output-vertrag-englisch-fertigentwurf

Output: Licence Agreement in English

When to use English

• International deal with non-German party
• Governing law not German (e.g., English, NY, Swiss)
• Arbitration in English-speaking forum
• Parent-company headquartered abroad

Standard Structure (mirrors the German version)

LICENCE AGREEMENT

between

[Licensor], [address], represented by [representative]
- the "Licensor" -

and

[Licensee], [address], represented by [representative]
- the "Licensee" -

- collectively the "Parties" -

PREAMBLE

(A) The Licensor [is the sole/joint] owner of the [patents, trademarks,
    designs, software, know-how] listed in Annex A.
(B) The Licensee wishes to obtain a licence for [purpose].
(C) The Parties have entered into a non-disclosure agreement dated [date]
    and have conducted due diligence.

The Parties agree as follows:

Sec. 1   Definitions
Sec. 2   Licensed IP
Sec. 3   Scope of Licence (Territory, Time, Field of Use)
Sec. 4   Exclusivity (sole / exclusive / non-exclusive)
Sec. 5   Royalties
Sec. 6   Sub-Licences
Sec. 7   Improvements / Grant-Back
Sec. 8   Representations and Warranties
Sec. 9   Limitation of Liability
Sec. 10  Reporting, Audit, Minimum Royalty
Sec. 11  Term and Termination
Sec. 12  Consequences of Termination
Sec. 13  Confidentiality
Sec. 14  Source-Code Escrow (if software)
Sec. 15  Governing Law and Dispute Resolution
Sec. 16  Insolvency Provisions
Sec. 17  Export Control
Sec. 18  Data Protection
Sec. 19  Taxes
Sec. 20  Miscellaneous

[Place], [date]

___________________________     ___________________________
Licensor                          Licensee

ANNEXES
Annex A — Licensed IP
Annex B — Field of Use
Annex C — Royalty Schedule + Reporting
Annex D — Data Processing Agreement (GDPR)
Annex E — Sub-Licensee List

Key Clauses (English)

Sec. 2 — Licensed IP:

"Licensor hereby grants Licensee a [non-exclusive / sole / exclusive] licence to use the intellectual property rights listed in Annex A (the 'Licensed IP') for the Field of Use defined in Annex B in the Territory defined herein."

Sec. 5 — Royalties:

"Licensee shall pay to Licensor a running royalty of [X] % of Net Sales of Licensed Products. 'Net Sales' means groß invoiced sales less customary discounts, returns, value-added tax and shipping costs. Royalties are payable within thirty (30) days after the end of each calendar quarter."

Sec. 15 — Governing Law and Arbitration (English law, LCIA):

"This Agreement shall be governed by and construed in accordance with the laws of England and Wales. Any dispute arising out of or in connection with this Agreement, including any question regarding its existence, validity or termination, shall be referred to and finally resolved by arbitration under the LCIA Rules. The seat of arbitration shall be London. The number of arbitrators shall be three. The language of the arbitration shall be English."

Sec. 15 — Alternative (German law, DIS):

"This Agreement shall be governed by the laws of the Federal Republic of Germany under exclusion of the United Nations Convention on Contracts for the International Sale of Goods (CISG). Any dispute arising out of or in connection with this Agreement shall be finally settled under the DIS Arbitration Rules. The seat of arbitration shall be Frankfurt am Main. The language of arbitration shall be English."

Anschluss

• German fassung: output-vertrag-deutsch-fertigentwurf
• Bilingual: output-zweisprachig-bilingual-deutsch-englisch