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Last modified at 12/9/2017 3:29 PM by Kip Bodi

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Agreement Summaries*

*Nothing included in the sample agreements or elsewhere on this wiki site should be considered legal advice on the part of AIPLA or any of its members.

Material Transfer Agreements

Material Transfer Agreement #1 (01_Final Annotated MTA.docxOpen .doc) (01_Final Annotated MTA.pdfPDF)

  • Overview: This agreement was designed to govern a transfer of pharmaceutical and other biological materials from a transferring company to a receiving company. The receiving company intends to use the materials for its own research purposes. The agreement defines the rights of each organization as part of the transfer, including rights in any derivative materials that the receiving company may produce.

  • Favored Party: This agreement includes strong protection for the IP rights of the transferring party.

  • Area of Law: patent, copyright

  • Area of Technology: pharmaceuticals, biological materials, chemicals

Material Transfer Agreement #2 (17_Annotated MTA.docxOpen .doc) (17_Annotated MTA.pdfPDF)

  • Overview: This agreement was designed to govern the transfer by a university or other research organization of pharmaceuticals, biologic materials and non-pharmaceutical products, developed by the research organization, to a company for further development and evaluation.

  • Favored Party: This agreement favors the company to the extent that it obtains an unrestricted free non-exclusive license to technology developed by the research organization with the use of information provided by the company, with an exclusive option to convert the license to an exclusive license. Also the company has the right to review research reports prepared by the research organization prior to publication.

  • Area of Law: patent, trade secret

  • Area of Technology: life science, chemistry

Patent Licensing Agreements

Generic Patent License Agreement #1 (06_Annotated Generic Patent License.docxOpen .doc) (06_Annotated Generic Patent License.pdfPDF)

  • Overview: This agreement was designed to grant a non-exclusive license where not all fields of use are being licensed or where only a particular subset all of the licensor’s patents are being licensed. It may be useful in situations where the licensor is obligated to license some of its patents broadly, such as with a standard essential patent that is required to be licensed under reasonable and non-discriminatory terms and conditions.

  • Favored Party: This agreement does not favor either party.

  • Area of Law: patent

  • Area of Technology: all

Non-Exclusive Patent License Agreement #1 (09_Annotated Non-Exclusive Patent License_Final.docxOpen .doc) (09_Annotated Non-Exclusive Patent License_Final.pdfPDF)

  • Overview: This agreement was designed to govern a situation where a patent owner grants a non-exclusive license to a licensee in return for a running royalty based on net sales of a licensed product. The agreement is intended to convey the license without any additional intellectual property, product, or know-how.

  • Favored Party: This agreement favors the licensor.

  • Area of Law: patent

  • Area of Technology: all

Exclusive Patent License Agreement #1 (14) (14_EPLA annotated.docxOpen .doc) (14_EPLA annotated.pdfPDF)

  • Overview: This agreement was designed to govern an exclusive patent license between a university's tech transfer office and a third party. It is divided into two general sections: Business Terms, which primarily includes templated sections for the territory, field of use, patents, and payments associated with the agreement; and General Terms, which govern the specific licensing of rights. The agreement is most appropriate for Universities offering an exclusive license, in which the university requires specific reporting to comply with obligations related to government funding.

  • Favored Party: university / licensor

  • Area of Law: Patent

  • Area of Technology: All

Patent Cross-License Agreement #1 (19) (19_Patent Annotated Cross License Agreement.docOpen .doc) (19_Patent Annotated Cross License Agreement.pdfPDF)

  • Overview: This agreement was designed for each party to grant a non-exclusive royalty-free license under its patents to the other party.

  • Favored Party: This agreement does not favor either party.

  • Area of Law: patent

  • Area of Technology: all

Patent Sub-License Agreement #1 (20) (20_AIPLA_Annotated Sublicense Agreement.docxOpen .doc) (20_AIPLA_Annotated Sublicense Agreement.pdfPDF)

  • Overview: This agreement was designed to govern the grant of a royalty-bearing non-exclusive patent license for specific presently existing products.

  • Favored Party: This agreement favors the licensor to the extent that the licensee is not licensed to any product modifications that may be necessary to update the licensee’s product offerings..

  • Area of Law: patent

  • Area of Technology: all

Patent License Agreement #1 (22) (22_Patent License with Annotations.docxOpen .doc) (22_Patent License with Annotations.pdfPDF)

  • Overview: This agreement was designed to govern the grant of both an exclusive patent license to sell certain licensed products in a limited field of use, and a non-exclusive patent license to sell those same products in other fields. Also there are provisions for technical collaboration and sharing of know-how.

  • Favored Party: This agreement generally favors the licensor. The annotations include suggestions for push-back by the licensee.

