Texas Intellectual Property License Agreement

TEXAS INTELLECTUAL PROPERTY LICENSE AGREEMENT

Governed by Texas Civil Practice and Remedies Code, Texas Business and Commerce Code, and Texas Common Law

TABLE OF CONTENTS

1. Parties and Recitals
2. Texas-Specific Definitions
3. Grant of License
4. Consideration, Payment, and Texas Usury Compliance
5. Texas Tax Obligations (Sales Tax, Franchise Tax)
6. Delivery, Support, and Maintenance
7. Records and Audit Rights
8. Intellectual Property Protection and Enforcement Under Texas Law
9. Confidentiality and Trade Secrets (TUTSA)
10. Representations and Warranties — Texas Statutory Framework
11. Covenants and Restrictions — Including Texas Non-Compete Rules
12. DTPA Compliance and Consumer Protection
13. Indemnification
14. Limitation of Liability — Texas Statutory Carve-Outs
15. Insurance
16. Term and Termination
17. Default and Remedies Under Texas Law
18. Dispute Resolution — Texas Venue, Jurisdiction, and Jury Waiver
19. Force Majeure
20. General Provisions
21. Execution
22. Exhibit A — Description of Licensed IP
23. Exhibit B — Milestone Events and Payments
24. Exhibit C — Improvements Ownership and License-Back

1. PARTIES AND RECITALS

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

LICENSOR:
Name: [________________________________]
Entity Type: [________________________________] organized under the laws of [________________________________]
Principal Office: [________________________________]
Texas Registered Agent: [________________________________]
("Licensor")

LICENSEE:
Name: [________________________________]
Entity Type: [________________________________] organized under the laws of [________________________________]
Principal Office: [________________________________]
Texas Registered Agent: [________________________________]
("Licensee")

Each a "Party" and collectively the "Parties."

Recitals

A. Licensor owns or controls certain intellectual property described in Exhibit A, including patents, copyrights, trademarks registered under Tex. Bus. & Com. Code Ch. 16 and/or the USPTO, trade secrets protected under TUTSA (Tex. Civ. Prac. & Rem. Code Ch. 134A), and proprietary know-how.

B. Licensee desires to obtain a license to exploit the Licensed IP within Texas and the Territory, and Licensor is willing to grant such license subject to the terms herein.

C. The Parties acknowledge that this Agreement is a binding contract under Texas law, that breach may give rise to statutory attorney's fees under Tex. Civ. Prac. & Rem. Code § 38.001, and that the DTPA may apply to transactions involving the Licensed IP to the extent a Party qualifies as a "consumer."

D. The Parties further acknowledge that any IP transfer involving software components is subject to Texas sales and use tax under Tex. Tax Code § 151.009, and that franchise tax implications under Tex. Tax Code Ch. 171 may arise from IP licensing revenue.

NOW, THEREFORE, for good and valuable consideration, the Parties agree as follows:

2. TEXAS-SPECIFIC DEFINITIONS

"Affiliate" means any entity that directly or indirectly controls, is controlled by, or is under common control with a Party (more than 50% voting interest).

"Confidential Information" has the meaning set forth in Section 9.

"DTPA" means the Texas Deceptive Trade Practices–Consumer Protection Act, Tex. Bus. & Com. Code § 17.41 et seq.

"Field of Use" means [________________________________].

"Improvement" means any modification, enhancement, derivative work, or improvement to the Licensed IP created by or for Licensee during the Term.

"Licensed IP" means the patents, copyrights, trademarks, trade secrets, know-how, software, and other intellectual property described in Exhibit A, together with all related documentation.

"Net Sales" means gross revenues from Licensee's exploitation of the Licensed IP, less: (a) returns and credits actually given; (b) trade discounts actually allowed; (c) Texas sales and use taxes collected and remitted; and (d) freight charges separately invoiced.

"Products" means goods or services incorporating or derived from the Licensed IP.

