License Agreement - Intellectual Property

INTELLECTUAL PROPERTY LICENSE AGREEMENT

(the “Agreement”)

DOCUMENT HEADER

This Intellectual Property License Agreement (the “Agreement”) is made and entered into as of [EFFECTIVE DATE] (the “Effective Date”), by and between [FULL LEGAL NAME OF LICENSOR], a [STATE/COUNTRY] [ENTITY TYPE] with its principal place of business at [LICENSOR ADDRESS] (“Licensor”), and [FULL LEGAL NAME OF LICENSEE], a [STATE/COUNTRY] [ENTITY TYPE] with its principal place of business at [LICENSEE ADDRESS] (“Licensee”). Licensor and Licensee are each referred to herein individually as a “Party” and collectively as the “Parties.”

Recitals

A. Licensor owns or otherwise controls certain intellectual property described herein and is willing to grant a license thereto on the terms and conditions set forth in this Agreement.
B. Licensee desires to obtain, and Licensor is willing to grant, a license to use such intellectual property solely in accordance with the terms of this Agreement and in exchange for the consideration specified herein.
C. The Parties agree that the execution and delivery of this Agreement and the consummation of the transactions contemplated hereby constitute good and valuable consideration, the sufficiency and receipt of which are hereby acknowledged.

TABLE OF CONTENTS

1. Definitions
2. Grant of License
3. Consideration & Payment Terms
4. Delivery, Support, and Maintenance
5. Records; Audit Rights
6. Intellectual Property Protection & Enforcement
7. Confidentiality
8. Representations & Warranties
9. Covenants & Restrictions
10. Term and Termination
11. Default & Remedies
12. Indemnification
13. Limitation of Liability
14. Insurance
15. Force Majeure
16. Dispute Resolution
17. General Provisions
18. Execution Block

1. DEFINITIONS

For purposes of this Agreement, the following terms shall have the meanings set forth below. All defined terms appear alphabetically.

“Affiliate” means, with respect to a Party, any entity that directly or indirectly controls, is controlled by, or is under common control with such Party.

“Arbitration Rules” means the [SELECT: American Arbitration Association Commercial Arbitration Rules / UNCITRAL Arbitration Rules / Other] in effect on the date the demand for arbitration is filed.

“Documentation” means all user instructions, manuals, technical materials, and any other documents or materials that describe the functions, operation, installation, or use of the Licensed IP.

“Field” means [SPECIFY FIELD OR INDUSTRY].

“Improvement” means any modification, enhancement, derivative work, update, upgrade, or other improvement to the Licensed IP created by or for Licensee.

“Licensed IP” means only the specific patents and patent applications, copyrighted works, trademarks, service marks, trade secrets, know-how, and other rights individually identified in Exhibit A. Ownership of one category does not establish ownership of another category, and no right is licensed by implication.

“Net Sales” means gross revenues received by Licensee from exploitation of the Licensed IP less [AGREED DEDUCTIONS].

“Royalties” means the royalty payments calculated in accordance with Section 3.2.

“Territory” means [GEOGRAPHIC TERRITORY].

“Term” has the meaning set forth in Section 10.1.

2. GRANT OF LICENSE

2.1 License Grant. Subject to the terms and conditions of this Agreement, Licensor grants Licensee the [non-exclusive / exclusive / sole], [royalty-bearing / fully paid], [transferable only as stated / nontransferable] rights selected in Exhibit A, within the Field, Territory, and Term stated there. The grant applies separately by IP category:

(a) Patents. Only the rights expressly selected from making, having made, using, offering to sell, selling, and importing products or practicing methods covered by the identified patent claims, and only in the countries where the identified patent rights exist.

(b) Copyrights. Only the rights expressly selected from reproduction, preparation of derivative works, distribution, public performance, and public display for the identified works and versions.

(c) Trademarks. Only use of the identified marks for the approved goods or services, channels, presentation, and Territory, subject to Section 9.3 and Exhibit D.