  • Area of Law: patent, trade secret

  • Area of Technology: all

Patent License Agreement #2 (24) (24_ Patent License Agreement.docxOpen .doc) (24_ Patent License Agreement.pdfPDF)

  • Overview: This agreement was designed to govern the grant of IP rights as needed for a customer to manufacture a product supplied in the past by a supplier who no longer is able to supply the product.

  • Favored Party: This agreement does not particularly favor either the supplier of the customer.

  • Area of Law: patent, copyright, trade secret

  • Area of Technology: all

End User License Agreements

End User License Agreement #1 (2) (02_Annotated End user License Agreement_FINAL.docxOpen .doc) (02_Annotated End user License Agreement_FINAL.pdfPDF)

  • Overview: This agreement was designed to govern a license of software to an end user from a company. The software company provides a very limited license to the end user for use of the software. This sort of agreement is usually provided in a clickwrap situation.

  • Favored Party: This agreement, like most form EULAs, favors the licensor, especially with respect to permitted uses.

  • Area of Law: patent, copyright

  • Area of Technology: software

  • Other Notes: This agreement was used for software provided free to the end user. Other situations where the end user pays for the software may require some changes to the agreement.

End User License Agreement #2 (11) (11_Annotation of End user License Agreement with comments.docxOpen .doc) (11_Annotation of End user License Agreement with comments.pdfPDF)

  • Overview: This agreement was designed to govern the trial use of pre-production or beta software.

  • Favored Party: This agreement favors the licensor.

  • Area of Law: patent, copyright

  • Area of Technology: software

IP Assignment Agreements

Patent Sale Agreement #1 (4) (04_Annotated Patent Sale Agreement_FINAL.docxOpen .doc) (04_Annotated Patent Sale Agreement_FINAL.pdfPDF)

  • Overview: This agreement was designed to govern the sale of all rights, title, and interest in a patent from one party to another for a fixed price. This is in contrast with license agreements, where the first party retains ownership rights in the patent but grants another party some other rights in the patent.

  • Favored Party: This agreement does not favor either party.

  • Area of Law: patent

  • Area of Technology: all

Patent Assignment Agreement #1 (5) (05_Annotated Patent Assignment.docxOpen .doc) (05_Annotated Patent Assignment.pdfPDF)

  • Overview:This agreement was designed to perfect the assignment of a patent or patent application from one party to another.This assignment agreement can be used in a variety of situations where the parties would like to record an assignment with the USPTO,e.g., from an employee to an employer.

  • Favored Party:This agreement does not favor either party as it simply facilitates the formal assignment in a document that would be recorded and publicly available The consideration, for example employment or purchase price, would be included in other documents.

  • Area of Law:patent

  • Area of Technology:all

IP Assignment #1 (12) (12_IP Assignment Agreement.docOpen .doc ) (12_IP Assignment Agreement.pdfPDF)

  • Overview: This agreement was designed to govern a transfer of the IP rights of a company to an affiliate of that company. in order for the affiliate to carry on a business activity allocated to that affiliate.

  • Favored Party: This agreement does not favor either party.

  • Area of Law: patent, copyright, trade secret

  • Area of Technology: all

Inventor Assignment #1 (13) (13_Inventor Assignment Template.docOpen .doc) (13_Inventor Assignment Template.pdfPDF)

  • Overview: This agreement was designed as a simple patent application assignment by the inventor, to be recorded without disclosing the commercial details of the underlying transaction creating the assignment obligation.

  • Favored Party: This agreement covers only the actions required to be taken by the assignor- inventor, and to that extent favors the assignee.

  • Area of Law: patent

  • Area of Technology: all

Technology Transfer and IP Licensing Agreements

Life Science Technology License Agreement #1 (15) (15_License Agreemen for Life Sciences Technoloy.docxOpen .doc) (15_License Agreemen for Life Sciences Technoloy.pdfPDF)

  • Overview: This agreement was designed to govern the exclusive licensing of a pharmaceutical drug candidate by the drug’s developer to a large pharmaceutical company.

  • Favored Party: This agreement favors the licensee, with annotations on possible pushback by the licensor.

  • Area of Law: patent, trade secret

  • Area of Technology: pharmaceuticals

Assignment and Technology Transfer Agreement #1 (16) (16_Assignment and Tech Transfer.docxOpen .doc) (16_Assignment and Tech Transfer.pdfPDF )

  • Overview: This agreement was designed to govern the sale of patents as well as the technology related to the patents in order for the purchaser to commercialize the technology.

  • Favored Party: This agreement together with comments strives to favor the purchaser to the extent that it receives full value for the purchase price.

  • Area of Law: patent, trade secret

  • Area of Technology: all

Technology Transfer Agreement #1 (23) (23_Tech Transfer Agreement.docxOpen .doc) (23_Tech Transfer Agreement.pdfPDF)

  • Overview: This agreement was designed to govern the transfer of confidential manufacturing know-how.

