특허 및 기술도입계약서-영문

LICENSE AND TECHNICAL ASSISTANCE AGREEMENT

 

LICENSE AND TECHNICAL ASSISTANCE AGREEMENT made by and between [ the American Widget Co., ] a corporation organized and existing under [ the laws of the State of New York, U.S.A ], having an office at [ 150, 51st West, New York, N.Y., U.S.A. ] (hereinafter referred to as “LICENSOR”); and [ Korean manufacturing Co., Ltd. ], a corporation organized and existing under the laws of the Republic of Korea, having an office at [ 159, Samsung-dong, Kangnam-ku, Seoul, Korea ] (hereinafter referred to as “LICENSEE”).

 

WITNESSETH :

 

WHEREAS, LICENSOR now manufactures and sells, in [ the United States of America ] and elsewhere, a proprietary line of [ widget sets formed from glass ], and a proprietary line of [ grosbeaks formed from carbon fibers ] ; and

 

WHEREAS, LICENSOR owns certain trademarks, patent rights, and technological information including know-how, skill and experience relating to said Products as hereinafter defined ; and

 

WHEREAS, LICENSEE desires to obtain from LICENSOR the right to use such trademarks, patent rights and technological information to manufacture, use and sell the Products ; and also desires to obtain technical assistance from LICENSOR in the use of such patent rights and technological information, and LICENSOR is willing to grant such rights and to provide such technical assistance to LICENSEE all as hereinafter more fully provided,

 

NOW THEREFORE, in consideration of the covenants herein contained, the parties agree as follows;

 

Section 1. Definitions

For the purpose of this Agreement :

(1)“Products” means the following LICENSOR products :

[ (i) all widget sets formed from molten glass and glass fiber, including all series A frames and bottoms, and (ii) all grosbeaks formed from carbon fibers, but not including grosbeak casings, bearing or seals. ]

(2) “Territory” means [ the Republic of Korea ].

(3) “Trademarks” means those trademarks specifically identified in Schedule (B) attached hereto which is made a part of this Agreement and such other trademarks as may be inserted in Schedule (B) by mutual agreement from time to time during the life of this Agreement.

(4) “Patent rights” means all patents and patent applications for inventions, designs processes, models, or anything patentable, for any country in the world, granted or made at any time prior to the expiration or termination of this Agreement, and which can be used in the manufacture, use, or sale of the Products.

(5) “Proprietary Information” means the inventions, specification, production data, engineering drawings, specialized know-how, skill and other secret and confidential technical information which are owned or controlled by LICENSOR and can be used in the manufacture, use, or sale of the Products.

(6) “Effective Date” means the date on which (i) this Agreement is executed by LICENSOR and LICENSEE, or (ii) this Agreement is approved by [ the Government of the Republic of Korea ] (only if this Agreement is required to be approved by the government to be lawful and effective) as contemplated in Section 19 herein whichever is later.

 

Section 2. Technology License

(1) For the duration of this Agreement, and upon the terms and conditions more specifical set forth herein, LICENSOR hereby grants to LICENSEE a license with the exclusive right to use the Patent Rights, Proprietary Information, and Trademarks to manufacture, use, and sell the Products in the Territory.

(2) LICENSEE may sublicense others to use the Proprietary Information, Trademarks, and Patent Rights to manufacture, use, or sell the Products with prior written consent of LICENSOR, which consent shall not be unreasonable withheld. All of LICENSEE hold their rights contingent on LICENSEE's rights under this Agreement. Any loss by LICENSEE of its rights under this Agreement due to termination for breach, or due to any other reason, automatically causes a loss of the same rights by all of LICENSEE's sublicensees.

 

Section 3. Technical Information

Upon receipt of payment of [ one hundred thousand United States Dollars(US$ 100,000) ], the initial disclosure fee referred to in Section 6 hereof, LICENSOR shall furnish to LICENSEE the following technical information and Proprietary Information regarding the Products in such amounts and at such times as shall be necessary for the expeditious production and sale of the Products.

(1) Advice and assistance with respect to the layout of plant and equipment. together with detailed description of equipment, flow charts, locations and other data to enable LICENSEE to design a suitable factory ;

(2) Relevant general manufacturing information including designs, specifications and drawings for the Products, specifications for raw materials, and detailed drawings and descriptions for the manufacturing process of the Products as well as parts, molds, jigs and fixtures.

