Non-Exclusive Intellectual Property License Agreement - New York

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JURISDICTION: New York
LAST UPDATED: 2026-03-18
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NON-EXCLUSIVE INTELLECTUAL PROPERTY LICENSE AGREEMENT

STATE OF NEW YORK

This Non-Exclusive Intellectual Property License Agreement ("Agreement") is entered into as of [__/__/____] ("Effective Date") by and between:

LICENSOR:
Name: [________________________________]
Address: [________________________________]
City: [________________________________], New York [____]
Entity Type: ☐ Corporation ☐ LLC ☐ Partnership ☐ Sole Proprietor ☐ Other: [____]
New York DOS Entity ID: [________________________________]

LICENSEE:
Name: [________________________________]
Address: [________________________________]
City: [________________________________], State: [____] ZIP: [____]
Entity Type: ☐ Corporation ☐ LLC ☐ Partnership ☐ Sole Proprietor ☐ Other: [____]

Licensor and Licensee are each a "Party" and collectively the "Parties."

TABLE OF CONTENTS

1. Definitions
2. Grant of Non-Exclusive License
3. Field of Use and Territory
4. Restrictions on Use
5. Compensation and Royalties
6. Accounting, Reports, and Audit Rights
7. Intellectual Property Ownership
8. Improvements and Derivative Works
9. Quality Control
10. Representations and Warranties
11. Indemnification
12. Limitation of Liability
13. Confidentiality and Trade Secret Protection
14. Term and Renewal
15. Termination
16. Effects of Termination
17. Infringement by Third Parties
18. Insurance
19. Dispute Resolution and Governing Law
20. New York-Specific Provisions
21. Miscellaneous Provisions
22. Schedules

ARTICLE 1: DEFINITIONS

1.1 "Confidential Information" means non-public information disclosed by either Party, including trade secrets as defined under New York common law and the Defend Trade Secrets Act (18 U.S.C. § 1836).

1.2 "Derivative Works" means any work based upon the Licensed IP under 17 U.S.C. § 101.

1.3 "Field of Use" means the application, industry, or market in Schedule A, Section 2.

1.4 "Licensed Copyrights" means copyrighted works in Schedule A, Section 1(b), under 17 U.S.C. §§ 101-810.

1.5 "Licensed IP" means Licensed Patents, Licensed Copyrights, Licensed Marks, and Licensed Trade Secrets in Schedule A.

1.6 "Licensed Marks" means trademarks in Schedule A, Section 1(c), under 15 U.S.C. §§ 1051-1141, the New York trademark registration statute (N.Y. Gen. Bus. Law Art. 24, §§ 360-369), and New York common law.

1.7 "Licensed Patents" means patents and applications in Schedule A, Section 1(a), under 35 U.S.C. §§ 1-390.

1.8 "Licensed Trade Secrets" means trade secrets in Schedule A, Section 1(d), protected under New York common law (Restatement of Torts § 757) and 18 U.S.C. § 1836.

1.9 "Net Revenue" means gross revenue from exploitation of Licensed IP, less: (a) returns; (b) discounts; (c) New York sales tax and other applicable taxes; and (d) transportation charges billed separately.

1.10 "Territory" means the geographic area in Schedule A, Section 3.

ARTICLE 2: GRANT OF NON-EXCLUSIVE LICENSE

2.1 License Grant. Licensor grants Licensee a non-exclusive, non-transferable license to use, reproduce, display, perform, make, have made, sell, offer to sell, and import the Licensed IP within the Field of Use and Territory during the Term.

2.2 Non-Exclusive Nature. Licensor retains rights to: (a) use Licensed IP; (b) grant other licenses; and (c) assign or transfer Licensed IP.

2.3 Sublicensing:

☐ No sublicensing rights.

☐ Sublicensing permitted subject to: written sublicense agreements; notice within [____] days; Licensee responsible for sublicensees; automatic termination.

2.4 Reservation. All rights not expressly granted are reserved.

ARTICLE 3: FIELD OF USE AND TERRITORY

3.1 Field of Use. Use solely within Field of Use.

3.2 Territory. Exploit solely within Territory.

3.3 No Exclusivity. Licensor may license others without limitation.

ARTICLE 4: RESTRICTIONS ON USE

4.1 Licensee shall NOT:

(a) Use Licensed IP outside Field of Use or Territory;

(b) Reverse engineer except as permitted by applicable law;

(c) Remove proprietary notices;

(d) Use Licensed IP unlawfully or to infringe third-party rights;

(e) Assign or transfer without authorization;

(f) Tarnish or dilute Licensed Marks (15 U.S.C. § 1125(c));

(g) Export in violation of EAR or OFAC sanctions;

(h) Engage in trade secret misappropriation under New York common law or 18 U.S.C. § 1836;

(i) Engage in conduct constituting criminal possession of secret scientific material under N.Y. Penal Law § 165.07.

