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Cross license agreements, sometimes called “patent pools”, are legal contracts used for intellectual property. In this agreement, all parties involved are granted rights to the specified intellectual property which can be a piece of technology, a product, or research results. Cross licenses are common between companies who have patents over different pieces of the same product. Cross license agreements are beneficial for both parties and help avoid lawsuits over patent infringement. Both parties benefit from the use of the intellectual property so neither company needs to waste time developing new independent technology. In addition, cross license agreements speed up the production process.
Below is a list of common sections included in Cross License Agreements. These sections are linked to the below sample agreement for you to explore.
CROSS LICENSE AGREEMENT
This CROSS LICENSE AGREEMENT (this “ Agreement ”) is made and entered into this 14 th day of February, 2011, and effective as of February 1, 2010 (the “ Effective Date ”), by and between Loyalty Alliance Enterprise Corporation, a company organized and existing under the laws of the Cayman Islands and its Affiliates other than PayEase and its subsidiaries (hereinafter referred to as “ LA ”), and PayEase Corp., a corporation organized and existing under the laws of the State of Delaware and its Affiliates other than LA and its subsidiaries (“ PayEase ”). LA and PayEase are referred to herein individually each as a “ Party ” and collectively as the “ Parties ”.
WHEREAS, pursuant to the Master Separation Agreement entered into by and between LA and PayEase dated January 21, 2010 (the “Separation Agreement ” ), the Parties have agreed to separate the Transferred Business (as defined in the Separation Agreement) from PayEase;
WHEREAS, it is the intent of the Parties that PayEase license certain intellectual property rights to LA, and for LA to license certain intellectual property rights to PayEase subject to the terms and conditions set forth in this Agreement;
NOW, THEREFORE, IN CONSIDERATION OF THE FOREGOING AND THE MUTUAL COVENANTS AND AGREEMENTS CONTAINED HEREIN, AND FOR OTHER GOOD AND VALUABLE CONSIDERATION, THE RECEIPT AND SUFFICIENCY OF WHICH IS HEREBY ACKNOWLEDGED, THE PARTIES HERETO HEREBY AGREE AS FOLLOWS:
As used herein, the following terms will have the meanings set forth below:
1.1 “ Affiliate ” means, as to either Party, any entity controlling, controlled by, or under common control with such Party.
1.2 “ Confidential Information ” means any proprietary or confidential information or material disclosed by one Party to the other verbally, electronically, or in written or other tangible form that is either identified as confidential or proprietary when disclosed or should be reasonably understood to be confidential or proprietary.
1.3 “ Intellectual Property Rights ” means all Patent Rights, Trademark Rights, copyrights, industrial design rights, trade secrets, and any other protectable rights covering intellectual property or proprietary rights, and all applications, registrations, renewals and extensions thereof owned or licensable by a Party.
1.4 “ LA Services ” means any and all services provided by LA from time to time that are not PayEase Services.
1.5 “ Licensed Technology ” means software and all technical information, technology, inventions, works of authorship, know-how, trade secrets, data, databases, algorithms, designs, specifications, and similar materials owned or used by a Party in the operation of such Party’s business, but specifically excluding the PayEase Database.
1.6 “Licensee ” or “Licensor ” means for purposes of this Agreement, depending upon the context of use, either PayEase or LA.
1.7 “ Marks ” means a Party’s logos, domain names, trademarks, and trade names.
1.8 “ Object Code ” means the binary machine-executable form of computer software programming code, including scripts and HTML pages.
1.9 “ Other Party’s Services ” means with respect to LA, the PayEase Services, and with respect to PayEase, the LA Services.
1.10 “ Patent Rights ” means all rights arising out of all U.S. and foreign patent applications filed by or on behalf of a Party with a first effective filing date during the Term, and all divisions, continuations, continuations-in-part, and substitutions thereof; all U.S. and foreign patents issuing on any of the preceding applications, including extensions, reissues, and re-examinations.
1.11 “ PayEase Database ” means the database of customer information, but only to the extent that PayEase has the right to share such information with LA without breaching a contractual obligation or violating any applicable law, including all derivative works, improvements, and modifications thereto.
1.12 “ PayEase Services ” means any and all services provided by PayEase from time to time.
1.13 “ Sale ” of a product, or to “ Sell ” a product means the initial sale, license, lease, or other transfer or disposition of that product, or to commence or permit commencement of productive use of such product.
1.14 “ Source Code ” means the fully-commented, human-readable form of computer programming code, including a listing of all third-party programming aids and tools reasonably necessary for a skilled programmer to maintain and modify the code.
1.15 “ Trademark Rights ” means all rights arising out of a Party’s Marks.
Other terms used in this Agreement with initial letters capitalized will have the defined meanings attributed to them elsewhere in this Agreement.