"Territory" means [________________________________].

"Trade Secret" means a trade secret as defined in Tex. Civ. Prac. & Rem. Code § 134A.002(6) — information that derives independent economic value from not being generally known or readily ascertainable and is the subject of reasonable efforts to maintain secrecy.

"TUTSA" means the Texas Uniform Trade Secrets Act, Tex. Civ. Prac. & Rem. Code Ch. 134A.

3. GRANT OF LICENSE

3.1 License Grant. Subject to this Agreement, Licensor grants Licensee a [____] (exclusive / non-exclusive / sole), [____] (worldwide / Territory-limited), royalty-bearing license under the Licensed IP to [________________________________] (e.g., make, have made, use, sell, offer for sale, import, display, perform, reproduce, distribute) within the Field of Use during the Term.

3.2 Sublicensing. Licensee [____] (may / may not / may with prior written consent) sublicense the rights granted, provided each sublicensee executes a written agreement with terms no less protective of Licensor than this Agreement. Licensee remains jointly and severally liable for sublicensee acts.

3.3 Retained Rights. Licensor retains all rights not expressly granted, including the right to exploit the Licensed IP outside the Field of Use and Territory.

3.4 Governmental Rights Reservation. Nothing herein limits rights of the U.S. Government or Texas state agencies arising by operation of law or from funding related to the Licensed IP's creation.

3.5 Trademark Component. To the extent the Licensed IP includes trademarks registered under Tex. Bus. & Com. Code Ch. 16, Licensee shall comply with Licensor's quality standards and brand guidelines. Failure to exercise adequate quality control may jeopardize trademark validity under Texas and federal law.

4. CONSIDERATION, PAYMENT, AND TEXAS USURY COMPLIANCE

4.1 Up-Front Fee. Licensee shall pay a non-refundable license fee of $[________________________________] within [____] days after the Effective Date.

4.2 Royalties. Licensee shall pay Licensor [____]% of Net Sales, accruing upon sale or invoicing (whichever is first), payable quarterly within [____] days after each calendar quarter, accompanied by a certified written report.

4.3 Milestone Payments. Licensee shall pay the milestone amounts in Exhibit B upon achievement of each corresponding milestone.

4.4 Minimum Royalty. Beginning in Year [____], Licensee shall pay a minimum annual royalty of $[________________________________], credited against running royalties.

4.5 Late Payments and Texas Usury Cap. Overdue amounts accrue interest at [____]% per month, but in no event exceeding the maximum rate under Tex. Fin. Code Ch. 302 (generally 10% per annum for non-exempt transactions; higher ceilings may apply for qualified commercial transactions under Ch. 303 and Ch. 306 as published by the Texas OCCC). Excess interest is automatically reduced and applied to principal.

4.6 Prejudgment Interest. In litigation for unpaid amounts, prejudgment interest accrues under Tex. Fin. Code § 304.003 — simple interest at the Federal Reserve prime rate at judgment (floor 5%, ceiling 15%).

4.7 Tax Gross-Up. If Licensee must withhold taxes from payments, Licensee shall gross up so Licensor receives the full amount invoiced.

5. TEXAS TAX OBLIGATIONS

5.1 Sales and Use Tax. To the extent the Licensed IP includes software components, Texas classifies computer programs as "tangible personal property" under Tex. Tax Code § 151.009. Payments allocable to software are subject to Texas sales and use tax at 6.25% state plus up to 2% local, unless an exemption applies.

5.2 Royalty Payments on Non-Software IP. Royalties for patents, copyrights (other than software), and trade secret licenses are generally not subject to Texas sales tax, as they represent payments for intangible rights. However, the Texas Comptroller may reclassify certain transactions; the Parties shall cooperate in responding to any Comptroller inquiry.

