To be used by a product inventor/developer who wants to license a company to manufacture and sell their products.
This Manufacturing & Selling Licence Agreement can be used by a product inventor, or developer, who wants to license a company to manufacture and sell their products.
This business contract template, available in a “Download Now” Word format, allows the manufacturer to produce the products in return for giving the inventor a licence fee and royalties on sale.
The wording of the Manufacturing & Selling Licence Agreement suggests that the business contract period will be fairly long and that the product developer will help the manufacturer to develop the products. The licence agreement also outlines the possibility of improvements to the products.
This contract template has 15 clauses, which outline the terms of the manufacturing licence agreement, and these include:
For further details of the terms included in this Manufacturing & Selling Licence Agreement, see the ‘Contents’ tab above.
Drafted by solicitors for straightforward completion, the “Download Now” Manufacturing & Selling Licence Agreement includes guidance on how to fill the contract template in.
Manufacturing & Selling Licence Agreement Note:
Manufacturing & Selling Licence Agreement is supplied by ContractStore.com.
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For obvious reasons we can't show you the actual contract template before you purchase it, but outlined below are the explanatory notes that go with it. These explain the thinking behind it, and should give you a good idea of the terms of the business contract.
Manufacturing & Selling Licence Agreement
Dealing with the clauses, by reference to their numbers:
Some defined terms are set out here. Note that the definition of Intellectual Property Rights assumes that existing patents and trade marks will be listed in a Schedule to the Manufacturing & Selling Licence Agreement.
This establishes the main purpose of the Licence Agreement, namely of a patent owner, the Licensor, to give an exclusive licence to the Licensee. The right to sub-licence is contemplated by this clause, but it may not always be appropriate: the Licensor may want to deal directly with the company involved in the manufacture and marketing of the product. By having a sub-licence, a third party comes in at one removed.
An arrangement such as this will need to be long-term, especially if the development phase before the product is ready for the market is going to involve substantial time and expense on the part of the Licensee. We have provided here for ten years, but 20 years is probably not uncommon.
4. FEES & ROYALTIES
Our draft provides for the Licensee to make an up-front payment on signing the agreement: the Licensor will see this as some early return on his own effort in developing his idea and applying for the patents. The Licensor will then receive, for the duration of the Licence Agreement, a royalty calculated as a percentage of the sales price. We have specified the ex-works price in this draft. If the Licensee is a retailer as well as a manufacturer, then a price which takes account of the retail price might be appropriate.
We have not, in this Licence Agreement, provided for any minimum royalty, although that is sometimes appropriate: a Licensor, before entering into an agreement such as this, needs to be satisfied that the Licensee does intend to devote effort to the products. If some other product came along which, for example, was cheaper to develop, the Licensor might have an effective agreement with a Licensee who only manufactures and sells much smaller quantities of the product each year than had originally been planned, or even none at all. By specifying a minimum annual royalty, at least a basic return is guaranteed to the Licensor. If such a clause is contemplated, something on the following lines could be used:
"The minimum royalty in each year shall be [£ ] and if royalties payable under this clause are less than the minimum royalty in a year, the Licensee shall within 30 days from the end of the year pay the shortfall to the Licensor. However, the minimum royalty will not be payable in the first [two] years."
The purpose of the final sentence is to cover the development phase of the products.
5. RECORDS & ROYALTY PAYMENTS
This provides for royalties to be accounted for on a quarterly basis, with interest payable on late payment amounts. It also gives the Licensor the right to have access to the Licensee's accounts - an important reserve provision to allow verification should this be thought necessary at any time.
6. DEVELOPMENT PROGRAMME & MANUFACTURE
Development of a new product is not an entirely straightforward matter and the Licensor's input is usually going to be needed. This clause provides for this, but it does limit the Licensor's commitment of free time. We have provided for the Licensor to be paid a consultancy fee in certain circumstances.
In today's global market, a manufacturer of a successful product will be thinking about overseas markets. We have provided, in this case, for the basic territory to be specified in clause 1.