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2.2 Enforcement . In the event that either Party hereto becomes aware of any infringement of Licensor’s Intellectual Property Rights by a third party it shall promptly notify the other Party hereto. Licensor shall have the first right, but not the obligation, to institute, prosecute and control any action or proceeding with respect to such infringement, using counsel of its choice, including any declaratory judgment action arising from such infringement. Licensee shall cooperate with Licensor, at Licensor’s expense, in pursuing or defending any action with respect to Licensor’s Intellectual Property Rights, including, without limitation, joining as a party plaintiff and executing such documents as may be reasonably necessary. Licensor shall retain all amounts recovered in any such action or proceeding. In the event that Licensor fails to institute legal proceedings to cease an infringement within nine (9) months of receiving notice of such infringement and a request by Licensee to do so, Licensee shall have the right to initiate an action to cease such infringement, provided that Licensee take no action that may adversely affect Licensor’s Intellectual Property Rights without Licensor’s prior written consent. Licensee shall prosecute and control any action or proceeding with respect to such infringement, using counsel of its choice, including any declaratory judgment actions arising from such infringement, provided that Licensee take no action that may be deemed an admission of guilt or liability on behalf of Licensor or make any settlement or compromise that shall adversely affect Licensor or require Licensor to incur any obligation in connection with such settlement or compromise without prior written consent, which shall not be unreasonably withheld. Licensor shall cooperate with Licensee, at Licensee’s expense, in pursuing or defending any such action with respect to Licensor’s Intellectual Property Rights, including without limitation joining as a party plaintiff and executing such documents as may be reasonably necessary. Licensor shall retain all amounts recovered for the payment of Licensor’s expenses, and shall pay Licensee one-third of any and all additional amounts recovered with respect to use of Licensor’s Intellectual Property Rights.
2.3 Third-Party Rights . Each Party shall disclose in writing any open source software or other third-party materials that may be embodied in the Licensed Technology upon the Effective Date or in subsequent deliveries to the other Party pursuant to Section 2.4 below. Neither Party shall be obligated to provide or license any Licensed Technology to the extent such technology is subject to third-party rights to which the Licensor does not have sufficient rights to grant sublicense rights contemplated herein at no cost, subject to the obligations in the following sentences. If the Licensor has the right to grant only limited sublicense rights, or such sublicense rights are subject to a fee or royalty terms, the Licensor shall disclose such license terms to the Licensee, and shall grant such sublicense at the Licensee’s request. In the event the Licensor is unable for any reason to grant the other Party such a sublicense, including without limitation restrictions on sublicensing or disapproval by the third party licensor, the Licensor shall use reasonable efforts to assist the other Party, at the other Party’s sole cost, to acquire a non-exclusive license to use the third-party materials from the third party owner of such rights.
2.4 Quality Control . A high standard of quality for each Licensor’s Marks and the products and services shall be maintained. The Parties acknowledge and agree that maintaining the goodwill associated with each Licensor’s Marks is of substantial importance to Licensor. Licensee therefore agrees that the products and services advertised by it using Licensor’s Marks shall meet or exceed the standard of quality agreed to hereunder with respect to the products and services and those adhered to by Licensee in the conduct of its own business under its Marks. Upon request, all software and printed or electronically transmitted material in which Licensor’s Marks are used shall be submitted in writing for review by Licensor in advance and shall not be distributed or used in any manner without prior written approval of Licensor or its authorized representative, which approval shall not be unreasonably withheld or delayed. Licensor may withhold its consent to the use of its Marks in a particular context in its sole discretion, with the exception that once consent is given for a type of use (e.g., use of the Marks in a specific radio commercial, in a print advertisement or on a web page), consent is not required for each use of the Mark in that specific context. All written requests for such consent shall be deemed approved if not rejected in writing within ten (10) days of receipt. However, if the use of Licensor’s Mark in connection with the products and services subsequently fails to meet applicable quality standards, Licensor may immediately cancel any such prior authorization. Licensor reserves the right to inspect and review, at any reasonable time and with reasonable notice, the use of its Marks by Licensee in order to confirm that the nature and quality of the products and services associated with the Marks and the use of its Marks by Licensee conform to Licensor’s standards.
2.5 Notices; Right of First Refusal . Whenever Licensee is permitted to copy or reproduce all or any part of the Licensed Technology, Licensee shall reproduce and not efface any and all titles, trademark symbols, copyright symbols and legends, and other proprietary markings on the Licensed Technology. In the event a Party agrees to provide the Other Party’s Services to a third party, the other Party has a right of first refusal entitling it to be the provider of such services upon commercially reasonable terms and conditions agreed to between the Parties.
