Patent Licence Agreement for the United Kingdom

Patent Licence Agreement Template for England and Wales

A Patent Licence Agreement under English and Welsh law is a legally binding contract that grants permission to use, manufacture, sell, or otherwise exploit a patented invention. This agreement establishes the terms and conditions under which the patent owner (licensor) allows another party (licensee) to use their patented technology, including scope of rights, territorial limitations, payment terms, and duration. It operates within the framework of the Patents Act 1977 and related UK intellectual property legislation.

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What is a Patent Licence Agreement?

The Patent Licence Agreement is a crucial document for commercializing intellectual property rights in England and Wales. It's used when a patent owner wishes to monetize their innovation by allowing others to use their patented technology while retaining ownership. This agreement typically covers essential elements such as licence scope, territory, royalty structures, technical support, and improvement rights. It must comply with the Patents Act 1977 and competition laws, making it suitable for various commercial arrangements from simple licensing to complex cross-border technology transfers.

What sections should be included in a Patent Licence Agreement?

1. Parties: Identification and details of the licensor and licensee

2. Background: Context of the agreement, including patent details and purpose of the licence

3. Definitions: Key terms used throughout the agreement including Patents, Licensed Products, Territory, and other defined terms

4. Grant of Licence: Scope and nature of the licence including exclusivity status, territory restrictions, and field of use

5. Payment Terms: Royalties, fees, payment mechanisms, and reporting requirements

6. Licensee Obligations: Core obligations including exploitation, quality control, and record-keeping

7. Protection of Patents: Provisions for maintaining and enforcing patent rights

8. Warranties and Representations: Standard warranties regarding patent ownership, validity, and right to license

9. Term and Termination: Duration of agreement and grounds for termination

10. Post-Termination: Rights and obligations that survive termination

11. General Provisions: Standard boilerplate clauses including governing law, notices, and assignment

What sections are optional to include in a Patent Licence Agreement?

1. Sub-licensing Rights: Used when licensee is permitted to grant sub-licenses to third parties

2. Improvements: Provisions dealing with future improvements to the patented technology

3. Technical Support: Terms for provision of technical assistance and know-how transfer

4. Manufacturing Rights: Specific provisions relating to manufacturing permissions and restrictions

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

What schedules should be included in a Patent Licence Agreement?

1. Schedule 1 - Licensed Patents: Detailed list of patents and patent applications covered by the licence

2. Schedule 2 - Royalty Calculations: Detailed methodology for calculating royalties including base rates and adjustments

3. Schedule 3 - Technical Information: Technical specifications and know-how details to be provided

4. Schedule 4 - Territory Definition: Detailed description of licensed territories and any restrictions

5. Schedule 5 - Quality Standards: Quality control requirements and specifications for licensed products

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

Jurisdiction

England and Wales

Publisher

Genie AI

Cost

Free to use
Relevant legal definitions
Clauses
Industries

Patents Act 1977: Primary UK legislation governing patents, covering patent rights, validity requirements, licensing provisions, assignments, and infringement remedies

Competition Act 1998: Regulates competition law aspects of patent licensing, including anti-competitive agreements and abuse of dominant market position

Technology Transfer Block Exemption Regulation: Retained EU law providing safe harbor for certain technology licensing agreements from competition law restrictions

Law of Property (Miscellaneous Provisions) Act 1989: Governs formal requirements for contracts and property transfers, relevant to patent licensing agreements

Copyright, Designs and Patents Act 1988: Relevant for related intellectual property rights that might be involved in the patent licensing arrangement

Trade Marks Act 1994: May be relevant if the patent license includes associated trademark rights or branding elements

Paris Convention: International treaty establishing core principles for intellectual property protection, including patent rights and priority rights

Patent Cooperation Treaty (PCT): International patent law treaty providing unified procedure for patent filing across member countries

European Patent Convention: International treaty establishing the European patent system and harmonized patent laws

UK IPO Registration Requirements: Regulatory requirements for recording patent licenses with the UK Intellectual Property Office

Competition and Markets Authority Guidelines: Regulatory guidance on competition law compliance for intellectual property licensing

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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