(d) Trade Secrets and Know-How. Only confidential access and use for the permitted purpose, subject to Section 7 and Exhibit E. Disclosure does not transfer ownership.

(e) Other Rights. [Describe the right and applicable law: __________________________________].

2.2 Sublicensing. Licensee may [not sublicense / sublicense only with Licensor’s prior written consent / sublicense within the limits in Exhibit A]. Each permitted sublicense must be in writing, remain within Licensee’s own rights, protect confidentiality and quality-control requirements, prohibit further sublicensing unless expressly approved, and terminate or transition as stated in Section 10.4. Licensee remains responsible for its sublicensees.

2.3 Retained Rights. Licensor retains all rights in and to the Licensed IP not expressly granted to Licensee, including the right to exploit the Licensed IP outside the Field and/or Territory, as applicable.

2.4 Government and Funding Rights. Exhibit A must identify any government funding, grant, procurement, university, standards-body, open-source, third-party, or other obligation that limits the grant. No representation is made that such rights exist or do not exist unless stated in Exhibit A.

3. CONSIDERATION & PAYMENT TERMS

3.1 Up-Front License Fee. In consideration of the License granted, Licensee shall pay Licensor a non-refundable license fee of [AMOUNT & CURRENCY] within [NUMBER] days after the Effective Date.

3.2 Royalties.
(a) During the Term, Licensee shall pay Royalties equal to [PERCENTAGE]% of Net Sales.
(b) Royalties shall accrue upon sale or invoicing, whichever occurs first, and shall be paid quarterly within [NUMBER] days after the end of each calendar quarter.

3.3 Milestone Payments. Licensee shall pay Licensor the milestone amounts set forth in Exhibit B upon achievement of each corresponding milestone.

3.4 Reports; Payment Audit. Concurrent with each Royalty payment, Licensee shall deliver a written report detailing the calculation of Net Sales in form reasonably acceptable to Licensor.

3.5 Late Payments. Any payment not made when due shall bear interest at the lesser of (i) [X]% per month or (ii) the maximum rate permitted by law, compounded monthly.

4. DELIVERY, SUPPORT, AND MAINTENANCE

4.1 Delivery. Licensor shall deliver the Licensed IP and Documentation in electronic form within [NUMBER] days after the Effective Date.

4.2 Support. Licensor shall provide [DESCRIBE SUPPORT LEVELS OR “no support obligations”].

4.3 Updates & Upgrades. [Specify whether Updates are included in the License Fee or subject to additional fees.]

5. RECORDS; AUDIT RIGHTS

5.1 Records. Licensee shall maintain complete and accurate records relevant to its obligations under this Agreement for at least [NUMBER] years following the period to which such records relate.

5.2 Audit. Upon [NUMBER] days’ prior written notice, Licensor may audit Licensee’s relevant records no more than [NUMBER] times per calendar year. Licensee shall reimburse Licensor for audit costs if the audit reveals an underpayment of [X]% or more for the audited period.

6. INTELLECTUAL PROPERTY PROTECTION & ENFORCEMENT

6.1 Prosecution and Maintenance. For patent rights identified in Exhibit A, Licensor shall [control / consult with Licensee regarding / allocate as follows] preparation, filing, prosecution, maintenance, disclaimer, and abandonment decisions. Cost allocation, reporting, foreign filings, and Licensee’s election to assume an abandoned filing are stated in Exhibit A. No duty concerning unlisted patent rights is created.

6.2 Enforcement and Standing.
(a) Notice. Each Party shall promptly notify the other in writing of any known or suspected infringement of the Licensed IP in the Territory.
(b) First Right to Enforce. [Licensor / Licensee] shall have the first right, but not the obligation, to initiate an enforcement action only if that Party has standing and authority under applicable law and Exhibit A.
(c) Cooperation. The non-controlling Party shall reasonably cooperate and, if legally required and commercially acceptable, join an action at the controlling Party’s expense. Neither Party may represent in advance that a particular license structure gives Licensee independent standing.
(d) Recoveries. Any monetary recovery shall first reimburse the Parties’ litigation costs and the remainder shall be [DIVISION OF RECOVERIES].