5.3 Franchise Tax. Each Party represents it is current on Texas franchise tax under Tex. Tax Code Ch. 171 and not subject to forfeiture. Licensee acknowledges that revenue from Products may be included in Licensee's Texas franchise tax "total revenue" calculation, and royalty payments may be deductible under the cost-of-goods-sold computation.

5.4 Tax Indemnity. Each Party indemnifies the other against tax liability (including Comptroller penalties and interest) arising from that Party's failure to comply with this Section 5.

6. DELIVERY, SUPPORT, AND MAINTENANCE

6.1 Delivery. Licensor shall deliver the Licensed IP and documentation in electronic form within [____] days after the Effective Date.

6.2 Support. Licensor shall provide [________________________________] (describe support levels or state "no support obligations").

6.3 Updates. [________________________________] (specify whether included in the license fee or subject to additional fees).

7. RECORDS AND AUDIT RIGHTS

7.1 Records. Licensee shall maintain complete and accurate records relevant to royalty calculations for at least four (4) years after the period to which they relate, consistent with the Texas four-year statute of limitations under Tex. Civ. Prac. & Rem. Code § 16.004.

7.2 Audit. Upon [____] business days' written notice, Licensor may audit Licensee's records up to twice per calendar year. If the audit reveals an underpayment exceeding 5%, Licensee shall pay audit costs and remit underpaid amounts with interest within ten (10) days.

8. INTELLECTUAL PROPERTY PROTECTION AND ENFORCEMENT UNDER TEXAS LAW

8.1 Prosecution and Maintenance. Licensor controls filing, prosecution, and maintenance of all patent applications, trademark registrations (including Tex. Bus. & Com. Code Ch. 16 state registrations), and copyright registrations covering the Licensed IP, at Licensor's expense.

8.2 Infringement Notice. Each Party shall promptly notify the other of any known or suspected infringement of the Licensed IP in Texas or the Territory.

8.3 Enforcement.

(a) First Right. [____] (Licensor / Licensee) has the first right, but not the obligation, to initiate enforcement actions, including:

• Patent infringement under 35 U.S.C. § 271;
• Trademark infringement under Tex. Bus. & Com. Code § 16.102 and 15 U.S.C. § 1114;
• Trade secret misappropriation under TUTSA (Tex. Civ. Prac. & Rem. Code Ch. 134A); and
• Copyright infringement under 17 U.S.C. § 501.

(b) Cooperation. The non-controlling Party shall cooperate and join actions if required for standing, at the controlling Party's expense.

(c) Recovery. Monetary recoveries first reimburse litigation costs; the remainder is allocated [________________________________].

8.4 IP Marking. Licensee shall mark Products with appropriate IP notices as required by law, including patent marking under 35 U.S.C. § 287(a) and trademark symbols (® for registered marks; ™ for Texas state or unregistered marks).

9. CONFIDENTIALITY AND TRADE SECRETS (TUTSA)

9.1 Definition. "Confidential Information" means non-public information designated as confidential or reasonably understood to be confidential, including Trade Secrets under Tex. Civ. Prac. & Rem. Code § 134A.002(6).

9.2 Obligations. The receiving Party shall: (a) use Confidential Information solely for this Agreement; (b) protect it with at least the same care as its own (not less than reasonable care); and (c) disclose only to personnel bound by written confidentiality obligations.

9.3 Exclusions. Information that: (a) is publicly available without breach; (b) was known before disclosure; (c) is independently developed; or (d) is received from a third party without restriction.

9.4 TUTSA Remedies. Misappropriation of Trade Secrets is actionable under TUTSA, providing:

(a) Injunctive relief (§ 134A.003) — actual or threatened misappropriation may be enjoined; in exceptional circumstances, courts may order a reasonable royalty;
(b) Damages (§ 134A.004(a)) — actual loss plus unjust enrichment, or a reasonable royalty in lieu thereof;
(c) Exemplary damages (§ 134A.004(b)) — up to twice the damages award for willful and malicious misappropriation proved by clear and convincing evidence; and
(d) Attorney's fees (§ 134A.005) — for willful/malicious misappropriation or bad-faith claims.