  • Favored Party: This agreement does not particularly favor either the transferor or the transferee.

  • Area of Law: trade secret

  • Area of Technology: all

Trademark License Agreement #1 (25) (25_Trademark License.docxOpen .doc) (25_Trademark License.pdfPDF)

  • Overview: This agreement was designed to grant rights to use a trademark with a breakdown of territories and exclusivity for various products and services identified by the trademark.

  • Favored Party: This agreement favors the licensor to the extent that it includes provisions for protecting the licensor’s ownership of the trademark.

  • Area of Law: trademark

  • Area of Technology: all

Other IP Agreements

Software Development Agreement #1 (3) (03_Annotated Software Development Agreement _FINAL_krc edits.docxOpen .doc) (03_Annotated Software Development Agreement _FINAL_krc edits.pdfPDF)

  • Overview: This agreement was designed to govern a software development engagement between a customer company and a software development company. The customer company contracts the software developer company to develop some software product on its behalf, e.g., a website or a smartphone application.

  • Favored Party: This agreement was used in representation of a software developer company, and it favors that party particularly with respect to performance of the development services. Howver the customer is granted rights to the developed software.

  • Area of Law: patent, copyright

  • Area of Technology: software

  • Other Notes: This agreement was used for a medium-sized project, and some modifications might be necessary to scale it up or down to other projects. Additionally, this agreement has certain provisions taking care of the fact that some of the software developer company’s employees were not always located within the United States.

Mutual Non-Disclosure Agreement #1 (07_Mutual NDA.docxOpen. doc) (07_Mutual NDA.pdfPDF)

  • Overview: This agreement was designed to establish obligations of non-disclosure by two parties in a variety of situations, e.g., during a contract negotiation.

  • Favored Party:This agreement does not favor either party under circumstances in which the relative risk for each party in disclosing its proprietary information is expected to be about equal to the risk of its undertaking to protect the other party’s proprietary information.

  • Area of Law:patent, copyright, trade secret

  • Area of Technology: all

Contributor License Agreement#1 (8) (08_Open Source Contributor License Agreement.docxOpen .doc) (08_Open Source Contributor License Agreement.pdfPDF)

  • Overview: This agreement was designed to govern a situation where a party contributes software to an open source project. This agreement would be provided by the open source project owner for execution by each contributor to the project. The agreement clarifies the transfer of rights in the software (e.g., copyrights and patents) from the contributor to the project.

  • Favored Party: This agreement does not favor either party.

  • Area of Law: patent, copyright,software

  • Area of Technology: software

Memorandum of Understanding #1 (21) (21_AIPLAFormsProject_MOUAdaptingComponent.docxOpen .doc) (21_AIPLAFormsProject_MOUAdaptingComponent.pdfPDF)

  • Overview: This Memorandum of Understanding was designed to facilitate a collaboration for adapting a supplier’s component into a customer’s larger product, and includes a mutual commercially reasonable efforts obligation to complete the collaboration and, if the collaboration results in the achievement of agreed performance metrics, enter into a purchase agreement for a certain quantity of components.

  • Favored Party: This agreement does not favors either party. The supplier retains all IP in the component and any modifications thereto made in the course of the collaboration, and the customer retains all IP in the lager product and any modifications thereto made in the course of the collaboration.

  • Area of Law: patent, copyright, trade secret

  • Area of Technology: all

Distribution Agreements

Exclusive DistributionAgreement #1 (10) (10_Exclusive Distribution Agreement_final.docxOpen .doc) (10_Exclusive Distribution Agreement_final.pdfPDF)

  • Overview: This agreement was designed to govern a relationship between a supplier of products and a distributor of those products

  • Favored Party: This agreement favors the supplier.

  • Area of Law: patent, copyright, trademark

  • Area of Technology: all

Distribution Agreement #1 (18) (18_Annotated Distribution Agreement.docxOpen .doc) (18_Annotated Distribution Agreement.pdfPDF)

  • Overview: This agreement was designed to govern the appointment of a distributor for a developer’s vaccine product under the developer’s name and trademark.

  • Favored Party: This agreement favors the developer to the extent of mitigating its risks under governmental regulations rerated to drug approvals.

  • Area of Law: drug regulation, trademark

  • Area of Technology: pharmaceuticals

Distribution Agreement #2 (26) (26_Distribution Agreement.docxOpen .doc) (26_Distribution Agreement.pdfPDF)

  • Overview: This agreement was designed for the licensor to grant the licensee the right to distribute licensor’s software packages to end users through the licensee’s web and mobile portal applications.

  • Favored Party: This agreement favors the licensor to the extent that it is protective of the licensor’s ownership of the software packages and related IP.

  • Area of Law: patent, copyright, trademark

  • Area of Technology: software