6.3 Notices and Marking. Licensee shall use only the notices approved in Exhibit D. For patented articles, the Parties shall specify physical or virtual marking intended to comply with 35 U.S.C. § 287; failure to mark can limit infringement damages before actual notice. Trademark symbols and copyright notices must match the actual registration and ownership status and must not falsely state registration.

7. CONFIDENTIALITY

7.1 Definition. “Confidential Information” means any non-public information disclosed by one Party (the “Disclosing Party”) to the other (the “Receiving Party”) that is designated as confidential or that a reasonable person would understand to be confidential.

7.2 Obligations. The Receiving Party shall (a) use Confidential Information solely for purposes of performing under this Agreement, (b) protect such information with at least the same degree of care it uses to protect its own confidential information (but no less than reasonable care), and (c) not disclose Confidential Information to any third party except as expressly permitted.

7.3 Exceptions. Confidential Information does not include information that (a) is or becomes publicly available without breach of this Agreement, (b) is known by the Receiving Party prior to disclosure, (c) is independently developed without use of Confidential Information, or (d) is lawfully obtained from a third party without restriction.

7.4 Compelled Disclosure. The Receiving Party may disclose Confidential Information to the extent required by law, provided it gives prompt written notice and reasonable cooperation to seek protective treatment.

7.5 Duration and Equitable Relief. Obligations for ordinary Confidential Information continue for [____] years after disclosure or termination. Obligations for information qualifying as a trade secret continue while it remains a trade secret under applicable law. A Party may seek temporary, preliminary, or permanent equitable relief, but entitlement, proof of irreparable harm, security, and scope remain for the court or tribunal under applicable law.

7.6 Trade-Secret Measures. The Receiving Party shall apply the access controls, security measures, incident procedures, return or deletion requirements, and permitted disclosures in Exhibit E. The Parties intend these measures to support, but do not conclusively establish, the “reasonable measures” required by 18 U.S.C. § 1839(3).

8. REPRESENTATIONS & WARRANTIES

8.1 Mutual. Each Party represents and warrants that:
(a) it is duly organized, validly existing, and in good standing under the laws of its jurisdiction of formation;
(b) it has full power and authority to enter into this Agreement and to perform its obligations; and
(c) this Agreement constitutes a valid and binding obligation enforceable against it in accordance with its terms.

8.2 Licensor. Licensor further represents and warrants, subject to the disclosed exceptions in Exhibit A, that:
(a) it owns or controls sufficient rights in each listed item to grant the specific rights stated in Exhibit A;
(b) it has not knowingly granted rights inconsistent with an exclusive or sole grant stated in Exhibit A; and
(c) [select one] ☐ Licensor gives no noninfringement warranty; ☐ to Licensor’s knowledge as of the Effective Date, exercise of the expressly granted rights in the stated Territory does not infringe a third party’s identified United States IP right, subject to these exclusions: [________________________________].

8.3 Licensee. Licensee represents and warrants that:
(a) it possesses the expertise and resources necessary to exercise the License in compliance with all applicable laws; and
(b) it will not knowingly use the Licensed IP in a manner that infringes any third-party intellectual property rights.

8.4 No Other Warranties. EXCEPT AS EXPRESSLY PROVIDED IN THIS SECTION 8, AND TO THE MAXIMUM EXTENT PERMITTED BY THE GOVERNING LAW, THE LICENSED IP AND DELIVERABLES ARE PROVIDED “AS IS.” NEITHER PARTY MAKES ANY OTHER WARRANTY, EXPRESS OR IMPLIED, INCLUDING MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE, TITLE, VALIDITY, ENFORCEABILITY, SCOPE, RESULTS, OR NON-INFRINGEMENT. This disclaimer does not negate an inconsistent express warranty or a warranty that cannot lawfully be excluded.

8.5 Survival. All representations and warranties shall survive for a period of [NUMBER] years after termination or expiration of this Agreement.