9.5 TUTSA Statute of Limitations. Claims for misappropriation must be brought within three (3) years of discovery under Tex. Civ. Prac. & Rem. Code § 134A.006.

9.6 Compelled Disclosure. Permitted if required by court order, with prompt notice and cooperation to seek protective treatment.

10. REPRESENTATIONS AND WARRANTIES — TEXAS STATUTORY FRAMEWORK

10.1 Mutual. Each Party represents and warrants:

(a) it is duly organized, validly existing, and in good standing, including Texas franchise tax compliance (Tex. Tax Code Ch. 171);
(b) it has full power and authority to enter into this Agreement;
(c) this Agreement is valid and binding under Texas law; and
(d) if a foreign entity, it is registered with the Texas Secretary of State to do business in Texas.

10.2 Licensor. Licensor further represents:

(a) Licensor owns or has sufficient rights to the Licensed IP to grant the license;
(b) to Licensor's knowledge, the Licensed IP does not infringe third-party IP rights within the Territory;
(c) Licensor has not granted inconsistent licenses;
(d) all patent applications, trademark registrations (including Texas Secretary of State filings under Ch. 16), and copyright registrations listed in Exhibit A are in good standing; and
(e) there are no pending or threatened claims against the Licensed IP.

10.3 Licensee. Licensee represents:

(a) it possesses the expertise and resources to exploit the Licensed IP in compliance with law;
(b) it will not knowingly infringe third-party IP; and
(c) it has not been the subject of a DTPA enforcement action in the preceding five (5) years.

10.4 Disclaimer. EXCEPT AS EXPRESSLY PROVIDED IN THIS SECTION 10, NEITHER PARTY MAKES WARRANTIES, EXPRESS OR IMPLIED, INCLUDING WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE, TITLE, OR NON-INFRINGEMENT. To the extent the Licensed IP includes software, the Parties acknowledge that Texas courts may apply UCC Article 2 implied warranties (Tex. Bus. & Com. Code §§ 2.314–2.315) and that disclaimers must comply with § 2.316 (conspicuous, mentioning "merchantability").

10.5 Survival. Representations survive for [____] years after termination.

11. COVENANTS AND RESTRICTIONS — INCLUDING TEXAS NON-COMPETE RULES

11.1 Use Restrictions. Licensee shall not:

(a) use the Licensed IP outside the Field of Use or Territory;
(b) remove proprietary notices;
(c) challenge Licensor's ownership of the Licensed IP; or
(d) reverse engineer trade secret components of the Licensed IP except as expressly permitted by applicable Texas law.

11.2 Quality Control (Trademark Component). Licensee shall use Licensed IP trademarks in compliance with Licensor's quality standards and brand guidelines. Licensor may inspect Products on reasonable notice. Substandard use may constitute grounds for termination and may expose both Parties to DTPA liability.

11.3 Non-Compete Provisions. Any covenant not to compete in this Agreement or a related agreement must comply with Tex. Bus. & Com. Code § 15.50 et seq. Specifically:

(a) the covenant must be ancillary to or part of an otherwise enforceable agreement at the time the agreement is made;
(b) it must contain reasonable limitations as to time, geographic area, and scope of activity; and
(c) it must not impose a restraint greater than necessary to protect goodwill or other legitimate business interest.

The Parties acknowledge Marsh USA Inc. v. Cook, 354 S.W.3d 764 (Tex. 2011), holding that consideration such as stock options or access to confidential information may satisfy the ancillary agreement requirement. Under § 15.51, a Texas court may reform an overbroad covenant to make it enforceable.

11.4 Improvements. Ownership of Improvements shall [________________________________] (vest in Licensor / vest in Licensee / follow a defined split per Exhibit C). If Improvements vest in Licensee, Licensee hereby grants Licensor a [________________________________] license to such Improvements as set forth in Exhibit C.

