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Licensing Product Development Agreement

1800 South Wolf Road • Des Plaines, IL 60018 • Phone: 847-297-0744
Email: patentstoretail@aol.com • Website: www.patentstoretail.com

NON-EXCLUSIVE LICENSE AGREEMENT

THIS NON-EXCLUSIVE LICENSE AGREEMENT (the “Agreement”) is made and is effective as of Date (the “Effective Date”) by and between (“LICENSOR”), and Patents to Retail Partners, LLC (“PTR”), an Illinois limited liability company with a place of business at 1800 South Wolf Road, Des Plaines, IL. 60018 U.S.A.

WHEREAS LICENSOR represents, and covenants that LICENSOR is the sole owner of the entire right, title, and interest in and to U.S. Patent Number and generally characterized as (the “PRODUCT”).

WHEREAS, PTR desires a Non-Exclusive license (the “PTR License”), granting PTR the right to utilize the intellectual property related to the PRODUCT for purposes of selling or licensing the PRODUCT.

WHEREAS LICENSOR desires for PTR to have the PTR License, as more fully described below; and

WHEREAS, in consideration of the mutual promises and understandings hereinafter set forth, the Parties intending to be legally bound do hereby agree as follows:

LICENSING

(1) License. LICENSOR grants PTR to license and/or sell the PRODUCT subject to the restrictions and qualifications in this Agreement. LICENSOR shall facilitate any introductions and relationships necessary to facilitate licensing and/or sales by PTR. PTR has the right to negotiate prices for both production and sales and is entitled to purchase and/or sell the PRODUCT at any price determined by PTR.

2) Royalty Payment. On or before the fifteenth (15th) day of each month throughout the Term of this Agreement and any extensions thereto, PTR shall pay to LICENSOR a royalty of ten percent (10%) of PTR’s Gross Sales Price (defined below) for all sales derived from the PRODUCT in the preceding month (the “PTR Royalty”). “Gross Sales Price” means gross invoice price paid by third parties for purchase of the PRODUCT, less any allowances for defective or returned PRODUCT and, if applicable, shipping costs for return of defective or returned PRODUCT and deductions, such as volume rebates, cash disbursements for sales promotions, etc. No PTR Royalty payments are due on sales of the PRODUCT until PTR receives payment for such sales from a third party.

3) Development Fees. LICENSOR understands there is great risk and uncertainty in bringing new and untested products to the market, and PTR desires to commit its resources in attempting to bring the PRODUCT to market through representation to major retail outlets despite such risks. Licensor agrees to pay PTR $ upon the execution of this Agreement to compensate PTR for such development costs to facilitate market introductions (the "Development Fee"). If a retail outlet/potential buyer shows sufficient interest in LICENSOR'S PRODUCT, as determined in PTR'S sole discretion, then PTR will prepare drawings (including but not limited to, CAD, 3-D drawings, production drawings, and engineering drawings), and prepare a prototype and an animated video, all at NO additional cost above the Development Fee. If the Development fee is paid in installments, the timing of such installments shall be agreed to between LICENSOR and PTR as per the Invoice which will be sent upon execution of this Agreement. In no event shall any installment payment agreement exceed ninety (90) days following the Effective Date. If any installment payments are paid by recurring credit card charges, Licensor agrees that it will not cancel payment or otherwise request a refund from the card issuer after one hundred and twenty (120) days. If LICENSOR fails to make installment payments when due and/or within the ninety-day (90) time period, PTR reserves the right to cease all work being performed for LICENSOR until LICENSOR provides the required payment.

4) Books and Records. PTR shall keep true and acurate books of account showing: (i) the quantity of licensed Product tha PTR causes to be manufactured and the quantity sold, including, if applicable, the quantity manufactured and quantity sold by any sublicenses during the term of this Agreement; (ii) the selling price per item thereof for the quantities sold and a total dollar amount per item; and other data necessary for an accurate determination of the payments called for herein. Based on such data, PTR shall produce and provide to the LICENSOR a report (the 'Royalty Report') providing sales information about the sale of Product, including item numbers, dates, invoice numbers, quantity, selling price per item and total dollar amount of sales per item and due date for payment to LICENSOR. The Royalty Report shall be furnished to licensor monthly, on or before the fifteenth (15th) day of each month, throughout the term of this Agreement and any extensions thereto. Within thirty (30) days of a written request by LICESOR, PTR shal make its books of account relating to Prodct made, manufactured, or sold available to LICENSOR during regular business hours at its principal place of business or at the offices of its appointed representative to the extent necessary to permit verification of the Royalty Report. LICENSOR shall be responsible for all costs of such inspections and audits, unless it is revealed that PTR has underrepresented the Royalty (defined below) by more than ten percent (10%). In the event PTR has underpaid the Royalty (defined below) by more than ten percent (10%) . In the event PTR has underpid the Royalty in any amount, PTR shall pay to LICENSOR an amount of the underpayment within five (5) business days of notification from LICENSOR.

