48 CFR § 252.227-7012 - Patent License and Release Contract.
As prescribed at 227.7012, insert the following clause in patent releases, license agreements, and assignments:
This CONTRACT is effective as of the ____ day of [month, year], between the UNITED STATES OF AMERICA (hereinafter called the Government), and __________ (hereinafter called the Contractor), (a corporation organized and existing under the laws of the State of __________), (a partnership consisting of __________), (an individual trading as __________), of the City of __________, in the State of __________.
Whereas, the Contractor warrants that it has the right to grant the within license and release, and the Government desires to procure the same, and
Whereas, this contract is authorized by law, including 10 U.S.C. 3793.
Now Therefore, in consideration of the grant, release and agreements hereinafter recited, the parties have agreed as follows:
Article 1. License Grant.*
(Insert the clause at 252.227-7004 for a paid up license, or the clause at 252.227-7006 for a license on a running royalty basis.)
Article 2. License Term.*
(Insert the appropriate alternative clause at 252.227-7005 for a paid up license, or the clause at 252.227-7007 for a license on a running royalty basis.)
Article 3. Release of Past Infringement.
(Insert the clause at 252.227-7001.)
Article 4. Non-Estoppel.
(Insert the clause at 252.227-7000.)
Article 5. Payment.
The Contractor shall be paid the sum of ______ Dollars ($______) in full compensation for the rights herein granted and agreed to be granted. (For a license on a running royalty basis, insert the clause at 252.227-7006 in accordance with the instructions therein, and also the clause as specified at 252.227-7002 and 252.227-7009 and 252.227-7010.)
Article 6. Covenant Against Contingent Fees.
(Insert the clause at FAR 52.203-5.)
Article 7. Assignment of Claims.
(Insert the clause at FAR 52.232-23.)
Article 8. Gratuities.
(Insert the clause at FAR 52.203-3.)
Article 9. Disputes.
(Insert the clause at FAR 52.233-1.)
Article 10. Successors and Assignees.
This Agreement shall be binding upon the Contractor, its successors** and assignees, but nothing contained in this Article shall authorize an assignment of any claim against the Government otherwise than as permitted by law.
In Witness Whereof, the parties hereto have executed this contract.
*If only a release is procured, delete this article; if an assignment is procured, use the clause at 252.227-7011.
**When the Contractor is an individual, change “successors” to “heirs”; if a partnership, modify appropriately.