Description Clause - as provided in the Recital to the Licence Agreement

The Licensor is at the date of this Agreement, the registered proprietor and beneficial owner of the [patent applications] and the beneficial owner of the [know how relating to the technology described herein]. The Licensee wishes to obtain an [exclusive/non-exclusive/sole] licence to use such technology and develop and commercialise the Product (as defined herein).

"Grant" Clause

(a) The Licensor grants to the Licensee an [exclusive/non-exclusive/sole] right and licence under the [Licensed Patent Rights and Licensed Know How] in the [Field of Use] to develop, make, have made, use, import, market, sell, have sold or otherwise dispose of the [Product] [world-wide or in the Territory].
(b) The Licensee may sub-licence to a third party the rights granted to it under (a) above but only on such terms and conditions mutandis as those set out in this Agreement and which are applicable to such sub-licensees.
(c) The Licensee shall be responsible to the Licensor for the acts and omissions of any sub-licensee of the Licensee and for the acts and omissions of any sub-licensee (whether direct or indirect) of a sub-licensee of the Licensee.  For the avoidance of doubt, the grant of a sub-licence by the Licensee of rights granted to the Licensee under this Agreement shall not relieve the Licensee of any of its obligations under this Agreement.

Consideration Clause

The Licensee shall pay to the Licensor the following sums in consideration of the rights granted to the Licensee under this Agreement:

(a)  A fee of [INSERT FIGURE] payable within [30 days] of the Commencement Date.

AND/OR

(b) Royalties calculated at the Royalty Rate (as defined) and payable [monthly/quarterly] in respect of each [Product]:
(i) Sold - when invoiced or paid for or installed or delivered to a customer, whichever first occurs;
(ii) Supplied by the Licensee to any person - when installed or delivered to such person, whichever first occurs.

(c) Where the Product is sold in a currency other than Euro, the rate of exchange to be used for converting such other currency into Euro shall be the rate at which such other currency can be sold for Euro at Bank Ceannais na hEireann in Dublin at the close of business on the last working date for the period for which payment is to be made.
(d) If any sums are unpaid by the Licensee on the dates specified in this Clause then the Licensor(s) shall be entitled to charge the Licensee interest on the amount unpaid at the rate of [INSERT FIGURE] per cent per annum above the Bank Ceannais na hEireann base rate from time to time until payment in full is made. 
(e) All payments to the Licensor(s) under the terms of this Agreement are expressed exclusive of value added tax howsoever arising.

Term and Renewal of the Licence

This Agreement shall commence on the Commencement Date and shall continue in force until the [expiry of the last to expire of the Licensed Patent Rights], [or if being patent applications, until there is no further possibility of any of such patent applications proceeding to grant][or INSERT DATE] and thereafter indefinitely, unless termination by either party on giving [30 days] written notice of termination.

Warranty Clause

The Licensor represents and warrants to the Licensee that they own the right, title and interest in the [Licensed Patent Rights] or is otherwise authorised to licence the [Licensed Patent Rights] to the Licensee on the terms set out herein.

The Licensor hereby represents and warrants to the Licensee that the Licensor has no knowledge of any prior claim in relation to the [Licensed Patent Rights] and to its knowledge (actual or constructive) no litigation is pending in relation to the title to the [Licensed Patent Rights]. The Licensor has no notice that any third party intends to commence legal proceedings in relation to the [Licensed Patent Rights].

The Licensor represents and warrants to the Licensee that the [Licensed Patent Rights] will not infringe the rights of any third party.

Indemnity Clause

(a) Licensee - The Licensee shall indemnify and hold harmless the Licensor from and against any and all third party claims, demands, losses, damages and reasonable expenses (including, without limitation, reasonable legal fees) arising from or in connection with any use, sale or supply by the Licensee or its sub-licensees of the [Product], except to the extent that any such claims, demands, losses, damages and expenses result from the negligence of the Licensor or the breach of the Licensor.

