CHECKLIST :

LIC ENSE AGREEMEN T

1. P a rt i es 2. P r o d u ct Who are the parties to this agreement? (individual, company or trust) Contact details Is the license for use, manufacture, supply or distribution of the product? (see Manufacturing and Distribution Agreement checklists) What products or brands are covered under the license? Will more products or brands be added on in the future? Is there any specific criteria for future products or brands to be added? Is the license for : 3. 4. Exc l u si v e o r N o n Ex c l u si v e Ter m Unlimited use; A specific use.

Is the Licensee allowed to alter the product? How is the quality of reproduction to be measured? Who approves the reproduction/materials to be used? Are the brands registered trademarks? Is the right granted under the license exclusive or non-exclusive? What is the term of the license? Fixed period; Indefinite; Subject to specific criteria for example meeting predetermined targets.

5.

Ter r it o r y

What area does the license cover: No restrictions; Only in specific markets/locations.

6.

I nt e lle ct u a l P r o p e rt y R i g hts

What intellectual property rights exist in the product? What acknowledgements in relation to intellectual property rights are required? Will warranties be given that intellectual property rights in the product do not infringe third party rights? Who is responsible if IP rights are infringed by a third 1

Created by Peter English, Surry Partners Lawyers, for the Australian Design Unit www.surrypartners.com.au Surry Partners Lawyers 2009

party? 7. P r ot ot y p i n g If prototypes are to be produced prior to commercial manufacture: 8. F e e / P a y m e nt Te r ms When will it be produced? Who will test it? Who pays the costs of the prototype?

Is there a limit on the number of revisions? Is an audit right available? Has a non-disclosure agreement been executed with the manufacturer? How will the license be calculated based: Fixed fee; Some other manner.

9. C o m p et i n g P r o d u cts 1 1. 1 2. I n d e m n it y Disp ut es

How will payments be made? Is interest to be paid on outstanding accounts? Is an audit right available? How and when can the license fee be reviewed? Will there be royalty payments to anyone? Would competing products be an issue? Do the parties want an option for renewal? What criteria must be present before an option can be exercised? What indemnities are to be provided by the parties? How will disputes be resolved: In relation to payment? A breach of the distribution agreement?

1 0. O pt i o n f o r R e n ew a l

13. Ter m i n at i o n

Mediation and arbitration first resort? Who pays the costs or parties share equally? What jurisdiction can the disputes be heard in? How will the distribution agreement end? Can a party terminate without giving a reason? What happens if there is breach by either party? Will the parties be given an opportunity to remedy a breach? What happens if the agreement is terminated: 2

Created by Peter English, Surry Partners Lawyers, for the Australian Design Unit www.surrypartners.com.au Surry Partners Lawyers 2009

 1 4. Assi g n m e nt

Will the distributor be allowed to sell-off stock and for what period? What happens to the confidential information?

Will there be any restraint provisions? Can the licensee assign its rights under the license agreement?

Disc la i m e r. This c he c k list c o nt a ins ge n e r a l inf o r m at i o n o n l y. It is n ot a n ex ha ustiv e c he c k list a n d is p r o p o se d as a g u id e o n l y. I t is n ot inte n d e d t o b e g iv e n as a d v ic e a n d sho u ld n ot b e r e lie d u p o n as suc h. S u r r y P a rt n e rs Lawye rs r e c o m m e n d s t hat pa rt ies t o a Lic e n se Agr e e m e nt o bt a in s pe c if ic a d v ic e f r o m a n e x pe r ie n c e d lawye r .

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Created by Peter English, Surry Partners Lawyers, for the Australian Design Unit www.surrypartners.com.au Surry Partners Lawyers 2009