9. COVENANTS & RESTRICTIONS

9.1 Compliance with Laws. Licensee shall comply with all applicable laws, regulations, and industry standards in the exercise of the License, including export control laws and anti-corruption laws.

9.2 Reverse Engineering. Except to the extent expressly permitted by applicable law notwithstanding this limitation, Licensee shall not reverse engineer, decompile, or disassemble any portion of the Licensed IP.

9.3 Quality Control (Trademark-Specific). Licensee shall use each licensed mark only for the approved goods or services and in accordance with the brand, specimen, approval, correction, inspection, and quality standards in Exhibit D. Licensor may reasonably control the nature and quality of the goods and services associated with the marks. Under 15 U.S.C. §§ 1055 and 1127, controlled use by a related company may inure to the registrant’s benefit; Exhibit D must state the controls the Parties will use.

9.4 Improvements. Exhibit C must define Improvements by IP category, identify the creator, and select ownership and license-back terms. To the extent an assignment is selected, the assigning Party hereby assigns its specified rights when created and shall execute confirmatory instruments. A copyright transfer must be in a writing signed by the owner or authorized agent under 17 U.S.C. § 204; “work made for hire” applies only when the statutory definition in 17 U.S.C. § 101 is satisfied. A patent or patent-application assignment must be in writing under 35 U.S.C. § 261, and inventors or other owners must sign when required. No employee, contractor, or affiliate rights are transferred unless that person is bound by an effective written agreement.

9.5 Notice and Cure. Licensee shall notify Licensor within [NUMBER] days of becoming aware of any breach of its obligations and shall cure such breach within [NUMBER] days thereafter.

10. TERM AND TERMINATION

10.1 Term. Unless earlier terminated pursuant to this Section 10, the term of this Agreement (the “Term”) shall commence on the Effective Date and continue [SELECT: for a period of X years / until the expiration of the last-to-expire patent comprising the Licensed IP / perpetually].

10.2 Termination for Cause. Either Party may terminate this Agreement upon written notice if the other Party materially breaches this Agreement and fails to cure such breach within [NUMBER] days after written notice of breach.

10.3 Insolvency and Bankruptcy. A Party may terminate for an assignment for the benefit of creditors or another insolvency event only to the extent enforceable under applicable law. Insolvency, commencement of a bankruptcy case, or appointment of a trustee or custodian is not by itself an enforceable termination or default trigger to the extent prohibited by 11 U.S.C. § 365(e).

10.4 Effect of Expiration or Termination. Upon expiration or an effective termination of this Agreement:
(a) the licenses terminate except for any surviving, perpetual, paid-up, sell-off, end-user, sublicense, source-code-escrow, bankruptcy, or other rights expressly stated in Exhibit A or preserved by applicable law;
(b) Licensee shall cease all use of the Licensed IP and, at Licensor’s option, return or destroy all tangible embodiments thereof;
(c) Licensee shall deliver a final Royalty report and pay all amounts due within [NUMBER] days; and
(d) Sections [Specify Surviving Sections, e.g., 1, 5, 6.2, 7, 8.4, 11–17] shall survive; and
(e) if a trustee rejects an executory contract under which the debtor is a licensor of a right to “intellectual property” as defined in 11 U.S.C. § 101(35A), Licensee retains the elections and obligations provided by 11 U.S.C. § 365(n). The statutory definition does not list trademarks, so trademark continuity, transition, quality control, and source access require specific bankruptcy planning in Exhibit A.

11. DEFAULT & REMEDIES

11.1 Events of Default. The following constitute Events of Default:
(a) failure to pay any undisputed amount when due;
(b) breach of confidentiality or intellectual property provisions;
(c) material breach of any covenant, representation, or warranty; or
(d) an enforceable insolvency event described in Section 10.3.

11.2 Notice and Cure. Upon occurrence of an Event of Default, the non-defaulting Party shall give written notice specifying the default in reasonable detail. The defaulting Party shall have [NUMBER] days to cure monetary defaults and [NUMBER] days to cure non-monetary defaults.