11.5 Compliance with Laws. Licensee shall comply with all applicable Texas and federal laws, including export controls, the DTPA, and the TDPSA (Tex. Bus. & Com. Code Ch. 503) to the extent the Licensed IP processes Personal Data of Texas residents.

12. DTPA COMPLIANCE AND CONSUMER PROTECTION

12.1 Applicability. The Parties acknowledge that the DTPA (Tex. Bus. & Com. Code § 17.41 et seq.) broadly defines "consumer" to include any entity that seeks or acquires goods or services by purchase or lease. IP licensing transactions may fall within the DTPA's scope.

12.2 Prohibited Practices. Neither Party shall, in connection with the Licensed IP or Products:

(a) misrepresent characteristics, uses, or benefits;
(b) represent goods as being of a particular standard if they are not;
(c) engage in unconscionable conduct under § 17.50(a)(3); or
(d) breach an express or implied warranty actionable under § 17.50(a)(2).

12.3 Treble Damages Warning. A knowing violation of the DTPA may result in damages up to three times economic damages under § 17.50(b)(1). An intentional violation may result in treble mental anguish damages. Attorney's fees and court costs are also recoverable.

12.4 Business Consumer Waiver. If Licensee is a "business consumer" with assets or net worth exceeding $25 million, Licensee may waive DTPA applicability by separate written waiver under § 17.49(f), negotiated and signed before or contemporaneously with this Agreement.

13. INDEMNIFICATION

13.1 Licensor IP Indemnity. Licensor shall defend, indemnify, and hold harmless Licensee from third-party IP claims alleging that the Licensed IP infringes or misappropriates third-party rights in the Territory, except claims arising from:

(a) modifications by Licensee not approved in writing;
(b) combination with products not provided by Licensor;
(c) use outside the Field of Use or Territory; or
(d) Licensee's use not in accordance with this Agreement.

13.2 Mitigation. If the Licensed IP becomes subject to an infringement claim, Licensor may: (a) procure rights for continued use; (b) modify or replace to eliminate infringement; or (c) terminate the affected license and refund prepaid fees for the unused Term.

13.3 Licensee Indemnity. Licensee shall indemnify Licensor from claims arising from: (a) Licensee's breach; (b) Licensee's gross negligence or willful misconduct; (c) DTPA claims attributable to Licensee; and (d) Products manufactured, sold, or distributed by Licensee.

13.4 Procedure. Prompt written notice, control of defense by indemnifying Party, and cooperation at indemnifying Party's expense. Late notice relieves the indemnifying Party only to the extent prejudiced.

14. LIMITATION OF LIABILITY — TEXAS STATUTORY CARVE-OUTS

14.1 Exclusion of Consequential Damages. EXCEPT FOR (i) GROSS NEGLIGENCE OR WILLFUL MISCONDUCT, (ii) BREACH OF CONFIDENTIALITY OR USE RESTRICTIONS, OR (iii) INDEMNIFICATION OBLIGATIONS (SECTION 13), NEITHER PARTY IS LIABLE FOR INDIRECT, INCIDENTAL, CONSEQUENTIAL, SPECIAL, OR PUNITIVE DAMAGES, INCLUDING LOST PROFITS, EVEN IF ADVISED OF THE POSSIBILITY.

14.2 No Cap for IP Breach. There is no aggregate liability cap for Licensor's breach of IP ownership obligations or Licensee's breach of Licensed IP use restrictions.

14.3 DTPA Damages Preserved. These limitations shall not limit DTPA damages (including treble damages) to the extent a Texas court holds the DTPA applicable and such contractual limitations void as against Texas public policy.

14.4 TUTSA Damages Preserved. TUTSA exemplary damages (up to 2x for willful/malicious misappropriation, § 134A.004(b)) are not limited by this Section 14.