2.6 Delivery; Access . Licensor shall deliver one or more copies of the Licensed Technology, in electronic or other mutually agreed media promptly after the Effective Date. After the Effective Date, and during the Term, subject to Section 2.2, the Licensor will provide to Licensee any newly created or acquired Licensed Technology on a monthly basis, or promptly following any reasonable request by Licensee therefor. Notwithstanding the foregoing, to the extent that delivery of such Licensed Technology is impracticable, Licensor shall instead provide Licensee with access to such Licensed Technology during the Term. Upon delivery or provision of access, such Licensed Technology shall be licensed, and hereby is licensed to the Licensee pursuant to the terms of Section 2.1. Subject to restrictions imposed by applicable law (including without limitation, applicable privacy and data protection laws), promptly after the Effective Date and during the Term, subject to Section 2.2, each Party will provide the other Party with access to all or any portions of the PayEase Database under such Party’s control.
2.7 No Implied Rights . Only the licenses granted pursuant to the express terms of this Agreement shall be of any legal force or effect. No other license rights shall be granted or created by implication, estoppel or otherwise.
2.8 Further Assurances . The Parties shall execute and deliver all such documents and perform all further acts and things as may be reasonably required to implement, set of record, or give effect to this Agreement and the rights and licenses contemplated thereby. In the event that either Party fails to execute and deliver any such documents and instruments reasonably necessary to effectuate, evidence or record the other Party’s rights, then within thirty (30) days after written request, the other Party is authorized and appointed attorney-in-fact to make, execute and deliver such documents and instruments, which power is coupled with an interest and irrevocable.
3.1 Proprietary Rights .
(a) Licensed Technology . Title to and ownership of all copies of the Licensor’s Licensed Technology and all Intellectual Property Rights therein, are and shall remain the exclusive property of Licensor. Licensee shall not take any action to jeopardize, limit, or interfere in any manner with Licensor’s ownership of and rights with respect to the foregoing. Licensee shall have only those rights in or to the Licensed Technology granted to it pursuant to this Agreement.
(b) Marks . Licensee recognizes the validity of, and will do nothing inconsistent with, or which would negatively impact, Licensor’s rights in and ownership of Licensor’s Marks or the goodwill represented thereby. Each Party further recognizes that all use of the other Party’s Marks by it shall inure to the benefit of, and be on behalf of the Licensor. Neither Party has the right to register any Mark of the other Party or any confusingly similar mark as a corporate or trade name, domain name, trademark or service mark in any country or territory without the written consent of the other Party.
3.2 Proprietary Notices . Neither Party shall remove or alter any copyright or other proprietary patent notices of the other Party, appearing on or in copies of any of the respective intellectual property licensed from the other Party.
3.3 Intellectual Property Filings . Each Party as Licensor hereunder shall have the sole right to control the preparation, filing, prosecution and maintenance with respect to its own Intellectual Property Rights, and any interference or opposition proceeding relating thereto, using counsel of its choice. Each Party as Licensee shall cooperate with the other Party as reasonably requested, and at the other Party’s expense, in the preparation, filing, prosecution and maintenance of the other Party’s Intellectual Property rights.
3.4 PayEase Database Ownership . Subject to restrictions imposed by applicable law (including without limitation, applicable privacy and data protection laws), each Party agrees to assign and hereby assigns, transfers and conveys to the other Party an undivided one-half joint interest in and to the PayEase Database (including all Intellectual Property Rights therein).
3.5 Patent Matters .
(a) Prosecution . As between the Parties hereto, PayEase shall control the prosecution, maintenance and enforcement of any PayEase Database patents, at PayEase’s expense; provided that PayEase shall keep LA reasonably informed with respect thereto and consider in good faith LA’s input with respect to such matters. For purposes of the foregoing, “prosecution, maintenance and enforcement” includes, with respect to a patent, the preparing, filing, prosecuting and maintenance of such patent, as well as re-examinations, reissues, requests for patent term extensions and the like with respect to such patent, together with the conduct of interferences, enforcement actions, the defense of oppositions and declaratory judgment actions and other similar proceedings with respect to the particular patent.
(b) Other . The Parties acknowledge and agree that neither Party shall have any obligation to account to the other for profits, or to obtain any approval of the other Party to license, assign or otherwise exploit its joint interest in the PayEase Database, by reason of joint ownership thereof, and each Party hereby waives any right it may have under the laws of any jurisdiction to require any such approval or accounting.
4.1 License Fees . In consideration of the license rights granted hereunder, Licensee will pay Licensor a fee in an amount that will be mutually agreed to by the Parties in good faith at a later date.
4.2 Payment Terms . All payments required under this Agreement shall be made in the currency mutually agreed upon by the Parties, within thirty (30) days after receipt of Licensor’s invoice by wire transfer to the account of Licensor, in accordance with such reasonable instructions as Licensor may from time to time provide; provided that if the currency is other than the currency reflected on Exhibit B , the amount due and payable will be based on prevailing exchange rates on the date payment becomes due and payable. All fees and other payments under the Agreement will be made after deduction of withholding or other taxes as may be required by law.