4.2 New York Consumer Protection. Licensee shall not use Licensed IP in any manner constituting a deceptive act or practice under New York General Business Law § 349 or false advertising under § 350.

4.3 Compliance. Licensee shall comply with all applicable federal, New York, and local laws.

ARTICLE 5: COMPENSATION AND ROYALTIES

5.1 Compensation (select applicable):

☐ Upfront Fee: $[________________________________] due within [____] days.

☐ Running Royalty: [____]% of Net Revenue, quarterly within [____] days.

☐ Minimum Annual Royalty: $[________________________________] per year.

☐ Per-Unit Royalty: $[____] per unit.

☐ Combination: Per Schedule B.

5.2 Payment Terms. U.S. Dollars by wire transfer. Late payments bear interest at the lesser of [____]% per month or the maximum permitted under New York law.

5.3 Taxes. All amounts exclusive of taxes. Licensee responsible for New York sales and use taxes (N.Y. Tax Law Art. 28-29) and New York City and local taxes as applicable.

5.4 No Set-Off. No set-off except as required by tax law.

ARTICLE 6: ACCOUNTING, REPORTS, AND AUDIT RIGHTS

6.1 Reports. Quarterly within [____] days: quantity, gross and Net Revenue, royalty calculation, deductions.

6.2 Records. GAAP-compliant for [____] years.

6.3 Audit. Up to [____] time(s) per year on [____] days' notice by independent CPA.

6.4 Costs. Licensor bears costs unless underpayment exceeds [____]%, then Licensee bears. Underpayments paid within [____] days with interest.

ARTICLE 7: INTELLECTUAL PROPERTY OWNERSHIP

7.1 Licensor Ownership. Licensor retains sole ownership under federal law, New York common law, and 18 U.S.C. § 1836.

7.2 No Challenge. Licensee shall not challenge Licensed IP validity or ownership.

7.3 Goodwill. Goodwill from Licensed Marks inures to Licensor.

7.4 Prosecution. Licensor controls prosecution and maintenance.

ARTICLE 8: IMPROVEMENTS AND DERIVATIVE WORKS

8.1 Ownership (select one):

☐ Option A: Licensee assigns all Improvements to Licensor.

☐ Option B: Licensee owns with perpetual, royalty-free, non-exclusive license-back.

☐ Option C: Jointly owned.

8.2 Disclosure. Prompt disclosure of Improvements during Term.

8.3 Cooperation. Execute documents to perfect rights.

ARTICLE 9: QUALITY CONTROL

9.1 Standards. Products/services using Licensed Marks meet Quality Standards in Schedule C.

9.2 Samples. Samples on request; premises inspection on reasonable notice.

9.3 Trademark Usage. Follow guidelines, proper notices, ownership attribution.

9.4 Cure. [____] days to cure after written notice.

ARTICLE 10: REPRESENTATIONS AND WARRANTIES

10.1 Licensor Warranties:

(a) Right and authority to grant the license;

(b) No knowledge of third-party infringement;

(c) No pending or threatened challenges;

(d) No conflicting prior grants.

10.2 Licensee Warranties:

(a) Authority to enter and perform;

(b) Compliance with New York and federal law;

(c) No deceptive practices under N.Y. Gen. Bus. Law §§ 349-350.

10.3 DISCLAIMER. EXCEPT AS IN THIS ARTICLE, LICENSED IP IS "AS IS." NO OTHER WARRANTIES INCLUDING MERCHANTABILITY, FITNESS, OR NON-INFRINGEMENT.

ARTICLE 11: INDEMNIFICATION

11.1 Licensor Indemnification. Claims from: (a) infringement by Licensed IP; or (b) Licensor's breach.

11.2 Exclusions. No indemnity for: (a) Licensee modification; (b) combination with non-Licensor materials; (c) use outside scope; or (d) use after infringement notice.

11.3 Licensee Indemnification. Claims from: (a) use outside scope; (b) breach; or (c) products/services.

11.4 Procedures. Prompt notice; sole defense control; cooperation.

ARTICLE 12: LIMITATION OF LIABILITY

12.1 Consequential Damages. EXCEPT FOR BREACHES OF ARTICLES 4, 7, 11, OR 13, NEITHER PARTY LIABLE FOR INDIRECT, INCIDENTAL, SPECIAL, CONSEQUENTIAL, OR PUNITIVE DAMAGES.

12.2 Cap. AGGREGATE LIABILITY NOT TO EXCEED THE GREATER OF: (A) FEES/ROYALTIES DURING THE [____]-MONTH PERIOD PRECEDING THE EVENT; OR (B) $[________________________________].

