This Non-Exclusive Patent License agreement is essential for businesses seeking to monetize their patent portfolio or access patented technology in Hong Kong and potentially broader Asian markets. It provides a structured framework for technology licensing while allowing the patent owner to maintain control over their intellectual property and grant similar rights to other parties. The document is particularly relevant in Hong Kong's business environment, which serves as a major intellectual property hub in Asia and operates under a sophisticated common law system. The agreement typically includes comprehensive provisions covering license scope, territory restrictions, royalty structures, quality control measures, and compliance with Hong Kong's Patents Ordinance and related regulations. It's commonly used in cross-border technology transfers, manufacturing arrangements, and research and development collaborations where exclusive rights are not required or desired.
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1. Parties: Identification of the licensor and licensee with full legal names and registered addresses
2. Background: Context of the agreement, including ownership/right to license the patents and purpose of the licensing arrangement
3. Definitions: Detailed definitions of key terms used throughout the agreement, including 'Licensed Patents', 'Territory', 'Field of Use', and 'Net Sales'
4. Grant of License: Specific terms of the non-exclusive license grant, including territorial scope and field of use restrictions
5. License Fees and Royalties: Financial terms including upfront payments, ongoing royalties, calculation methods, and payment terms
6. Reports and Auditing: Requirements for reporting sales, calculating royalties, and rights to audit licensee's relevant records
7. Intellectual Property Protection: Obligations regarding patent maintenance, infringement actions, and prosecution of patent applications
8. Representations and Warranties: Standard warranties regarding patent ownership, right to license, and non-infringement
9. Term and Termination: Duration of the agreement and circumstances allowing for termination
10. Confidentiality: Obligations regarding protection of confidential information exchanged under the agreement
11. General Provisions: Standard boilerplate clauses including governing law, dispute resolution, and entire agreement
1. Improvements: Terms regarding rights to technological improvements made by either party - include when future developments are expected
2. Sublicensing Rights: Terms governing the licensee's right to sublicense - include if sublicensing might be needed
3. Technology Transfer: Provisions for technical support and knowledge transfer - include if technical assistance is part of the deal
4. Quality Control: Standards and inspection rights for licensed products - include for manufacturing licenses
5. Export Control: Compliance with export regulations - include for international licensing
6. Marking Requirements: Requirements for patent marking on products - include for manufacturing licenses
7. Regulatory Compliance: Specific regulatory obligations - include for regulated industries
8. Competition Law Compliance: Specific provisions ensuring compliance with competition laws - include for licenses with market impact
1. Schedule 1 - Licensed Patents: Detailed list of licensed patents including patent numbers, jurisdictions, and status
2. Schedule 2 - Royalty Calculations: Detailed methodology for calculating royalties, including examples
3. Schedule 3 - Technical Specifications: Technical details of the licensed technology and any implementation requirements
4. Schedule 4 - Reporting Template: Template for regular sales and royalty reports
5. Schedule 5 - Approved Sublicensees: List of pre-approved sublicensees (if applicable)
6. Appendix A - Patent Family Tree: Visual representation of patent families and their relationships
7. Appendix B - Form of Royalty Report: Standardized format for royalty reporting
Authors
Relevant legal definitions
Clauses
Relevant Industries
Technology
Manufacturing
Pharmaceuticals
Biotechnology
Electronics
Telecommunications
Automotive
Chemical
Consumer Goods
Medical Devices
Clean Energy
Industrial Equipment
Semiconductor
Relevant Teams
Legal
Intellectual Property
Research and Development
Business Development
Technology Transfer
Commercial Operations
Technical Operations
Licensing
Innovation
Patent Administration
Corporate Strategy
Relevant Roles
Chief Technology Officer
Intellectual Property Counsel
Patent Attorney
Licensing Manager
Research and Development Director
Chief Legal Officer
Commercial Director
Business Development Manager
Technology Transfer Officer
Innovation Manager
Chief Executive Officer
Head of Intellectual Property
General Counsel
Technical Director
Vice President of Licensing
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