11.3 Graduated Remedies. If the defaulting Party fails to cure within the applicable period, the non-defaulting Party may, without limitation to any other remedies:
(a) suspend performance;
(b) declare matured, unpaid amounts due and exercise any lawful contractual damages remedy stated in Exhibit B;
(c) seek specific performance or injunctive relief when the legal requirements are satisfied; and
(d) terminate the Agreement under Section 10.2.

11.4 Attorneys’ Fees. The prevailing Party in any action to enforce this Agreement shall be entitled to recover its reasonable attorneys’ fees and costs.

12. INDEMNIFICATION

12.1 Licensor IP Indemnity. Licensor shall indemnify, defend, and hold harmless Licensee and its officers, directors, employees, and agents (“Licensee Indemnitees”) from and against any third-party claims, losses, liabilities, damages, costs, and expenses (including reasonable attorneys’ fees) arising out of or resulting from any allegation that the Licensed IP infringes or misappropriates any intellectual property right of a third party, except to the extent such claim arises from (a) modifications made by or on behalf of Licensee without Licensor’s written consent, (b) combination with products or services not provided by Licensor, or (c) Licensee’s use not in accordance with this Agreement.

12.2 Conditions. The indemnified Party shall (a) provide prompt written notice of the claim, (b) permit the indemnifying Party to control the defense and settlement, and (c) provide reasonable cooperation. Failure to comply with (a)–(c) shall relieve the indemnifying Party of liability solely to the extent prejudiced.

12.3 Infringement Mitigation. If the Licensed IP becomes, or in Licensor’s opinion is likely to become, subject to an infringement claim, Licensor may, at its option and expense: (a) procure for Licensee the right to continue using the Licensed IP; (b) replace or modify the Licensed IP so that it is non-infringing; or (c) terminate the affected license and refund prepaid fees for unused portions of the Term.

12.4 Licensee Indemnity. Licensee shall indemnify, defend, and hold harmless Licensor and its officers, directors, employees, and agents (“Licensor Indemnitees”) against claims arising out of (a) Licensee’s breach of this Agreement, or (b) Licensee’s gross negligence or willful misconduct.

13. LIMITATION OF LIABILITY

13.1 EXCEPT FOR (i) A PARTY’S GROSS NEGLIGENCE OR WILLFUL MISCONDUCT, (ii) LICENSEE’S BREACH OF CONFIDENTIALITY OR USE RESTRICTIONS, OR (iii) AMOUNTS PAYABLE PURSUANT TO SECTION 12 (INDEMNIFICATION), NEITHER PARTY SHALL BE LIABLE FOR ANY INDIRECT, INCIDENTAL, CONSEQUENTIAL, SPECIAL, OR PUNITIVE DAMAGES, INCLUDING LOST PROFITS, EVEN IF ADVISED OF THE POSSIBILITY THEREOF.

13.2 LIABILITY CAP. EXCEPT FOR THE EXCLUSIONS SELECTED BELOW, EACH PARTY’S AGGREGATE LIABILITY SHALL NOT EXCEED [AMOUNT / FEES PAID OR PAYABLE DURING A PERIOD].

Cap exclusions (select and tailor):

☐ payment obligations;

☐ third-party indemnity claims;

☐ breach of confidentiality or trade-secret duties;

☐ use outside the license grant;

☐ fraud, gross negligence, or willful misconduct;

☐ liability that cannot lawfully be limited;

☐ other: [________________________________]

The governing-law schedule must review conspicuousness, unconscionability, public-policy, exclusive-remedy, and essential-purpose limits.

14. INSURANCE

During the Term and for [NUMBER] years thereafter, each Party shall maintain insurance policies with carriers rated A- or better by AM Best with the following minimum limits:
(a) Commercial General Liability: [AMOUNT] per occurrence;
(b) Errors & Omissions/Professional Liability: [AMOUNT] per claim; and
(c) Cyber Liability (if applicable): [AMOUNT] per claim.
Each Party shall furnish certificates of insurance upon reasonable request.