5) Term. This Agreement is valid between PTR and LICENSOR for 12 months from the date of this Agreement (the “Term”); during the Term PTR shall use its best reasonable efforts to present the PRODUCT to retail outlets and secure a purchase order through one or more such retail outlets.

GENERAL TERMS

6) Infringement. PTR and LICENSOR agree that either Party shall notify the other within ten business days upon discovery of a potentially infringing product that is being manufactured, sold, or otherwise disclosed by a third party. In the event a Party (the “Electing Party”) deems a product to be infringing with remedy required, the Electing Party alleging the infringement will provide notice (a “Infringement Notice”) to the other Party (the “Responding Party”). A Responding Party may elect to (i) participate in the action with the Electing Party, in which case the PTR and LICENSOR agree to share the costs of pursuing remedies, including litigation, on an equal basis so that both the LICENSOR and PTR are responsible to pay for one-half of the legal costs and litigation expenses and receive one-half of any recovery or (ii) elect not to participate in such action, which will absolve the Responding Party from any costs of the action, but also cause the Responding Party to forfeit any recovery from the action. A non-participating Responding Party agrees to provide all cooperation necessary to permit the Electing party to enforce rights, including but not limited to signing any necessary documents, providing any information necessary to ascertain certain damage and making any appearance personally or by their legal representation if so ordered by a court of competent jurisdiction or as reasonably necessary to aid in the prosecution of the case or to protect the interests of the non-participating Receiving Party, provided the Electing party pays all reasonable costs and expenses incurred by the non-participating Receiving Party, including, but not limited to, reasonable attorney’s fees incurred in such actions. LICENSOR and PTR further acknowledge that if the PTR desires non-participation in any infringement action, LICENSOR has the right to settle an infringement action by granting to the infringing party a Non-Exclusive license.

7) Sublicenses. PTR shall not grant any sublicenses in respect to the rights granted to it unless prior written consent of LICENSOR is obtained. Any sublicense granted by PTR would be subject to all covenants, terms, and conditions of this Agreement.

8) Litigation. This Agreement shall be interpreted in accordance with the laws of the State of Illinois. Venue for any litigation pursuant to this Agreement shall be, by agreement of the Parties, conducted in the proper court in Chicago, Cook County, Illinois. In the event of any controversy, claim or dispute between the parties arising out of or relating to this Agreement or the breach of this Agreement, the “prevailing party”, as that term is construed by Illinois law, shall be entitled, in addition to such other relief as may be granted, to a reasonable sum as and for attorney’s fees and related costs, which shall be determined by the court in that litigation or in a separate action brought for that purpose.

9) Derivatives. All products derivatives of PRODUCT shall be included in the terms of this Agreement as if such derivatives were the PRODUCT.

10) Notice. All notices under this Agreement shall be sent via certified mail as follows:

If to LICENSOR:
Name
Address
E Mail Address
Phone #

If to PTR:
Patents to Retail Partners, LLC
1800 South Wolf Road
Des Plaines, IL 60018
patentstoretail@aol.com
1-847-297-0744

11) Non-Solicit. LICENSOR shall not contact or solicit in any way the customers, buyers, representatives, employees, manufacturing partners, or other agents of the PTR during the term of this Agreement and for a period of two (2) years after expiration of the Agreement, except as expressly authorized by a PTR and only in the specific context of that express authorization. Any breach of this provision shall entitle the PTR to seek injunctive relief in any court of equity in the State of Illinois.

12) No Warranty. LICENSOR makes no warranties, express or implied, including, without limitation, any implied warranties of merchantability and/or fitness for a particular purpose, concerning the Product, however, LICENSOR shall provide accurate information about the Product to the PTR.

13) Binding. This Agreement shall be binding on the heirs, personal representatives, successors and or assigns or a Party, except as otherwise provided. LICENSOR shall not assign this Agreement without the written consent of the PTR.

14) Entire Agreement. This Agreement contains the entire agreement between the parties. Any prior agreements, promises, negotiations or representations not expressly set forth in this Agreement are of no force or effect. Any amendment to this Agreement shall be ineffective unless it is in writing and signed by both parties. If any term, provision, covenant, or condition if the agreement is held by a court of competent authority to be invalid, void, or unenforceable, the rest of the agreement shall remain in full force and effect and shall in no way be affected, impaired or invalidated.

15) Execution. This Agreement may be signed by the parties in one or more counterparts which when taken together shall constitute one single agreement binding on all the parties and their heirs, executors and or assigns. This Agreement may be executed in any number of counterparts, each of which shall be deemed to be an original, and facsimile signatures shall constitute and be deemed original signatures for the purposes of this Agreement.

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May 4, 2023 4:16 pm CDT

Licensing Product Development Agreement Uploaded by Andy Berger - andy@123axis.com IP 71.239.148.30