Transfer of use
(exclusive license)

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1. PARTIES
Between

Name:
Address:
Tel:
CPR/CVR no:

hereinafter referred to as the Licensor
and

Name:
Address:
Tel:
CPR/CVR no:

hereinafter referred to as the Licensee

the following agreement has been entered into to this date.

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2. PURPOSE

The purpose of the present agreement is

[The parties’ objective in transferring the Invention etc. to be inserted here.]

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3. DEFINITIONS

[The parties insert relevant definitions.]

Confidential Information:
Confidential Information is taken to mean information which is passed on by (or on behalf of) one party to the other party under this agreement and which is marked “confidential” or which, due to its nature, content or the circumstances under which it is made public, can reasonably be considered to be confidential. This does not include information which was already in the public domain when it was received (without this being attributable to the recipient’s actions) or which was passed on legally to the recipient by a third party.

Affiliated Company
An Affiliated Company is taken to mean a company which the Licensee wholly or partly owns or which wholly or partly owns the Licensee. Part-ownership means here a stake of more than 50% of the company.

The Invention:

[Describe the Invention.]

The Area:

[Describe the Area as the relevant geographic area and/or a specific product area.]

 

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4. THE LICENSOR’S MAIN OBLIGATION(S)

On signing the present agreement, the Licensor transfers an exclusive right to the Invention for the purposes of the Licensee’s use of the Invention in the Area as defined in section. Use is taken to mean the Licensee’s

[sales][production][marketing][distribution]

 

5. THE LICENSOR’S OTHER OBLIGATIONS

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5.1 The Licensor’s right to dispose of the Invention

The Licensor declares that he is the rightful owner of the Invention and that he does not know of any other individuals with rights to the Invention.

If there is a settlement or a final unappealed ruling which states that the Invention infringes third party rights, the Licensee can cancel the present agreement, cf. section on breach. If the third party rights lead to the Invention having to be transferred to a third party, cf. section 53(1) of the Danish Patents Act, but in such a way that the Licensee may continue the commenced or planned use, cf. section 53(2) of the Act, the Licensee cannot cancel the present agreement, merely bring a claim against the Licensor for losses incurred as a result of the re-registration.

Regardless of whether or not the third party claims that the Licensor is infringing his rights, the Licensee shall continue to pay a licence fee to the Licensor until a final ruling is made regarding the claim.

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5.2 The Licensor’s access to transfer to other Licensees

Under this agreement, the Licensee acquires an exclusive right, for which reason the Licensor is prevented from granting licences to one or more third parties within the Area during the agreement period of the present agreement. This does not prevent the Licensor from deciding to sell the Invention in its entirety to a third party, albeit subject to the Licensee’s exclusive right under the present agreement.

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5.3 The Licensor’s access to use the Invention

The Licensor is prevented from using the Invention in competition with the Licensee in the Area during the agreement period. The Licensor must thus not carry out his own marketing and sales of the Invention or products which are in essence based on the Invention concurrently with the Licensee.

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5.4 The Licensor’s modifications and further development

The parties are to keep each other informed in writing without undue delay of developments, improvements and similar modifications which may be created on the basis of the Invention or in association with the Invention during the agreement period.

If the Licensee is interested in purchasing the further development or improvement, the parties enter into negotiations on this matter, including agreeing any extended licence and/or renewed payment of the one-off payment, in addition to increasing the annual minimum licence fee.

 

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6. THE LICENSEE’S FINANCIAL OBLIGATIONS

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6.1 Licence fee

A one-off payment of DKK [insert amount] for the right to the Invention transferred under the agreement is paid when the present agreement is signed.

A licence fee is also paid. The licence fee amounts to […x…]% annually.

The licence fee is calculated from the invoice price excluding packaging, VAT, duty and any other charges which the Licensee incurs when selling products in which the Invention and its further developments, improvements, etc. (cf. section ) are embodied, but never an amount less than the minimum licence fee mentioned below.

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6.2 Minimum licence fee

From the calendar year [insert year]], a minimum licence fee of DKK [insert amount] is to be paid annually.

The minimum licence fee is then adjusted every [insert date and year] for the calendar year in question by [insert percentage]%.

6.3 Payment date

The licence fee, or alternatively the minimum licence fee, falls due every quarter on 1 January, 1 April, 1 July and 1 October for the previous quarter.

The fee is to be paid no later than [insert number] days after the due date. All payments are subject to VAT.