15. FORCE MAJEURE

Neither Party shall be liable for any failure or delay in performance (except payment obligations) due to causes beyond its reasonable control, including acts of God, war, terrorism, civil unrest, government action, epidemic, pandemic, labor disputes, or failures of suppliers or subcontractors (“Force Majeure”). The affected Party shall notify the other promptly and use commercially reasonable efforts to mitigate the effect.

16. DISPUTE RESOLUTION

16.1 Governing Law. This Agreement and any dispute arising out of or related hereto shall be governed by and construed in accordance with the laws of [GOVERNING STATE/COUNTRY], without regard to its conflicts-of-law rules.

16.2 Exclusive Jurisdiction. Subject to Section 16.3, the Parties irrevocably submit to the exclusive jurisdiction of the state and federal courts located in [FORUM VENUE] and waive any objection to venue or inconvenient forum.

16.3 Arbitration (Optional). [SELECT ONE OF THE FOLLOWING OPTIONS—DELETE THE OTHER]
OPTION A – No Arbitration. The Parties agree that all disputes shall be resolved solely in the courts specified in Section 16.2.
OPTION B – Arbitration. Any dispute that the Parties are unable to resolve amicably shall be finally settled by binding arbitration in [CITY, STATE] under the identified rules by [NUMBER] arbitrator(s). The Federal Arbitration Act applies to the extent the transaction involves commerce. Judgment on the award may be entered in a court with jurisdiction. The Parties must state any confidentiality duty, emergency-relief process, delegation clause, discovery limits, fee allocation, class waiver, and carve-out expressly; confidentiality does not arise merely because arbitration is selected. Under 9 U.S.C. § 2, a written arbitration provision involving commerce is enforceable subject to generally applicable contract defenses and statutory exceptions.

16.4 Jury Trial Waiver. EACH PARTY HEREBY WAIVES, TO THE FULLEST EXTENT PERMITTED BY LAW, ANY RIGHT TO A TRIAL BY JURY IN ANY ACTION ARISING OUT OF OR RELATED TO THIS AGREEMENT.

16.5 Injunctive Relief. Notwithstanding the arbitration election, either Party may request temporary or provisional relief from a court or emergency arbitrator as specified here: [________________________________]. Entitlement, irreparable harm, security, venue, and scope remain subject to applicable law and the selected rules.

17. GENERAL PROVISIONS

17.1 Amendment & Waiver. No amendment or modification of this Agreement shall be effective unless in writing and signed by both Parties. No waiver shall be effective unless in writing and signed by the waiving Party, and any waiver shall apply only to the specific instance waived.

17.2 Assignment. Neither Party may assign or delegate this Agreement, in whole or in part, without the prior written consent of the other Party, except that either Party may assign this Agreement [to an Affiliate / in a merger or sale of the relevant business / as otherwise stated] if the assignee has the required rights and assumes the obligations in writing. Any restriction and any statement that an assignment is void are subject to applicable bankruptcy and other mandatory law. Transfers of ownership or exclusive federal IP rights must also satisfy applicable signed-writing and recordation rules, including 17 U.S.C. § 204 and 35 U.S.C. § 261.

17.3 Successors & Assigns. This Agreement shall be binding upon and inure to the benefit of the Parties and their respective permitted successors and assigns.

17.4 Severability. If any provision is held invalid or unenforceable, the remainder shall remain in full force, and the invalid provision shall be interpreted to fulfill its intended purpose to the maximum extent permitted.

17.5 Notices. All notices shall be in writing and delivered by hand, certified mail (return receipt requested), nationally recognized overnight courier, or email (with confirmation of receipt) to the addresses set forth in the preamble (or such other address designated in writing). Notices are effective upon receipt.

17.6 Integration. This Agreement, including all Exhibits, constitutes the entire understanding and agreement of the Parties with respect to the subject matter and supersedes all prior or contemporaneous agreements, understandings, and representations.

