NON-EXCLUSIVE LICENSE AGREEMENT
1800 South Wolf Road • Des Plaines, IL 60018Phone: 312.416.8619www.patentstoretail.com
THIS NON-EXCLUSIVE LICENSE AGREEMENT (the “Agreement”) is made and is effective as of the last date of signature hereto (the “Effective Date”) by and between (“LICENSOR”), and Patents to Retail Partners, LLC (“PTR”), a limited liability company with a place of business at 1800 South Wolf Road, Des Plaines, IL 60018.
WHEREAS, LICENSOR represents and covenants that he is the sole owner of the entire right, title and interest in and to U.S. Patent Number and generally characterized as (“Product”);
WHEREAS, PTR desires to retain an Non-Exclusive license (the “PTR License”) right to offer the intellectually property rights for purposes of licensing the PRODUCT.
WHERAS, LICENSOR desires for PTR to have the PTR License, as more fully described below;
WHEREAS, In consideration of the mutual promises and understandings hereinafter set forth, the Parties intending to be legally bound do hereby agree as follows:
(1) License. LICENSOR grants to PTR the rights to License the PRODUCT. PTR will rely on LICENSOR’S exiting information, production and importation methods for production of the PRODUCT, and LICENSOR shall facilitate any introductions and relationships necessary to facilitate licensing/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 the LICENSOR a royalty of PTR’s Gross Sales Price (defined below) for all products sold and paid for that were derived from Product in the preceding month (the “PTR Royalty”). “Gross Sales Price” means gross invoice price paid by third parties for purchase of 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 for a Product or products made from 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 understands there are significant costs involved in representing a product to retail outlets and buyers, including travel, accommodations, drawings if requested including but not limited to CAD, 3-Drawings, Production Drawings, Engineering Drawings, Virtual Prototypes and Animated Videos. Licensor agrees to pay PTR ___________________________ upon the execution of this Agreement to compensate PTR for such development costs.
4) Books and Records. PTR shall keep true and accurate books of account showing: (i) the quantity of licensed Product that 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 the LICENSOR on a monthly basis, 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 LICENSOR, PTR shall make its books of account relating to Product 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 any and 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 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 the License for 1 year from the date of this Agreement (the “Term”) unless (i) PTR does not sell a Product or a product derived from the Product for three consecutive months; (ii) In the event PTR is in material default with respect to compliance with any of the conditions or obligations of this Agreement, LICENSOR shall have the right, after seven (7) days written notice of such default to PTR pursuant to this Agreement, to terminate this Agreement forthwith, unless prior thereto, unless PTR (a) contests the default, and provides evidence refuting the nature of the default (b) remedies such default in a commercially reasonable manner and provided written confirmation of the cure to LICENSOR or (c) starts the cure for such default, if such cure requires more than seven (7) days to effectuate; or (iii) by mutual agreement of PTR and LICENSOR. This agreement shall automatically renew each year on the anniversary date of this Agreement unless a Party provides notice to the other party no less than thirty (30) days prior to the end of a Term that it desires the Agreement to end at the conclusion of the then-current Term.
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 desire 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 is obtained by LICENSOR. Any sublicense granted 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:
Patents to Retail Partners, LLC 1800 South Wolf Road Des Plaines, IL 60018 firstname.lastname@example.org/3124168619
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 jurisdiction 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.
[Signatures on Following Page]
Andy L Berger
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Signed by Andy Berger
Signed On: September 23, 2020
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Document Name: NON-EXCLUSIVE LICENSE AGREEMENT
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