Sometimes it is in the interests of the parties for the Licensee to have an option to extend the territory. By granting an option the Licensor gets a chance to see whether the Licensee will perform in the original territory and, if so, the Licence can be extended, probably on payment of an option fee, to additional territories. From the Licensor's point of view, one successful licensee is probably easier to deal with than several. On the other hand, the opportunity of dealing with different manufacturers in different areas has attractions - apart from anything else, a UK manufacturer, however good his wholesale outlets, may not have any marketing capacity in the United States whereas a company based there is more likely to know that market.
There is always a possibility that either party in an arrangement like this wants to make changes or improvements and various questions arise, not least the question as to who owns the patent in any improvement. Our agreement provides, first of all, that there will not be any modifications without the Licensor's consent, which will not be unreasonably withheld. Secondly, as this is a long term arrangement, we have provided for co-ownership of the improvements. This is a complex area and specialist advice - from a patent agent as well as a lawyer - could be appropriate to deal with this provision.
Clearly, this is an agreement where confidentiality is quite important and an appropriate clause has been included.
10. INTELLECTUAL PROPERTY RIGHTS
This clause contains confirmation from the Licensor that the Licensor is the owner of all intellectual property rights relevant to the Manufacturing & Selling Licence Agreement and gives the Licensee the right to use them solely for the purpose of the licence. The Licensee is prohibited from registering any of the Intellectual Property Rights without the Licensor's consent.
The Licensor also has the right to register patents and other rights in the Territory and the Licensee is required to provide assistance if required. It is, in fact, usually recommended that a Licensor should take steps to register its rights in any country where protection is appropriate.
11. INFRINGEMENT OF INTELLECTUAL PROPERTY RIGHTS
The first sub-clause deals with a situation where some third party may be infringing the Licensor's Intellectual Property Rights and it is in the interests of both Licensor and Licensee to act to prevent that infringement. The second sub-clause deals with the possibility of a claim by a third party that the Licensor's Intellectual Property Rights infringe his intellectual property rights. In this second situation, the Licensee may well take the view that the Licensor should be responsible for defending that claim and should indemnify the Licensee against any losses it incurs: the Licensor has, after all, in 10.1 given what amounts to a warranty that no third party rights have been infringed.
This contains fairly standard wording allowing either party to terminate if the other commits a material breach of the Manufacturing & Selling Licence Agreement or becomes insolvent. We have given the Licensor the right to terminate if the Licensee does not get the products into the market within a specified period. This should act as an incentive to the Licensee and, if, for any reason, it does not go ahead with manufacturing, the Licensor can withdraw. In those circumstances the Licensor might want the right to buy any tooling equipment which has been developed by the Licensee and, if this is required, some additional wording should be inserted.
We have not given the Licensee the right to terminate but, with a long-term arrangement, a manufacturer may well require this right, albeit after a reasonable period of notice. For example, it may undergo some re-organisation of its business which makes the Product of marginal or no interest to it. Alternatively, sales may not justify the production costs or there may be competing products developed which are far superior to the products which are the subject of this Licence Agreement.
On termination, after the manufacturing process has got underway, there are likely to be products which are ready for sale or in the course of manufacture and our clause deals with a run-off period during which royalties will continue to be payable. An alternative could be for the Licensor to acquire all products which are already manufactured at the termination date and then to sell them himself.
This contains a number of standard provisions designed to regulate the arrangements between the parties.
13.1 Notice. It is usually sensible to include a provision dealing with notices, specifying that they should be in writing and the method and timing of delivery.
13.2 Assignment. An agreement such as this is somewhat personal in nature and we have provided that neither party shall have the right to transfer or assign its rights to any third party without the other's consent.
13.3 Entire Agreement. Such a clause makes it clear that the terms of this Licence Agreement supersede any previous agreements, discussions or understandings the parties may have had.
13.5 Governing Law & Disputes. If both Licensor and Licensee are in the same country the law of that country would normally govern the contract and the governing law clause is of somewhat academic interest. Where, however, there is a cross-border element - e.g. a Licensor in the Czech Republic and a manufacturer in England - a governing law clause is more relevant. The governing law is the law to which the parties - and a court or arbitrator - must refer when a dispute arises involving the legal interpretation of the Licence Agreement. Disputes do not necessarily have to be referred to the courts of the country whose governing law is used - hence the reference to the courts as well as the governing law.