New York Intellectual Property License Agreement

INTELLECTUAL PROPERTY LICENSE AGREEMENT

New York-Governed Contract

This Intellectual Property License Agreement (the “Agreement”) is made as of [__/__/____] by:

Licensor: [FULL LEGAL NAME], a [JURISDICTION / ENTITY TYPE], at [ADDRESS] (“Licensor”); and

Licensee: [FULL LEGAL NAME], a [JURISDICTION / ENTITY TYPE], at [ADDRESS] (“Licensee”).

1. Transaction Classification

If this transaction transfers ownership rather than granting permission, use a separately reviewed assignment instrument. If it includes development, hosting, support, manufacturing, distribution, franchise, employment, or settlement obligations, attach the necessary operational terms rather than treating them as implied by the license.

2. Licensed-Asset Register

Only assets completed in Schedule 1 are licensed.

For each asset, attach enough material to distinguish the licensed subject from unlicensed background technology, third-party content, public-domain material, open-source components, generic know-how, and later-developed material.

3. Grant Schedule

Licensor grants only the permissions selected and completed in Schedule 2 for each Asset ID.

All rights not expressly granted are reserved. No right arises merely because an asset, file, tool, account, repository, product, or person is accessible to Licensee.

Copyright-Writing Check

Under 17 U.S.C. § 101, a transfer of copyright ownership includes an exclusive license but not a nonexclusive license. Section 204(a) requires a transfer of copyright ownership, other than by operation of law, to be in a writing signed by the owner of the rights conveyed or the owner's authorized agent. If Schedule 2 grants any exclusive copyright right, identify it precisely and obtain the required signature.

Patent-Writing and Recordation Check

35 U.S.C. § 261 states that patent applications, patents, or interests in them are assignable by a written instrument; it also addresses written exclusive grants and a three-month / prior-purchaser recordation rule for an interest constituting an assignment, grant, or conveyance. Counsel must classify the actual patent transaction and complete any appropriate USPTO recordation rather than assuming this contract's label controls.

4. Deliverables, Access, and Acceptance

Licensee will have [____] business days after delivery to test a deliverable against the objective criteria in Schedule 3 and give a written, particularized rejection notice. Silence means acceptance only if the parties select this clause: ☐ selected ☐ not selected.

Credentials, keys, source code, design files, models, training materials, documentation, test environments, maintenance tools, and transition assistance are included only if listed.

5. Fees, Royalties, Statements, and Audit

Schedule 3 must define every component of the royalty base, permitted deduction, currency conversion, bundled-sale allocation, affiliate transfer, sublicense income, refund, tax, bad debt, sample, internal use, and reporting period.

Licensee will keep the records specifically identified in Schedule 3 for [____] years. An audit may occur [FREQUENCY], on [NOTICE], through [INDEPENDENT REVIEWER / CONFIDENTIALITY TERMS]. The threshold for shifting audit cost, correction period, interest term, and treatment of overpayment are: [________________________________].

No payment is “nonrefundable,” accelerated, or owed after termination unless the Agreement states the exact event and amount.

6. Exclusivity and Diligence

If any grant is exclusive or sole, complete this section; otherwise delete it.

Failure does not automatically terminate the entire Agreement unless Schedule 2 says so. Available consequences are limited to the selected asset, field, territory, or exclusivity component where stated.

7. Sublicenses, Contractors, and Affiliates

Each permitted sublicense must:

1. identify the licensed Asset IDs and grant no broader right than Licensee holds;
2. contain applicable use, confidentiality, quality, security, audit, attribution, restriction, and termination flow-downs;
3. state whether it survives expiration, termination, assignment, or bankruptcy-related events;
4. prohibit further sublicensing unless expressly approved; and
5. require reports and payments needed for Licensee to perform this Agreement.

Licensee remains responsible for its own performance and for the contractually allocated acts of permitted users. Licensor receives no direct enforcement right against a sublicensee unless the sublicense or Schedule 2 expressly creates one.