(b) Licensor - The Licensor will indemnify the Licensee against any and all damages and costs awarded against the Licensee or its sub-licensees of the [Product] by a court in Ireland in respect of any claim by a third party alleging infringement of its intellectual property right, resulting from use, copying and exploitation of the [Licensed Patent Rights].

Infringement claims against Third Parties

In the event that unlicensed activities are carried on by a third party which could constitute an infringement of the [Licensed Patent Rights], the party becoming aware of such matters shall notify the other and the Licensee shall join the Licensor in taking all steps as in the total discretion of the Licensor is necessary to protect the Licensor's rights under the [Licensed Patent Rights].

Termination Clause

The Licensor may terminate this Agreement, without notice or liability, in the following circumstances:-
(a) The Licensee fails to make any payment due under this Agreement when it becomes due;
(b) The Licensee ceases or threatens to cease to carry on business;
(c) The Licensee goes into liquidation or an administrative receiver or receiver and manager or administrator is appointed for the Licensee or its assets or the Licensee enters into a voluntary arrangement with its creditors or suffers any similar insolvency process or process which affords the Licensee protection from its creditors.

Each of the parties shall have the right to terminate this Agreement upon giving [30 days] written notice of termination to the other (the "Defaulting Party") upon the occurrence of any of the following events at any time during this Agreement:
(a) the Defaulting Party commits a material breach of this Agreement which in the case of a breach capable of remedy has not been remedied within 30 days of the receipt by it of a notice identifying the breach and requiring its remedy.

Confidentiality Clause

The Parties each undertake and agree to:
(a) only use, copy or otherwise replicate the Confidential Information for the purposes envisaged under this Agreement and not to use the same for any other purpose whatsoever;
(b) ensure that only those of its officers and employees who are directly concerned with the carrying out of this Agreement have access to the Confidential Information on a strictly applied "need to know" basis and are informed of the secret and confidential nature of it;
(c) keep the Confidential Information secret and confidential and shall not directly or indirectly disclose, publish, transfer, disseminate, copy or permit to be disclosed the same to any third party for any reason without the prior written consent of the Disclosing Party.
The obligations of confidence referred to above shall not extend to any Confidential Information which:
(a) is or becomes generally available to the public otherwise than by reason of breach by a Recipient Party of the provisions of this Clause;
(b) is known to a Recipient Party and is at its free disposal (having been generated independently by the Recipient Party or a third party in circumstances where it has not been derived directly or indirectly from the Disclosing Party's Confidential Information);
(c) is subsequently disclosed to the Recipient Party without obligations of confidence by a third party owing no such obligations to the Disclosing Party in respect of that Confidential Information;
(d) is required by law to be disclosed (including as part of any regulatory submission or approval process) and then only when prompt written notice of this requirement has been given to the Disclosing Party so that it may, if so advised, seek appropriate relief to prevent such disclosure provided always that in such circumstances such disclosure shall be only to the extent so required and where practicable shall be subject to prior consultation with the Disclosing Party with a view to agreeing timing and content of such disclosure.
The obligations of the Parties under this Clause shall survive the expiration or termination of this Agreement for whatever reason.

Governing Law and Jurisdiction Clauses

This Agreement shall be governed by and interpreted in accordance with the laws of Ireland and the Parties hereby submit to the [exclusive/non-exclusive] jurisdiction of the Irish Courts.

About This Guide and Beauchamps Solicitors

This Guide has been produced by TechSearch in conjunction with Beauchamps Solicitors.

Beauchamps is one of Ireland’s leading law firms. Its indigenous and international clientbase
is wide, with clients being engaged in various sectors including engineering, pharmaceuticals, chemicals and IT. It has a strong reputation in the IP field, with expertise in contentious and non-contentious matters particularly the protection and exploitation of IP rights. Beauchamps is
recognised internationally for its work. Legal excellence and commercial awareness are the cornerstones of its practice

Beauchamps Solicitors
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Dublin 2, Ireland
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www.beauchamps.ie