7. THE LICENSEE’S OTHER OBLIGATIONS

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7.1 Marketing

The Licensee shall work purposefully and effectively to sell the licensed product, including e.g. by paying visits to current and potential customers in addition to carrying out such marketing and sales-promoting measures which are customary in order to promote the sales of the Invention or the products in which the Licensee intends the Invention to be embodied. Expenses associated with such individual marketing and sales-promoting measures are to be borne by the Licensee.

As part of the marketing of the Invention or the products in which the Licensee intends the Invention to be embodied, the Licensee is entitled to use his own trademark and logo and is not obliged to refer to the Licensor. As part of the marketing of the Invention or the products in which the Licensee intends the Invention to be embodied, the Licensee is entitled to use his own trademark and logo and is not obliged to refer to the Licensor.

7.2 Transfer

The Licensee may not rent out, lease, loan or in any other way contribute to third party use of the Invention without the prior written consent of the Licensor.

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7.2.1 Subcontractors

The Licensee is, however, entitled to use subcontractors in its dealings with the Invention when this is part of the Licensee’s production, further development, manufacture, analysis, testing, packing, etc. The Licensee guarantees the Licensor that in such cases the subcontractor will comply with the terms of the present agreement.

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7.2.2 The Licensee’s transfer in a company context

The Licensee can transfer licences to an affiliated company (affiliated licensee).

The Licensee shall notify the Licensor of the transfer and the identity of the affiliated licensee.

Furthermore, licences can be transferred to a third party in connection with a merger, demerger or amalgamation with an affiliated company or service department.

The transfer assumes in all cases a full transfer of all licences which have been granted under the present agreement.

Other transfer of rights to third parties under this agreement can only take place with the prior written consent of the Licensor.

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7.3 Duty of use

The Licensee is obliged to use the Invention.

The Licensee shall in this regard:

[The parties insert a description of the obligations that are incumbent on the Licensee here.]

There is a failure of use if:

  • The Licensee has, without a valid reason, never commenced use; or
  • • Use has commenced but has not been continued, cf. section.

If the Invention is not utilised, this constitutes a material breach of the agreement, cf. section .

7.4 The Licensee’s modifications and further development

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The parties are to keep each other informed without undue delay of developments, improvements and similar modifications which may be created on the basis of the Invention or in association with the Invention during the agreement period.

If, during the agreement period, the Licensee makes developments, improvements and similar modifications to the Invention, the results in question belong to the Licensee.

The Licensee is entitled to use these further developments etc. without the prior consent of the Licensor; the Licensee is also entitled to manufacture, market and sell these further developments etc. or products in which these are embodied – although in return for payment of the licence for the underlying use of the Invention.

The Licensee cannot make use of the Invention after the agreement period, not even in combination with further developments.

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8. BREACH

Each of the parties is entitled to cancel the agreement without notice if the other party commits a material breach of the agreement. The party which wishes to cancel the agreement shall inform the other party of this in advance in a written notice indicating the breach being cited. The cancellation comes into force unless the breach was brought to an end no later than seven days after the notice was sent. The cancellation takes effect from the time of notification onwards.

A material breach has also occurred if one of the parties has filed for bankruptcy or begun restructuring to the extent this is not prevented by the rules of the Danish Bankruptcy Act.

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9. COMPENSATION

The parties are obliged to pay compensation to each other under the general rules of Danish law. The parties are in no way liable for operating losses, consequential damages or other indirect losses unless the loss can be attributed to the gross negligence or wilful intent of the party responsible for the loss.


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10. AGREEMENT PERIOD AND NOTICE OF TERMINATION

The present agreement expires without notice of termination on [insert date] or if the Licensor’s patent for the Invention expires, whichever circumstance occurs first. Before this time the Licensee can terminate the agreement in writing with [insert number] months’ notice to the end of a month.

The Licensor is not able to terminate the agreement [in the period until [insert date] and thereafter with [insert number] months’ notice to the end of a month.

At the end of the agreement the rights transferred from the Licensor to the Licensee revert to the Licensor for disposal free of charge, together with miscellaneous know-how, prototypes, drawings, etc. produced during the agreement period.

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11. FORCE MAJEURE

The parties’ obligations under the present agreement are suspended in the event of a force majeure situation. The party which wishes to cite force majeure shall notify the other party in writing of this as soon as the event which causes the force majeure is confirmed and also inform the other party of the expected extent and duration.

Force majeure is taken to mean an event which is (1) outside the control of a party (e.g. natural disasters, fire, riot, war or civil unrest etc.); (2) unforeseen or which could not reasonably have been predicted; and (3) cannot be overcome by a reasonable investment of either work or money etc.