(3) Relevant performance testing and operating data including information on test equipment, test procedures and other quality control methods ; and

(4) All other information as may be required to understand and/or interpret any of the aforementioned information which information shall be furnished upon request by letter or through personal contact between personnel of LICENSOR and LICENSEE during inter-company visits as herein-after described.

 

Section 4. Technical Assistance

(1) LICENSOR shall grant access to its facilities in [the United States of America] to personnel of LICENSEE for the purpose of training such personnel in the methods of manufacture of the Products. It is understood by the parties that as many employees of LICENSEE as are agreed upon by LICENSOR and LICENSEE will be sent to LICENSOR. LICENSOR shall be solely responsible for the training of such personnel. The training shall be conducted in the English language and necessary interpreters may be furnished by LICENSEE at its own expense. In addition, LICENSEE shall bear all incidental costs and expenses of such personnel such as travel, hotel and meal expenses. LICENSOR shall provide reasonable cooperation to assist such LICENSEE personnel in obtaining any visas required by [the U. S. A] immigration authorities.

(2) LICENSOR shall, upon request of LICENSEE, as soon as possible, furnish on location at the plant of LICENSEE to train LICENSEE personnel in the methods of manufacture of the Products, technically qualified personnel of LICENSOR upon notice for no more than an aggregate of [ ten ] man working days in [ twelve (12) months ] period. LICENSEE shall pay to LICENSOR a per diem for each of such personnel while in the Territory in accordance with Schedule A attached hereto and made a part of this Agreement. LICENSEE shall also provide a round trip air ticket from and to the point of origin for each such personnel. In addition, LICENSEE shall pay pursuant to mutual agreement local transportation and reasonable living expenses in Korea, including room and meal charges, incurred by such personnel in Korea won if it so desires. LICENSOR shall notify LICENSEE within [ fifteen (15) days ] of receipt of a request for such technical assistance of the date when such personnel will be sent to LICENSEE. The round trip air ticket to be provided for each LICENSOR personnel to be sent to LICENSEE upon request of LICENSEE shall be economy class. LICENSEE shall provide reasonable cooperation to assist such LICENSOR personnel in obtaining any visas required by the Korea authorities.

 

Section 5. Protection of Proprietary Information

① LICENSEE agrees to keep all Proprietary Information relating to the Products confidential. LICENSEE may communicate Proprietary Information to its officers, employees, agents, subcontractors, or sublicensees for the proper manufacture, use, and sale of the products. LICENSEE agrees to take reasonable precautions to keep said Proprietary Information secret.

② LICENSEE shall destroy or permanently delete entire media and digital information which contain Proprietary Information within [ sixty (60) days ] after the termination of this Agreement and shall destroy or return all type of parts, molds, jigs, fixtures and other tools and equipment used in the manufacture of the Products.

 

Section 6. Disclosure Fee and Royalties

(1) LICENSEE shall pay to LICENSOR a disclosure fee of [ one hundred thousand United States Dollars(US$100,000) ], which shall be paid in cash within [thirty (30) days] after the Effective Date of this Agreement.

(2) LICENSEE shall also pay to LICENSOR [ three percent(3%) ] of the total net sales by LICENSEE of the Products up to net sales of amount equal to [ one million United States Dollars (US$1,000,000) ] per year ; and [ two percent (2%) ] of the total net sales of the Products over [ one million United States Dollars(US$1,000,000) ] up to net sales of [ two million U.S. Dollars (US$2,000,000) ] per year ; and [ one percent(1%) ] of the total net sales of the Products in excess of net sales of [ two Million United States Dollars (US$2,000,000) ] per year.

(3) For purposes of Subsection (2) hereof the term “net sales” shall mean gross sales less only (i) sales discounts pursuant to applicable trade discount terms, (ii) sales price of the defective Products returned, including the value added tax or similar turnover tax, (iii) import prices of LICENSOR's parts components and semi-finished products purchased by LICENSEE form LICENSOR, (ⅳ) indirect taxes relating to the sales of the Products, (ⅴ) carriage charges and insurance premiums incurred in connection with the sale of the Products. For purposes of this Section 6(3), import prices shall mean the CIF prices of such parts, components, and semi-finished products imported by LICENSEE, plus expenses for customs clearance.

