Patent Licence — Applicable Law
Patents Act 1970 — ss.68–71, 84, 100, 103 Indian Contract Act 1872 IT Act 1961 — s.115A (royalty TDS for non-residents) FEMA 20(R)/2017 (cross-border royalty remittances) An exclusive licensee has the same rights to bring infringement proceedings as the patent owner (s.103). Compulsory licence may be sought by a third party after 3 years from grant (s.84). Register with the Indian Patent Office for enforceability against successors.
PATENT LICENCE AGREEMENT This Patent Licence Agreement ("Agreement") is entered into as of [DATE] by and between:
1. InnovateTech Research Private Limited of Licensor address ("Licensor"); and
2. Acme Manufacturing Private Limited of Licensee address ("Licensee").
Together, the "Parties".
1. Definitions
"Licensed Patent" means Indian Patent No. IN 345678 entitled "A Method and System for Real-time GST Reconciliation Using Machine Learning " and related patents/applications: PCT/IN2018/012345; US 11,234,567; EP 3,123,456 .
"Net Sales" means gross revenues from the sale, lease, or other disposition of products or services incorporating or practising the Licensed Patent, less returns, discounts, taxes, and freight.
"Improvements" means any modification, enhancement, or derivative of the Licensed Patent made by the Licensee during the term of this Agreement.
"Field of Use" means: Manufacture and sale of GST reconciliation software for SMEs in India. Excludes large enterprise / banking sector applications. .
2. Grant of Licence
Subject to the terms of this Agreement, the Licensor hereby grants to the Licensee a non-exclusive, non-sub-licensable licence under the Licensed Patent to make, use, sell, import, and otherwise commercially exploit the patented invention within the Field of Use in the territory of India for the term of this Agreement.
3. Term
This Agreement commences on [START_DATE] and continues until [END_DATE] or the expiry of the Licensed Patent, whichever is earlier, unless earlier terminated in accordance with this Agreement.
4. Royalties and Payments
In consideration of the licence granted, the Licensee shall pay the Licensor:
(b) A running royalty of 0% of Net Sales arising from the exploitation of the Licensed Patent, payable quarterly within 30 days of the end of each payment period, together with a royalty statement;
All payments are inclusive of applicable taxes. The Licensee shall deduct TDS as required by law and provide certificates accordingly.
5. Records and Audit
The Licensee shall maintain accurate books and records of all sales, uses, and other exploitation of the Licensed Patent. The Licensor shall have the right, not more than once per year, on 30 days' written notice, to audit the Licensee's records relevant to royalty computation. If an audit reveals an underpayment of more than 5%, the cost of the audit shall be borne by the Licensee.
6. Improvements
All Improvements made by the Licensee during the term shall be assigned to and vest absolutely in the Licensor. The Licensee shall promptly disclose all Improvements to the Licensor in writing. The Licensee shall execute all documents necessary to assign Improvements to the Licensor.
7. Patent Prosecution and Maintenance
The Licensor shall be responsible for prosecuting and maintaining the Licensed Patent in India, including payment of annuity fees. The Licensee shall cooperate with the Licensor in patent prosecution and shall provide all relevant technical information.
8. Infringement
If the Licensor becomes aware of any infringement of the Licensed Patent, it shall notify the Licensee. The Licensor shall have the sole right to bring infringement proceedings. The Licensee shall provide reasonable cooperation at the Licensor's request.
9. Representations and Warranties
The Licensor represents that:
(a) it has the right to grant this licence;
(b) the Licensed Patent is valid and subsisting;
(c) to the Licensor's knowledge, the practice of the Licensed Patent in the Field of Use does not infringe any third party's patent.
The Licensor makes no warranty as to the commercial utility of the Licensed Patent. THE LICENCE IS GRANTED "AS IS" WITHOUT ANY WARRANTY OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE.
10. Termination
Either Party may terminate this Agreement: (a) on 90 days' written notice for convenience (non-exclusive licence only); (b) immediately upon written notice if the other Party commits a material breach and fails to cure it within 30 days of notice; (c) immediately if the other Party becomes insolvent or enters liquidation.
Upon termination, all licences granted herein shall cease. The Licensee shall promptly discontinue use of the Licensed Patent and deliver or destroy all materials incorporating the same. Clauses on royalties due, audit rights, improvements, and governing law shall survive termination.
11. Governing Law
This Agreement is governed by the laws of India, specifically including the Patents Act 1970. Disputes shall be resolved by arbitration under the Arbitration and Conciliation Act, 1996, with the seat at [CITY].
LICENSOR
__GAP[pl_licensor_name|InnovateTech Research Private Limited]__
Dr. Arjun Mehta, CEO
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LICENSEE
__GAP[pl_licensee_name|Acme Manufacturing Private Limited]__
Priya Sharma, Director
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