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1. Parties: Identification of the licensor and licensee, including full legal names and registered addresses
2. Background: Context of the agreement, including reference to the original IP transfer or assignment that necessitates this license back arrangement
3. Definitions: Detailed definitions of key terms used throughout the agreement, including specific IP rights, territory, and technical terms
4. License Grant: Specific details of the license being granted back, including scope, territory, and whether exclusive or non-exclusive
5. Term and Termination: Duration of the license and circumstances under which it can be terminated
6. Payment Terms: Details of any royalties, fees, or other consideration for the license
7. IP Protection and Maintenance: Obligations regarding protection and maintenance of the licensed IP rights
8. Improvements and Modifications: Rights and obligations regarding improvements or modifications to the licensed IP
9. Confidentiality: Obligations to maintain confidentiality of sensitive information
10. Warranties and Representations: Standard warranties regarding IP ownership and right to license
11. Liability and Indemnification: Allocation of risks and responsibilities between parties
12. General Provisions: Standard boilerplate clauses including governing law, notices, and assignment
1. Quality Control: Required when the license involves trademarks or brand-related IP
2. Technical Support: Include when the licensor needs to provide technical assistance or knowledge transfer
3. Export Control: Required when the licensed IP is subject to export control regulations
4. Source Code Escrow: Include for software-related licenses where source code access might be necessary
5. Field of Use Restrictions: Include when the license back is limited to specific applications or industries
6. Sublicensing Rights: Include when sublicensing is permitted under specific conditions
7. Performance Obligations: Include when minimum usage or commercialization requirements are needed
8. Audit Rights: Include when verification of royalty payments or usage is required
1. Schedule 1 - Licensed IP: Detailed description of the intellectual property being licensed back
2. Schedule 2 - Technical Specifications: Technical details and specifications of the licensed technology
3. Schedule 3 - Royalty Calculations: Detailed methodology for calculating royalties or other payments
4. Schedule 4 - Quality Standards: Quality control requirements and standards for licensed products
5. Schedule 5 - Territory: Detailed description of the geographic territory covered by the license
6. Appendix A - Reporting Templates: Standard forms for usage reports and royalty calculations
7. Appendix B - Approval Procedures: Procedures for obtaining approvals for modifications or new uses
Affiliate
Business Day
Commencement Date
Confidential Information
Effective Date
Field of Use
Hong Kong
Improvements
Initial Term
Intellectual Property Rights
Know-How
Licensed IP
Licensed Products
Licensed Technology
Net Sales
Original Agreement
Patents
Permitted Purpose
Registered IP
Related Rights
Renewal Term
Royalty
Specifications
Technical Information
Term
Territory
Third Party
Trade Marks
Use
Working Day
Background IP
Derivative Works
Documentation
Excluded Field
Implementation Period
Licensed Materials
Modifications
Quality Standards
Renewal Notice
Source Code
Technical Assistance
Technology
Unregistered IP
Royalties and Payments
Term and Termination
Intellectual Property Rights
Confidentiality
Warranties and Representations
Quality Control
Territory Restrictions
Improvements
Technical Support
Reporting and Audit
Sub-licensing
Competition Law Compliance
Assignment and Transfer
Force Majeure
Governing Law and Jurisdiction
Dispute Resolution
Notices
Liability and Indemnification
Insurance
Export Control
Data Protection
Amendments
Severability
Entire Agreement
Third Party Rights
Counterparts
Further Assurance
Waiver
Non-Competition
Performance Obligations
Technology
Pharmaceuticals
Manufacturing
Telecommunications
Biotechnology
Software Development
Electronics
Automotive
Research and Development
Healthcare
Consumer Goods
Industrial Equipment
Legal
Intellectual Property
Research and Development
Technology Transfer
Business Development
Commercial
Licensing
Innovation
Corporate Development
Patents
Chief Technology Officer
IP Counsel
Legal Director
Head of Research and Development
Licensing Manager
Patent Attorney
Chief Legal Officer
Technology Transfer Officer
Innovation Director
Commercial Director
Head of Intellectual Property
Business Development Manager
Research Director
General Counsel
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