8. Asset-Specific Controls

8.1 Trademarks

Schedule 4 must state the approved marks, form, goods/services, territory, style guide, specimen and preapproval process, quality standards, inspection rights, correction procedure, attribution, domain/social-account rules, and disposition of branded materials. Licensee may not register or claim rights in a licensed mark or confusingly similar designation except as Schedule 4 expressly permits.

8.2 Trade Secrets and Know-How

Schedule 5 must identify the protected information or protected categories, permitted users and purpose, security measures, disclosure channels, copying limits, incident notice, return/destruction process, and information that is public, previously known, independently developed, or lawfully received without restriction. Contract confidentiality does not convert unidentified or public information into a trade secret.

8.3 Software and Open-Source Components

Schedule 6 must list code repositories, version/build, object/source access, APIs, dependencies, third-party and open-source components, applicable licenses and notices, hosting/availability terms, security responsibilities, update/support obligations, data rights, escrow if any, and end-of-term transition.

8.4 Patents

Schedule 7 must allocate prosecution, maintenance fees, foreign filings, claim decisions, notice and marking, infringement response, control of enforcement/defense, settlement consent, cost, recovery, cooperation, and effect of invalidity, expiration, disclaimer, or abandonment.

8.5 Copyrights and Content

Schedule 7 must identify editions, versions, files, authorship/ownership records, third-party material, notices and attribution, editing/derivative rights, moral-rights consents where applicable, takedown process, archival copies, and end-of-term disposition.

9. Improvements, Feedback, and New Material

Do not use “work made for hire,” “joint owner,” “assignment,” or “all improvements” as shorthand without classifying the actual contribution, author/inventor, asset type, timing, and required signed instrument.

10. Representations, Warranties, and Disclaimers

Select and state the negotiated promises:

☐ Licensor has authority to grant the rights described in Schedule 2.

☐ Licensor identifies all known liens, prior grants, restrictions, and third-party approvals in Schedule 1.

☐ Deliverables will materially meet the objective criteria in Schedule 3 for [PERIOD].

☐ No noninfringement representation is given.

☐ Limited knowledge-qualified noninfringement representation: [ASSET / TERRITORY / KNOWLEDGE DEFINITION / EXCLUSIONS: __________________________________].

☐ Other: [________________________________].

Any disclaimer must be drafted for the actual asset and transaction. Do not copy a sale-of-goods merchantability disclaimer into a patent, trademark, trade-secret, data, hosted-service, or pure copyright license without analyzing whether it fits.

11. Third-Party Claims and Indemnity

No indemnity applies unless Schedule 9 is completed. It must identify:

• the indemnifying and protected persons;
• the exact third-party claim categories;
• exclusions for unauthorized modification, combination, use, specifications, or continued use after notice;
• notice, control, counsel, cooperation, settlement-consent, and conflict procedures;
• repair, replacement, modification, license procurement, refund, or termination options; and
• whether defense cost, settlement, judgment, business interruption, recall, or other loss is covered and subject to any limit.

12. Liability Allocation and Insurance

No liability cap or damages exclusion applies unless Schedule 9 is completed and selected here: ☐ selected ☐ not selected.

Schedule 9 must state the cap base, period, aggregate/application, excluded claims, damages categories, sole/exclusive remedies, and interaction with indemnity, confidentiality, security, payment, title/authority, fraud, intentional conduct, bodily injury, property damage, and equitable relief.

Insurance applies only if Schedule 9 identifies coverage, limits, duration, insured status, evidence, notice, and responsibility for deductibles or retentions.

13. Term, Termination, and Bankruptcy Screen

Term: [________________________________].