ARTICLE 13: CONFIDENTIALITY AND TRADE SECRET PROTECTION

13.1 New York Common Law Trade Secrets. The Parties acknowledge that New York has NOT adopted the Uniform Trade Secrets Act and relies on common law for trade secret protection. Under New York law:

(a) A trade secret consists of a formula, process, device, or compilation of information used in one's business that gives an opportunity to obtain an advantage over competitors who do not know or use it (Restatement of Torts § 757);

(b) New York courts apply the multi-factor test from Ashland Mgmt. Inc. v. Janien, 82 N.Y.2d 395 (1993), to determine whether information constitutes a trade secret;

(c) Misappropriation occurs when a person possesses a trade secret and either: (i) uses it in breach of an agreement, confidential relationship, or duty; or (ii) discovers it by improper means, including theft, fraud, or unauthorized access;

(d) Remedies include injunctive relief and compensatory damages;

(e) The statute of limitations for trade secret misappropriation in New York is three (3) years from the date of discovery (N.Y. C.P.L.R. § 214(4));

(f) New York Penal Law § 165.07 provides criminal penalties for possession of secret scientific material.

13.2 Obligations. Maintain in strict confidence; disclose only to bound personnel; use solely for Agreement purposes.

13.3 Exclusions. Publicly available, previously known, independently developed, or received from third party without restriction.

13.4 Required Disclosures. Permitted if required by law, with prompt notice and protective order cooperation. New York Freedom of Information Law (N.Y. Pub. Off. Law §§ 84-90) exempts trade secrets from disclosure (§ 87(2)(d)).

13.5 DTSA. Federal protection under 18 U.S.C. § 1836 supplements New York common law. DTSA whistleblower immunity per 18 U.S.C. § 1833(b).

13.6 Reasonable Measures. Both Parties shall implement reasonable measures to maintain trade secret secrecy, consistent with the factors analyzed under the Ashland test (measure of secrecy steps).

13.7 Duration. Confidentiality survives [____] years; trade secret obligations continue while qualifying under New York law.

ARTICLE 14: TERM AND RENEWAL

14.1 Initial Term. Commences on Effective Date, continues for [____] years.

14.2 Renewal:

☐ Terminates without renewal.

☐ Renews for [____]-year terms unless [____] days' notice.

☐ Renewable by mutual agreement.

14.3 Patent Expiration. Patent license expires upon patent expiration; no post-expiration royalties. Brulotte v. Thys Co., 379 U.S. 29 (1964).

ARTICLE 15: TERMINATION

15.1 For Cause. Material breach uncured after [____] days; insolvency; cessation of business.

15.2 Non-Payment. [____] days' notice.

15.3 Convenience:

☐ [____] days' notice.

☐ Not applicable.

15.4 Quality Failure. Repeated failures after notice and cure.

ARTICLE 16: EFFECTS OF TERMINATION

16.1 Cessation. Immediately cease use.

16.2 Return/Destruction. Within [____] days; certify in writing.

16.3 Sell-Off. [____]-day period with continued royalties.

16.4 Final Accounting. Within [____] days.

16.5 Survival. Articles 1, 7, 8, 10.3, 11, 12, 13, 16, 19, and 20 survive.

ARTICLE 17: INFRINGEMENT BY THIRD PARTIES

17.1 Notice. Prompt notice of infringement.

17.2 Enforcement. Licensor first right; Licensee may request permission if Licensor declines within [____] days.

17.3 Recoveries. First to reimburse costs; remainder [____]% Licensor / [____]% Licensee.

ARTICLE 18: INSURANCE

18.1 Licensee maintains:

(a) CGL: $[________________________________] per occurrence / $[________________________________] aggregate;

(b) Product liability: $[________________________________];

(c) Workers' compensation per New York requirements (N.Y. Workers' Comp. Law).

(d) Disability benefits per New York requirements (N.Y. Workers' Comp. Law § 200 et seq.).

18.2 Licensor as additional insured; certificates upon request.

ARTICLE 19: DISPUTE RESOLUTION AND GOVERNING LAW

19.1 Governing Law. New York law, without regard to conflict-of-laws principles.

19.2 Escalation. Senior executives negotiate for [____] days.

19.3 Resolution (select one):

☐ Litigation: Exclusive jurisdiction in state and federal courts in [________________________________] County, New York.

☐ Arbitration: Binding arbitration by [________________________________] with [____] arbitrator(s) in [________________________________], New York, under New York's arbitration statute (N.Y. C.P.L.R. Art. 75).

19.4 Jury Waiver. EACH PARTY IRREVOCABLY WAIVES JURY TRIAL.

19.5 Injunctive Relief. Either Party may seek injunctive relief from New York courts to prevent irreparable harm, including trade secret misappropriation.

