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Patent License Agreement

Patent License Agreement Template for Philippines

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Key Requirements PROMPT example:

Patent License Agreement

"I need a Patent License Agreement for exclusively licensing our pharmaceutical manufacturing process patent to a Philippine company, with quarterly royalty payments of 5% of net sales and a minimum annual guarantee of $100,000, starting March 2025."

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Document background
The Patent License Agreement is a crucial legal instrument used when a patent owner wishes to monetize their intellectual property by granting rights to others while maintaining ownership. This document, governed by Philippine law and regulated primarily by the Intellectual Property Code (Republic Act No. 8293) and the Technology Transfer Act (Republic Act No. 10055), is essential for technology transfer transactions in the Philippines. It should be used when a patent owner wants to authorize another party to make, use, or sell their patented invention while establishing clear terms for royalties, technical support, quality control, and compliance requirements. The agreement must carefully balance the interests of both parties while ensuring compliance with Philippine intellectual property laws, competition regulations, and technology transfer requirements.
Suggested Sections

1. Parties: Identification of the licensor and licensee, including their legal status and principal places of business

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

3. Definitions: Detailed definitions of technical terms, patent rights, territory, and other key terms used throughout the agreement

4. Grant of License: Scope of the license, including whether exclusive or non-exclusive, territory, field of use, and any restrictions

5. Financial Terms: License fees, royalties, payment terms, reporting requirements, and audit rights

6. Term and Termination: Duration of the agreement, renewal provisions, and circumstances for termination

7. Warranties and Representations: Statements regarding patent ownership, validity, and authority to enter into the agreement

8. Confidentiality: Protection of confidential information exchanged during the license relationship

9. Infringement: Rights and obligations regarding third-party infringement and defense of patent rights

10. Indemnification: Allocation of risks and responsibilities for claims arising from the use of the licensed patent

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

Optional Sections

1. Improvements: Used when parties want to address rights to future improvements or modifications to the licensed technology

2. Sublicensing Rights: Include when licensee is permitted to sublicense the patent rights to third parties

3. Technology Transfer: Required when technical assistance or know-how transfer is part of the agreement

4. Quality Control: Important for agreements where the licensed patent is used in manufacturing products

5. Export Control: Necessary for international licenses involving controlled technologies

6. Cross-Licensing Provisions: Include when both parties are licensing patents to each other

7. Joint Development: Used when parties will collaborate on further development of the patented technology

8. Government Rights: Required if the patent was developed with government funding or has government interests

Suggested Schedules

1. Schedule A - Licensed Patents: Detailed list of licensed patents including patent numbers, jurisdictions, and status

2. Schedule B - Technical Specifications: Technical details and specifications of the licensed technology

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

4. Schedule D - Territory Definition: Detailed description of geographic territories covered by the license

5. Schedule E - Performance Milestones: Specific technical or commercial milestones to be achieved by the licensee

6. Appendix 1 - Form of Royalty Report: Template for periodic royalty reporting

7. Appendix 2 - Quality Standards: Specific quality requirements for licensed products or processes

8. Appendix 3 - Technology Transfer Plan: Detailed plan for any required technology transfer or training

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
Confidential Information
Effective Date
Field of Use
Improvements
Licensed Patents
Licensed Products
Licensed Process
Licensed Technology
Net Sales
Patent Rights
Patent Applications
Proprietary Information
Royalty Period
Subsidiary
Technical Information
Territory
Term
Third Party
Valid Claim
Working Day
Intellectual Property Rights
Know-How
Manufacturing Process
Quality Standards
Regulatory Approvals
Sublicense
Technology Transfer
Trade Secrets
Commercial Scale
Gross Revenue
Infringement
Industrial Property Rights
Patent Prosecution
Technical Documentation
Royalty-Bearing Products
Improvements
Patent Expenses
Force Majeure
Clauses
Definitions
Grant of Rights
License Scope
Territory
Exclusivity
Royalties
Payment Terms
Confidentiality
Intellectual Property Rights
Warranties
Representations
Indemnification
Term
Termination
Assignment
Sublicensing
Quality Control
Technical Support
Improvements
Patent Maintenance
Infringement Protection
Technology Transfer
Regulatory Compliance
Record Keeping
Audit Rights
Force Majeure
Governing Law
Dispute Resolution
Notices
Entire Agreement
Amendment
Severability
Non-Competition
Export Control
Reporting Requirements
Relevant Industries

Technology

Pharmaceuticals

Manufacturing

Biotechnology

Electronics

Telecommunications

Automotive

Chemical

Healthcare

Research and Development

Software Development

Industrial Engineering

Relevant Teams

Legal

Intellectual Property

Research and Development

Business Development

Technology Transfer

Innovation

Commercial

Corporate Development

Licensing

Patents

Product Development

Technical Operations

Relevant Roles

Intellectual Property Counsel

Patent Attorney

Licensing Manager

Technology Transfer Officer

Chief Technology Officer

Research and Development Director

Innovation Manager

Legal Counsel

Business Development Manager

Patent Engineer

Intellectual Property Manager

Commercial Director

Chief Legal Officer

Technology Commercialization Manager

Industries
Intellectual Property Code of the Philippines (Republic Act No. 8293): The primary legislation governing intellectual property rights in the Philippines, including patents, their protection, licensing, and enforcement
Technology Transfer Act of 2009 (Republic Act No. 10055): Provides the framework for technology transfer, commercialization of intellectual property, and the rights and obligations in technology transfer arrangements
Philippine Competition Act (Republic Act No. 10667): Regulates anti-competitive practices and may affect certain provisions in patent license agreements, particularly exclusive licensing arrangements
Civil Code of the Philippines (Republic Act No. 386): Provides the general framework for contracts, obligations, and commercial relationships that will govern the basic elements of the license agreement
Foreign Investments Act of 1991 (Republic Act No. 7042): May be relevant if the license agreement involves foreign parties and technology transfer from abroad
Rules and Regulations on Voluntary Licensing (IPOPHL Administrative Order No. 2020-025): Specific regulations from the Intellectual Property Office of the Philippines governing voluntary licensing arrangements
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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