15. INSURANCE

During the Term and for [____] years thereafter, each Party shall maintain insurance with carriers rated A- or better by AM Best:

(a) Commercial General Liability: $[________________________________] per occurrence
(b) Errors & Omissions / Professional Liability: $[________________________________] per claim
(c) Cyber Liability (if Licensed IP involves data processing): $[________________________________] per claim

Certificates upon request. Licensee shall name Licensor as additional insured on CGL policy.

16. TERM AND TERMINATION

16.1 Term. This Agreement commences on the Effective Date and continues for [________________________________] (the "Term") unless earlier terminated.

16.2 Termination for Cause. Either Party may terminate upon [____] days' written notice of material breach that remains uncured.

16.3 Termination for Insolvency. Either Party may terminate immediately if the other becomes insolvent, files for bankruptcy, or makes an assignment for creditors.

16.4 Effect of Termination. Upon termination:

(a) all licenses terminate; Licensee shall cease use of the Licensed IP;
(b) Licensee shall return or destroy all embodiments of the Licensed IP at Licensor's election and certify destruction within [____] days;
(c) Licensee shall deliver a final royalty report and pay all amounts due within [____] days;
(d) sell-off period: Licensee may sell existing conforming inventory for [____] days, subject to continued royalty and quality obligations; and
(e) Sections 2, 4 (accrued), 5, 7, 9, 10.4, 11.3, 12–14, 17–18 survive.

17. DEFAULT AND REMEDIES UNDER TEXAS LAW

17.1 Events of Default.

(a) failure to pay undisputed amounts when due;
(b) breach of confidentiality or IP protection provisions;
(c) material breach of any covenant, representation, or warranty;
(d) insolvency event under Section 16.3; or
(e) DTPA violation in connection with the Licensed IP or Products.

17.2 Notice and Cure. The non-defaulting Party shall give written notice specifying the default. Cure periods: [____] days for monetary defaults; [____] days for non-monetary defaults.

17.3 Graduated Remedies. If uncured, the non-defaulting Party may:

(a) suspend performance;
(b) accelerate all amounts due;
(c) seek specific performance or injunctive relief without bond for IP and Trade Secret violations, to the extent permitted by Texas Rule of Civil Procedure 684;
(d) terminate under Section 16.2; and
(e) pursue all other remedies at law or equity.

17.4 Attorney's Fees Under § 38.001. The prevailing Party recovers reasonable attorney's fees. Presentment required under § 38.002 at least thirty (30) days before filing suit.

17.5 Statute of Limitations. Contract claims: four (4) years under Tex. Civ. Prac. & Rem. Code § 16.004. Trade secret claims: three (3) years under TUTSA § 134A.006. Federal patent/copyright claims: governed by federal limitations periods.

18. DISPUTE RESOLUTION — TEXAS VENUE, JURISDICTION, AND JURY WAIVER

18.1 Governing Law. This Agreement is governed by Texas law without regard to conflict-of-laws principles. Federal IP claims are governed by applicable federal law.

18.2 Exclusive Jurisdiction. The Parties submit to the exclusive jurisdiction of the Texas District Court in [________________________________] County, Texas, or the United States District Court for the [________________________________] District of Texas.

18.3 Venue. Venue lies in [________________________________] County, Texas. Mandatory venue provisions under Tex. Civ. Prac. & Rem. Code Ch. 15 control in the event of conflict.

18.4 Jury Trial Waiver. TO THE FULLEST EXTENT PERMITTED BY TEXAS LAW, EACH PARTY WAIVES ANY RIGHT TO TRIAL BY JURY IN ANY ACTION ARISING OUT OF THIS AGREEMENT.

18.5 Injunctive Relief. Either Party may seek injunctive relief in any Texas court to protect IP rights, Trade Secrets, or Confidential Information without bond.

18.6 ADR (Optional).

☐ Binding arbitration in [________________________________], Texas, administered by [________________________________] under its commercial rules. Judgment on the award may be entered in any Texas court.