19.6 Prevailing Party. Prevailing Party recovers reasonable attorneys' fees and costs.

ARTICLE 20: NEW YORK-SPECIFIC PROVISIONS

20.1 General Obligations Law §§ 5-1401 and 5-1402. The Parties acknowledge:

(a) If this Agreement involves aggregate consideration of $250,000 or more, the choice of New York law in Section 19.1 is enforceable under N.Y. Gen. Oblig. Law § 5-1401 regardless of whether the Agreement bears a reasonable relation to New York;

(b) If this Agreement involves aggregate consideration of $1,000,000 or more, the forum selection clause in Section 19.3 is enforceable under N.Y. Gen. Oblig. Law § 5-1402.

20.2 New York General Business Law. Neither Party shall engage in deceptive acts or practices under N.Y. Gen. Bus. Law § 349 or false advertising under § 350. Section 349 provides a private right of action for actual damages, treble damages (up to $1,000), and attorneys' fees.

20.3 New York Right of Publicity. If the Licensed IP incorporates any person's name, portrait, picture, or voice, the Parties acknowledge the protections of New York Civil Rights Law §§ 50-51. Licensee shall obtain necessary consents.

20.4 Supplemental DTSA Protections. Given that New York has not adopted UTSA, the Parties agree that for any trade secret misappropriation dispute, the DTSA (18 U.S.C. § 1836) shall serve as the primary statutory framework, supplemented by New York common law.

20.5 No Restraint of Trade. Nothing in this Agreement shall constitute an unreasonable restraint of trade under the Donnelly Act (N.Y. Gen. Bus. Law § 340 et seq.), New York's antitrust statute. The license restrictions are narrowly tailored to protect the Licensed IP.

ARTICLE 21: MISCELLANEOUS PROVISIONS

21.1 Entire Agreement. This Agreement and Schedules constitute the entire agreement.

21.2 Assignment. Licensee may not assign without consent. Licensor may assign freely.

21.3 Notices. Written; effective on delivery, one (1) business day after courier, three (3) business days after certified mail.

21.4 Force Majeure. Non-performance excused for events beyond reasonable control (not payment).

21.5 Waiver. Written waivers only.

21.6 Severability. Invalid provisions modified minimally; others remain.

21.7 Amendments. Written, signed by both Parties.

21.8 Counterparts. Counterparts permitted. Electronic signatures valid under the New York Electronic Signatures and Records Act (N.Y. State Tech. Law §§ 301-309).

21.9 Independent Contractors. No partnership, joint venture, or agency.

ARTICLE 22: SCHEDULES

Schedule A: Licensed IP, Field of Use, Territory

Schedule B: Compensation, Royalty Rates, Payment Terms

Schedule C: Quality Standards and Trademark Guidelines

Schedule D: Form of Royalty Report

SIGNATURES

LICENSOR:

Signature: [________________________________]
Printed Name: [________________________________]
Title: [________________________________]
Date: [__/__/____]

LICENSEE:

Signature: [________________________________]
Printed Name: [________________________________]
Title: [________________________________]
Date: [__/__/____]

SOURCES AND REFERENCES

• New York common law trade secret protection (Restatement of Torts § 757)
• New York General Obligations Law § 5-1401 (choice of law, $250K+ contracts)
• New York General Obligations Law § 5-1402 (choice of forum, $1M+ contracts)
• New York General Business Law §§ 349-350 (deceptive practices)
• New York General Business Law § 340 (Donnelly Act, antitrust)
• New York Civil Rights Law §§ 50-51 (right of publicity)
• New York Penal Law § 165.07 (secret scientific material)
• New York trademark registration, N.Y. Gen. Bus. Law §§ 360-369
• New York usury, N.Y. Gen. Oblig. Law § 5-501; N.Y. Banking Law § 14-a
• New York statutory interest, N.Y. C.P.L.R. § 5004
• New York arbitration, N.Y. C.P.L.R. Art. 75
• New York Electronic Signatures, N.Y. State Tech. Law §§ 301-309
• New York FOIL trade secret exemption, N.Y. Pub. Off. Law § 87(2)(d)
• Copyright Act, 17 U.S.C. §§ 101-810
• Patent Act, 35 U.S.C. §§ 1-390
• Lanham Act, 15 U.S.C. §§ 1051-1141
• Defend Trade Secrets Act, 18 U.S.C. §§ 1831-1839
• Brulotte v. Thys Co., 379 U.S. 29 (1964)
• Lear, Inc. v. Adkins, 395 U.S. 653 (1969)
• Ashland Mgmt. Inc. v. Janien, 82 N.Y.2d 395 (1993)
• CBS Inc. v. Ziff-Davis Publ'g Co., 75 N.Y.2d 496 (1990)
• Hooper Assocs., Ltd. v. AGS Computers, Inc., 74 N.Y.2d 487 (1989)
• Metropolitan Life Ins. Co. v. Noble Lowndes Int'l, 84 N.Y.2d 430 (1994)
• IRB-Brasil Resseguros v. Inepar Investments, 20 N.Y.3d 310 (2012)