(4) Payment of the royalties to be made pursuant to Subsection (2) hereof shall be made within [ sixty (60) days ] after [ June 30 and December 31 ]of each year for the full amount of royalties in respect of the previous [ six months ] or part thereof.

(5) LICENSEE shall take all necessary steps and pay all necessary fees and expenses to satisfy the laws and requirements of the Republic of Korea in respect of (i) the payment of fees and royalties or remittance of money hereunder and (ii) registering, declaring, reporting and rendering valid this Agreement and any license granted hereunder.

(6) All payments due hereunder shall be made in United States currency at [ a bank in the United States ] to be designated by LICENSOR.

(7) All payments due to LICENSOR hereunder shall be converted from Korean currency into United States currency at [ the telegraphic transfer selling rate ] of [ the (xx) Bank for the purchase of United States dollars ] on the date of remittance.

(8) All income tax and other taxes required by the laws of the republic of Korea to be withheld form any payment to be made to LICENSOR pursuant to this Agreement shall be for account of LICENSOR.

 

Section 7. Accounting Records

At the time it pays the royalties under Section 6 hereof, LICENSEE will render to LICENSOR a written statement of account regarding LICENSEE's sales of the Products with respect to which royalties shall have accrued during the preceding six months, including the type of products, the number of products sold and amount sold. In addition, LICENSEE will keep records and books of account showing the amount of royalties due to LICENSOR hereunder.

 

Section 8. Purchase of Semi-Finished Products from LICENSOR

LICENSOR hereby grants LICENSEE an exclusive right to purchase and import for resale in the Territory any and all types of LICENSOR's widget sets and grosbeaks except those which shall have been actually manufactured by LICENSEE under this Agreement, and LICENSEE will use its best efforts to promote their sale. LICENSOR will supply the same in such quantity as required by LICENSEE at a price to be agreed upon by the parties.

 

Section 9. Purchase of Tools and Equipment from LICENSOR

LICENSOR will sell to LICENSEE upon LICENSEE's request parts, molds, jigs, fixtures and other tools and equipment used in the manufacture of the Products. In such event, LICENSOR will sell such tools and equipment to LICENSEE at a price equal to manufacturing cost to LICENSOR.

 

Section 10. Export of LICENSEE's Products.

(1) LICENSEE may export to other countries, with the exception of [ United States ], the Products manufactured by LICENSEE under this Agreement.

(2) It is understood that parties hereto will enter into a long-term distributorship agreement under which LICENSOR will purchase from LICENSEE Products manufactured by LICENSEE under this Agreement in order to supply the Products to the [ United States ] markets.

 

Section 11. Suits for Infringement

If any suit, action or other proceeding shall be brought against LICENSEE involving any claim in regard of trademark, patent, or other intellectual property right infringement based upon LICENSEE's permitted use hereunder of the Trademarks, Patent Rights, or Proprietary Information, LICENSOR shall at its own expense defense or settle any of such claim through legal counsel of its own choice, but if LICENSOR fails to defend any of such claim, LICENSEE may defense or settle such claim at LICENSOR's expense and LICENSEE shall pay the expense to the LICENSOR upon LICENSEE’s request. LICENSEE will notify LICENSOR promptly in the event that any such suit, action or other preceeding shall be threatened or instituted against LICENSEE and shall send to LICENSOR all the documents or the copies thereof related to such suit, action or other preceeding. LICENSEE is hereby permitted to file a lawsuit to any third party who infringes intellectual property rights in association to the Trademarks, Patent Rights, or Proprietary Information within the Territory.

 

Section 12. Developments and Improvements

    If at any time subsequent to the Effective Date of this Agreement, any invention, development or improvement, relating to the Products licensed hereunder and the tools and equipment used to manufacture the Products, shall become available to LICENSEE or any of its employees, LICENSEE shall promptly disclose the same to LICENSOR, whether patentable or not, shall furnish to LICENSOR all relevant information pertaining thereto. LICENSEE shall have the right to obtain patent protection therefor throughout the world in its own name and at its own expense; provided, however, that LICENSOR may use such patents throughout the world, except in the Territory, free of charge and non-exclusively, during and after the life of this Agreement.