Termination events and cure:

The commencement of a bankruptcy case, insolvency, or appointment of a trustee or custodian is not stated as an automatic termination event. 11 U.S.C. § 365(e) restricts termination or modification of an executory contract solely because of specified insolvency, bankruptcy-case, or trustee/custodian conditions, subject to statutory exceptions. Section 365(n) separately addresses specified rights of a licensee when a debtor-licensor rejects an executory IP license. Complete Schedule 8 with bankruptcy counsel; do not assume every licensed asset or obligation receives identical treatment.

14. Post-Termination Plan

For each Asset ID, Schedule 10 must state:

15. Enforcement and Disputes

Each party must give notice of a claimed breach to [CONTACT / METHOD] and allow the cure period in Section 13 unless urgent relief is sought or cure is impossible.

The parties do not stipulate that any breach automatically establishes irreparable harm, entitlement to an injunction, bond waiver, specific performance, fee shifting, enhanced damages, or another remedy. A party seeking relief must satisfy the applicable law and evidentiary standard.

New York law governs the contract issues that the parties may select, while controlling federal law governs federal intellectual-property and bankruptcy issues. The parties select no arbitration, exclusive forum, predispute jury waiver, or prevailing-party fee clause in this form. Any such provision requires separate review and express agreement.

16. General Terms

This Agreement and its completed schedules are the entire agreement concerning the licensed assets and supersede prior statements on that subject. The following order of control applies: [________________________________].

An amendment or waiver must be in a signed writing identifying the changed provision. Assignment, change-of-control, delegation, and sublicense treatment are governed only by the completed terms in Schedule 2 and applicable law.

If a provision is unenforceable, it will be severed only to the extent necessary; a court is not authorized by this clause to rewrite the parties' technical or economic bargain. Notices must use the contacts and methods in Schedule 11.

17. Signatures

Schedules

1. Licensed-Asset Register and Chain of Title
2. Grant by Asset, Right, Field, Territory, Channel, and Term
3. Deliverables, Acceptance, Fees, Royalty Definition, Reports, and Audit
4. Trademark Standards and Quality Control
5. Trade-Secret / Know-How Safeguards
6. Software, Data, Hosting, Security, Third-Party, and Open-Source Terms
7. Patent and Copyright Administration / Enforcement
8. Bankruptcy, Escrow, Continuity, and Critical Dependencies
9. Warranties, Indemnity, Liability Limits, Remedies, and Insurance
10. Post-Termination and Transition Plan
11. Notices, Contacts, and Order of Control

Completion Checklist

☐ Every licensed asset is uniquely identified and chain of title reviewed.

☐ Grant type and each permitted act are selected asset by asset.

☐ Any exclusive copyright grant is in a signed writing satisfying 17 U.S.C. § 204(a).

☐ Patent transaction classification and any appropriate § 261 recordation are resolved.

☐ Third-party, open-source, employee/contractor, lien, prior-license, and consent issues are listed.

☐ Trademark quality control and trade-secret safeguards are operational, not generic.

☐ Fees, royalty base, deductions, allocations, reporting, records, and audit reconcile.

☐ Improvements, feedback, joint development, and filing responsibility are explicit.

☐ Bankruptcy filing is not used as an automatic termination shortcut; Schedule 8 is reviewed.

☐ Remedies, indemnity, limits, insurance, sublicenses, and end-of-term rights are completed.

☐ New York jury-waiver and dispute provisions receive separate current-law review if added.

Sources and References

• U.S. House, Office of the Law Revision Counsel, 17 U.S.C. § 101 — definition of transfer of copyright ownership.
• U.S. House, Office of the Law Revision Counsel, 17 U.S.C. § 204 — execution of transfers.
• U.S. House, Office of the Law Revision Counsel, 35 U.S.C. § 261 — ownership; assignment.
• U.S. House, Office of the Law Revision Counsel, 11 U.S.C. § 365 — executory contracts and unexpired leases.

Current official U.S. Code text verified August 10, 2026. Polite direct requests to uscode.house.gov timed out; the same official preliminary-edition URLs were fetched through Sofya.