If the event which causes the force majeure continues for more than 120 days – not necessarily in succession but within the same 180 day period – each of the parties is entitled to cancel the agreement.

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12. INSURANCE

The Licensee is obliged to take out insurance to the extent it is necessary and possible, including product liability insurance [and patent insurance] for products in which the Invention is embodied with an insurance sum of at least DKK [insert amount] and a maximum excess per claim event of DKK [insert amount]

Before the agreement the Licensee will have documented that the insurance policies mentioned have been or will be taken out and will then send the insurance policy to the Licensor. The Licensor is also entitled, but not obliged, to take out co-insurance.

The Licensor is entitled to receive a transfer of the insurance sum with a view to covering any costs which the Licensor has incurred from bringing a legal case etc., cf. section 15.

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13. CONFIDENTIALITY

Manuals, guidelines, technical information, know-how, methods and related information concerning the Invention and which were developed by and/or owned by the Licensor, as well as other Confidential Information which the Licensee has come into possession of during the collaboration with the Licensor, are to be considered trade secrets which may not be passed onto or used by the Licensee or his employees unlawfully. This obligation also applies after the agreement expires.

The duty of confidentiality does not, however, apply where the information transferred was already in the public domain when it was received or enters the public domain without this being attributable to the recipient’s actions, or which is passed on legally to the recipient by a third party.

If the parties have signed a confidentiality agreement prior to entering into the present agreement, the clauses of the former still apply and are included as to the present agreement.

If the Licensee commissions assistance from subcontractors/consultants, the Licensee is obliged to ensure that the necessary agreements on rights transfer and confidentiality are entered into with these parties in accordance with the confidentiality agreement in .

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14. INFRINGEMENT OF THE INVENTION

Should the Licensee become aware that a third party is infringing the Invention, the Licensee must inform the Licensor of this forthwith.

The Licensor is then entitled to take legal action against a third party, including issuing an injunction against persistent infringement by a third party. In connection with such an event, the Licensee shall provide the Licensor with reasonable assistance, including procuring the Licensor with all information relevant to the case. In all cases the costs of the legal proceedings are borne by the Licensor.

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15. INFRINGEMENT OF OTHERS’ RIGHTS

The Licensor shall not hold the Licensee accountable for losses, compensation claims, legal costs, liability and expenses (including reasonable costs for legal and other professional advice) that arise as a result of a third party justifiably claiming that the Licensee is infringing their right in connection with the Licensee’s use of the Invention.

Should a third party claim that the Licensee is infringing their right, the Licensee must inform the Licensor of this forthwith. The Licensor brings the case and defends the Licensee’s right to the Invention. The costs of the legal proceedings will be borne by the Licensor. In connection with such an event, the Licensee shall provide the Licensor with reasonable assistance, including procuring the Licensor all information relevant to the case. The Licensee is entitled to join the legal proceedings or bring the case themselves at their own expense.

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16. AUDIT

The Licensor is entitled at any time by means of an audit to check the information and calculations that form the basis for the Licensee’s payment of the licence fee as well as other compliance with the terms of the present agreement.

No later than 30 days before the audit, the Licensor shall present their proposed procedure and the documentation required to be used in connection with the audit, as well as propose an auditor to carry out the audit. The costs of the audit are to be borne by the Licensor.

The Licensee is obliged, to a reasonable extent and without special payment, to provide the assistance necessary to complete the audit.

The Licensee’s objections and requests for amendments shall be met unless the Licensor can document that these are unreasonable and are obstructive to the execution of the audit in an objective way.

The results of the audit shall be presented in a clear and understandable report so that any infringements that may be identified are explained on the basis of the agreements entered into and the established use.

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17. LEGAL VENUE

In the event of a disagreement between the parties in connection with the present agreement, the parties shall attempt to open negotiations with a positive, cooperative and responsible attitude with a view to resolving the dispute. If necessary, attempts shall be made to take the negotiations to a higher level within the parties’ organisations.

Should it not be possible to resolve the dispute by means of negotiation, each party is entitled to bring the case to the Danish Maritime and Commercial Court in Copenhagen as the legal venue in the first instance.

Should the Maritime and Commercial Court not possess the expertise required to hear the case, the case or the claim should be referred to the competent district court for a ruling pursuant to the Danish Administration of Justice Act, cf. section 225 of the Act.

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18. APPLICABLE LAW

The present agreement is subject to Danish law and, unless stated otherwise, the general rules of Danish law shall govern the relationship between the parties.

The Danish rules on applicable law do not apply.

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SIGNATURES

Date:

Place:

For the Licensor

Date:

Place:

For the Licensee

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