 

Section 13. Quality Control

(1) LICENSEE shall maintain such standards of quality and workmanship as used by LICENSOR in its manufacture of Products.

(2) LICENSEE shall report promptly to LICENSOR if LICENSEE make any changes in the design, specifications, material or similar characteristics of the Products manufactured or to be manufactured by LICENSEE.

(3) LICENSEE shall (i) permit the duly authorized representatives of LICENSOR to inspect during normal working hours the plant(s) of LICENSEE, the process of manufacture of the Products, and any Products manufactured by LICENSEE and (ii) cause to be inspected by the duly authorized representatives of LICENSOR the plant(s) of any contract manufacturer producing the Products or any part thereof.

 

Section 14. Warranty on Proprietary Information

(1) LICENSOR warrants that the proprietary Information furnished to LICENSEE pursuant to this Agreement is at least equal to that used by LICENSOR to produce products in [ the United States ].

(2) During the terms of this Agreement, LICENSOR shall reimburse any damage resulting from defective Proprietary Information and parts furnished to LICENSEE by LICENSOR.

(3) LICENSOR shall not be responsible for consequential damages resulting from the faulty application of proprietary information by LICENSEE.

 

Section 15. Exclusive Use of Trademark, Patent Right, Proprietary Information in Territory.

LICENSOR shall not permit or license others in the Territory to use the Trademarks, Patent right and Proprietary Information with respect to the products whether manufactured by LICENSEE or not.

 

Section 16. Effective Date and Term

(1) This Agreement shall take effect as of the Effective Date hereof.

(2) Unless sooner terminated as hereinafter provided, this Agreement shall enter into full force and effect on the Effective Date hereof and shall remain in full force and effect for a period of [ five years ] from the Effective Date, after which it shall terminate. This Agreement may, however, be renewed, subject to any necessary government approval, and by mutual agreement of the parties hereto for an additional period of [ three years ].

 

Section 17. Termination

(1) At any time if either party to this Agreement shall have defaulted in the performance of its obligations hereunder, the other party may give written notice of such default and such default shall continue, without remedy, for a period of [ ninety(90) days ] after such notice, the party who has so given notice of default may thereupon terminate this Agreement forthwith by giving to the other party hereto written notice of termination.

 

(2) This Agreement shall terminate forthwith without notice when any of following events occurs to either party: (i) liquidation, bankruptcy,  insolvency or the filing of a petition therefor; (ii) the making of an assignment for the benefit of creditors; (iii) the appointment of a receiver over any of its assets which appointment shall not be vacated in [ sixty(60) days ] thereafter, or (iv) the filing of any other petition based upon the alleged liquidation, bankruptcy or insolvency which shall not be dismissed within [ ninety (90) days ] thereafter.

 

Section 18. Effect of Termination

(1) Upon termination of this Agreement for any reason, LICENSEE shall not make any use of any trade name or trademarks owned by or associated with LICENSOR.

(2) Upon termination of this Agreement for breach by LICENSEE of this Agreement, LICENSEE shall also make no further use of any of the Trademark, Patent right, Proprietary Information licensed hereunder.

 

Section 19. Government Approval

(1) LICENSEE shall obtain promptly from the proper authorities in the Republic of Korea any required governmental approval of this Agreement (hereinafter, “Required Governmental Approval”), to make this Agreement lawful and effective, and if there exist any Required Governmental Approval, this Agreement shall not take effect until such approval is obtained under terms and conditions acceptable to LICENSOR. LICENSEE shall advise LICENSOR immediately of the approved date of Required Governmental Approval by the Government of the Republic of Korea.

(2) Either party may terminate this Agreement forthwith by written notice if the Government of the Republic of Korea does not approve Required Governmental Approval as contemplated in Subsection (1) within [ six (6) months ] from the date of its execution by both parties.

(3) This Section 19 shall be effective only if the Required Governmental Approval, which is necessary to make this Agreement lawful and effective, exists.