17.7 Counterparts & Electronic Signatures. This Agreement may be executed in counterparts. Under 15 U.S.C. § 7001, a transaction in or affecting interstate or foreign commerce generally may not be denied legal effect solely because an electronic record or signature was used, but no person is required to agree to use or accept electronic records. The Parties shall comply with state electronic-transactions law and any special recordation, notarization, consent, attribution, or retention requirement.

17.8 Interpretation. Headings are for convenience only and shall not affect interpretation. The word “including” means “including without limitation.” The Parties acknowledge that each Party participated in drafting and no presumption of construction against the drafter shall apply.

18. EXECUTION BLOCK

IN WITNESS WHEREOF, the Parties have caused this Agreement to be executed by their duly authorized representatives as of the Effective Date.

EXHIBIT A – LICENSED IP AND RIGHTS MATRIX

Disclosed liens, prior licenses, government or funding rights, open-source terms, standards commitments, retained rights, bankruptcy protections, sell-off rights, and excluded materials: [________________________________]

EXHIBIT B – MILESTONE EVENTS & PAYMENTS

EXHIBIT C – IMPROVEMENTS OWNERSHIP & LICENSE

[Specify ownership structure, assignment language, and any royalty reductions or cross-licensing.]

EXHIBIT D – TRADEMARK QUALITY CONTROL AND NOTICES

• Approved marks, registration status, goods/services, specimens, colors, and formats: [________________________________]
• Approval process and response time: [________________________________]
• Quality standards, inspections, samples, corrections, and cessation: [________________________________]
• Patent, copyright, and trademark notices: [________________________________]

EXHIBIT E – TRADE-SECRET AND SECURITY CONTROLS

• Authorized persons and permitted purpose: [________________________________]
• Technical and organizational safeguards: [________________________________]
• Copying, storage, access logging, incident notice, return, and deletion: [________________________________]
• Residual knowledge, reverse engineering, independent development, and compelled disclosure: [________________________________]

EXHIBIT F – GOVERNING-LAW AND IP COMPLETION CHECKLIST

☐ Governing state, forum, and official state-law sources identified.

☐ Each licensed item’s owner, chain of title, territorial scope, registration status, liens, prior grants, and renewal or maintenance status verified.

☐ Copyright grant separately enumerates rights and satisfies signed-writing requirements for any exclusive transfer.

☐ Patent grant separately identifies patents, claims, countries, field, have-made rights, prosecution, marking, enforcement, and recordation.

☐ Trademark schedule contains actual quality-control standards and confirms approved goods/services and registration symbols.

☐ Trade-secret schedule documents reasonable secrecy measures and permitted access and use.

☐ Improvement ownership addresses employees, contractors, inventors, authors, work-made-for-hire limits, assignments, license-backs, and further assurances.

☐ Bankruptcy provisions address §§ 365(e) and 365(n), sublicenses, escrow, transition, and the exclusion of trademarks from § 101(35A).

☐ Royalties, audit, taxes, withholding, currency, records, late charges, and post-termination payments completed.

☐ Indemnity, liability cap, arbitration, jury waiver, equitable relief, assignment, export controls, privacy, and e-signatures reviewed under selected law.

SOURCES AND REFERENCES

• U.S. Copyright Office — Copyright Law, Title 17 (updated through Dec. 18, 2025)
• GovInfo — 17 U.S.C. § 106
• GovInfo — 17 U.S.C. § 204
• GovInfo — 35 U.S.C. § 261
• GovInfo — 35 U.S.C. § 271
• GovInfo — 35 U.S.C. § 287
• GovInfo — 15 U.S.C. § 1055
• GovInfo — 15 U.S.C. § 1127
• GovInfo — 18 U.S.C. § 1836
• GovInfo — 18 U.S.C. § 1839
• GovInfo — 11 U.S.C. § 101
• GovInfo — 11 U.S.C. § 365
• GovInfo — 9 U.S.C. § 2
• GovInfo — 15 U.S.C. § 7001