☐ Pre-suit mediation in [________________________________], Texas, for up to sixty (60) days before litigation.

☐ No ADR — proceed directly to litigation.

19. FORCE MAJEURE

Neither Party is liable for failure or delay in performance (except payment) due to causes beyond reasonable control, including acts of God, natural disasters, terrorism, pandemic, government action, or labor disputes. The affected Party shall give prompt notice, mitigate commercially reasonable efforts, and resume performance as soon as practicable. If the event continues for sixty (60) days, either Party may terminate without liability except for accrued amounts.

20. GENERAL PROVISIONS

20.1 Entire Agreement. This Agreement and its Exhibits constitute the entire agreement, superseding all prior understandings.

20.2 Amendment. In writing, signed by both Parties.

20.3 Assignment. Neither Party may assign without written consent, except: (a) to an Affiliate; or (b) in a merger, acquisition, or sale of substantially all assets, if the assignee assumes all obligations. Void assignments are null.

20.4 Severability. Invalid provisions reformed to minimum extent necessary; remainder in full force.

20.5 Notices. Written, by personal delivery, overnight courier, certified mail (return receipt), or email with confirmation, to addresses in the preamble. Effective upon receipt.

20.6 Electronic Signatures. Valid under the Texas Uniform Electronic Transactions Act (Tex. Bus. & Com. Code Ch. 322).

20.7 Counterparts. May be executed in counterparts, each an original.

20.8 No Waiver. Failure to enforce is not a waiver.

20.9 Construction. No presumption against the drafter. "Including" means "including without limitation."

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

21. EXECUTION

IN WITNESS WHEREOF, the Parties have executed this Texas Intellectual Property License Agreement as of the Effective Date.

LICENSOR:

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

LICENSEE:

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

22. EXHIBIT A — DESCRIPTION OF LICENSED IP

23. EXHIBIT B — MILESTONE EVENTS AND PAYMENTS

24. EXHIBIT C — IMPROVEMENTS OWNERSHIP AND LICENSE-BACK

Ownership: Improvements shall [________________________________] (vest in Licensor / vest in Licensee / be jointly owned).

Assignment (if applicable): Licensee hereby assigns to Licensor all right, title, and interest in Improvements, and agrees to execute all documents necessary to perfect such assignment under Texas and federal law.

License-Back (if applicable): Licensor grants Licensee a [________________________________] (non-exclusive, royalty-free / exclusive / other) license to use assigned Improvements within the Field of Use and Territory during the Term.

Royalty Reduction (if applicable): If Improvements generate revenue for Licensor outside the Field of Use, the running royalty in Section 4.2 shall be reduced by [____]%.

Sources and References

• Tex. Civ. Prac. & Rem. Code Ch. 134A — TUTSA
• Tex. Bus. & Com. Code § 17.41 et seq. — DTPA
• Tex. Bus. & Com. Code Ch. 16 — Texas Trademark Act
• Tex. Bus. & Com. Code § 15.50 — Non-Compete Enforceability
• Tex. Civ. Prac. & Rem. Code § 38.001 — Attorney's Fees
• Tex. Civ. Prac. & Rem. Code § 16.004 — Four-Year SOL
• Tex. Fin. Code Ch. 302 — Interest Rates / Usury
• Tex. Fin. Code § 304.003 — Prejudgment Interest
• Tex. Tax Code § 151.009 — Software as Tangible Personal Property
• Tex. Tax Code Ch. 171 — Franchise Tax
• Tex. Bus. & Com. Code Ch. 503 — TDPSA
• Tex. Bus. & Com. Code Ch. 322 — Uniform Electronic Transactions Act
• Marsh USA Inc. v. Cook, 354 S.W.3d 764 (Tex. 2011)

This document is a template only. It does not constitute legal advice and should not be used without review by a licensed Texas attorney familiar with the specific transaction and all applicable Texas and federal IP laws.

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