 

Section 20. Arbitration

Any dispute arising out of or in connection with this contract shall be finally settled by arbitration in Seoul in accordance with the Arbitration Rules of legal representative.

 

Section 21. Governing Law

This Agreement shall construed in accordance with, and all the rights, powers and liabilities of the parties hereunder shall be governed by the laws of the Republic of Korea.

 

Section 22. Notice

Any notice given by either party hereto to the other party shall be deemed to have been sufficiently given by mailing thereof by registered airmail or by the sending therof by cable, telex or facsimile confirmed by registered airmail, or by e-mail confirmed by replied e-mail to the last known address (e-mail address, in case of e-mail) of such other party. If a party changes its address, notice thereof must be given to the other party.

 

Section 23. Assignment and Succession

(1) This Agreement shall not, without the prior written consent of the other party, be assigned by either party, whether in whole or in part.

(2) This Agreement shall be binding upon and inure to the benefit of either party and its successors and assignees.

 

Section 24. Entire Agreement

This Agreement constitutes the entire agreement between the parties, all prior representations having been merged herein, and may not be modified except by a writing signed by a duly authorized representative of both parties.

 

Section 25. Miscellaneous

(1) In the event any terms or provisions of this Agreement shall for any reason be invalid, illegal or unenforceable in any respect, such invalidity, illegality or unenforceability shall not affect any other terms or provisions hereof; in such event, this Agreement shall be interpreted and construed as if such term or provision, to the extent same shall have been held invalid, illegal or unenforceable, had never been contained herein.

(2) The failure of either party hereto to insist upon a strict performance of any of the terms and provisions herein shall not operate as a waiver of any subsequent or future breach of such terms and provisions.

(3) LICENSOR or LICENSEE shall not be liable for non-observance or non-performance of any of the convenents or agreements herein entered into resulting from or caused by labor disputes, riots or civil commotion, fire, war, the elements, embargoes, failure of carriers, inability to obtain material, inability to obtain transportation facilities, acts of God or acts of enemies of the State, compliance with any law, regulation or other governmental command, whether or not valid, or other cause beyond the control of either party whether or not similar to the foregoing.

(4) The parties hereto shall act in all matters pertaining to this Agreement as independent contractors and nothing contained herein shall constitute either party as the agent of the other.

(5) LICENSOR agrees that no licensee, other than LICENSEE, of the Trademarks, Patent Rights, or Proprietary Information for the manufacture of the Products has been or will be offered more favorable terms and conditions. If LICENSOR executed an agreement that offers more favorable terms and conditions to the other licensee, this Agreement is deemed to be revised to such terms and conditions. LICENSEE shall have right to determine whether such terms and conditions are more favorable than this Agreement, at its own discretion.

(6) This Agreement may be executed in English and in other languages (including Korean). In the event of any difference or inconsistency among different versions of this Agreement, the English version shall prevail over in all respect.

 

 

In the event LICENSOR has offered or offers, during the time this Agreement is in force, more favorable terms than the terms than the terms in this Agreement to any licensee anywhere in the world, this Agreement will be deemed to have been amended to the extent necessary to incorporate such more favorable terms in substitution for said terms of this Agreement. LICENSEE shall be the sole judge of whether terms offered to another licensee are more favorable than the terms of this Agreement.

 

IN WITNESS WHEREOF, the parties have caused this Agreement to be executed in their corporate names by their duly authorized representatives.

 

 

Signed at          AMERICAN WIDGET CO.

[ This 1st day of June

1998 ]

             By :

             As its :

 

 

Signed at          KOREAN MANUFACTURING CO.,

[ This 5th day of June  LTD.

1998 ]

             By :

             As its :

 

  

 

SCHEDLE A

 

PER DIEM RATES FOR LICENSOR PERSONNEL

WHO VISIT LICENSEE PURSUANT TO

SECTION 4(2)

 

 

Senior Supervisor           U.S.S

Technician         U.S.S

Skilled Labor     U.S.S

 

These rates are subject to change by LICENSOR upon sixty (60) days notice to LICENSEE and by consent of LICENSEE to it. Any such change shall be subject to any necessary approval of the Government of the Republic of Korea.

 

 

 

 

SCHEDULE B

 

DESCRIPTION OF TRADEMARKS

 

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