Model Defensive Patent License
NOTICE: ALL RIGHTS IN LICENSED PATENTS (as defined below) PROVIDED UNDER THIS DEFENSIVE PATENT LICENSE ('DPL') ARE SUBJECT TO ALL CONDITIONS AND LIMITATIONS BELOW. THE MAKING, USE, SALE, OFFERING FOR SALE, IMPORTATION, OR DISTRIBUTION OF PRODUCTS EMBODYING THE LICENSED PATENTS, OTHER THAN AS EXPLICITLY AUTHORIZED UNDER THIS LICENSE OR PATENT LAW, IS PROHIBITED.
'Defensive Patent Claim' means an Infringement Claim against a party made in response to a prior Infringement Claim by said party against the asserter of the Defensive Patent Claim.
'Discontinuation Announcement' means a DPL User’s announcement that:
(a) declares the DPL User’s intent to discontinue offering to license its Licensed Patents under the DPL on the Discontinuation Date; and
(b) is submitted to the DPL Website six months prior to a Discontinuation Date.
'DPL User' means an entity or individual that:
(a) has committed to offer a license to each of its Patents under the DPL, or, if such entity or individual has no Patents, has committed to offer a license to any Patents it may obtain in the future under the DPL; and
(b) has declared such commitment by means of an Offering Announcement;
(c) and, if the entity or individual has made a Discontinuation Announcement, the Discontinuation Date has not yet occurred.
'Discontinuation Date' means the date six (6) months after the date of an individual or entity’s most recent Discontinuation Announcement.
'DPL Website' means a website to be established to publish DPL announcements.
'Infringement Claim' means a lawsuit, binding arbitration, or administrative action, or other filed legal proceeding, including a counterclaim or cross-claim, alleging patent infringement.
'License' and 'DPL' mean the grant, conditions, and limitations herein.
'Licensed Patents' means any and all Patents (a) owned or controlled by Licensor; or (b) under which Licensor has the right to grant licenses without the consent of or payment to a third party (other than an employee inventor).
'Licensee' means any individual, corporation, partnership or other entity exercising rights granted by the Licensor under this License including all Affiliates of such entity. For purposes of this Section 1.9, 'Affiliate' means a corporation, partnership, or other entity more than fifty percent (50%) of whose ownership interest representing the right to make the decisions for such corporation, partnership or other entity is now or hereafter, owned or controlled, directly or indirectly, by Licensee.
'Licensor' means any individual, corporation, partnership or other entity with the right to grant licenses in Licensed Patents under this License, including all Affiliates of such entity. For purposes of this Section
'Affiliate' means a corporation, partnership, or other entity more than fifty percent (50%) of whose ownership interest representing the right to make the decisions for such corporation, partnership or other entity is now or hereafter, owned or controlled, directly or indirectly, by Licensor.
'Offering Announcement' means an entity’s or individual’s announcement that:
(a) declares the entity's or individual’s commitment to offer a license to its Patents under the DPL, or, if such entity or individual has no Patents, has committed to offer a license to any Patents it may obtain in the future under the DPL; and
(b) contains the entity's or individual’s contact information; and
(c) is submitted to the DPL Website.
'Patent' means any right, now or later acquired, under any national or international patent law from a governmental body authorized to issue such rights, including rights embodied within patent applications, granted patents, including, but not limited to, continuations, continuations-in-part, divisionals, provisionals, results of any patent reexaminations, and reissues.
2. License Grant
Subject to the conditions and limitations of this License and upon affirmative assent to the commitments specified in Section 1.3 from an individual DPL User, Licensor hereby grants to such DPL User a worldwide, royalty-free, no-charge, non-exclusive, irrevocable (except as stated in Section 2.2(f)) license, perpetual for the term of the relevant Licensed Patents, to make, have made, use, sell, offer for sale, import, and distribute products that would otherwise infringe any claim of Licensed Patents.
Notwithstanding the foregoing, this License is expressly subject to and limited by the following restrictions:
(a) This License does not include the right to sublicense any Licensed Patent.
(b) This License does not include any copyright, trademark, trade secret, other intellectual property, or other rights of Licensor other than the rights to Licensed Patents granted in Section 2.1.
(c) This License does not include Patents with a priority date or Effective Filing Date later than Licensor’s last Discontinuation Date that has not been followed by a subsequent Offering Announcement by Licensor.
(d) This License does not extend to any DPL User whose Offering Announcement occurs later than Licensor’s last Discontinuation Date that has not been followed by a subsequent Offering Announcement by Licensor.
(e) Licensor reserves the right to revoke this License if
(i) Licensee makes any Infringement Claim, not including Defensive Patent Claims, against a DPL User; or
(ii) Licensee discontinues being a DPL User, as of the date of such Licensee’s Discontinuation Date; or
(iii) Licensee transfers a Patent to an entity or individual other than a DPL User without conditioning the transfer on the transferee continuing to abide by the terms of this license for as long as Licensee is a DPL User.
(f) Licensor makes no representations and disclaims any and all warranties as to the validity of the Licensed Patents or that products or processes covered by Licensed Patents do not infringe the patent, copyright, trademark, trade secret, or other intellectual property rights of any other party.
(g) UNLESS OTHERWISE MUTUALLY AGREED TO BY THE PARTIES IN WRITING, LICENSOR OFFERS THE PATENT LICENSE GRANTED HEREIN “AS IS” AND MAKES NO REPRESENTATIONS OR WARRANTIES OF ANY KIND CONCERNING THE LICENSED PATENTS OR ANY PRODUCT EMBODYING ANY LICENSED PATENT, EXPRESS OR IMPLIED, STATUTORY OR OTHERWISE, INCLUDING, WITHOUT LIMITATION, WARRANTIES OF TITLE, MERCHANTIBILITY, FITNESS FOR A PARTICULAR PURPOSE, NONINFRINGEMENT, OR THE PRESENCE OR ABSENCE OF ERRORS, REGARDLESS OF THEIR DISCOVERABILITY. SOME JURISDICTIONS DO NOT ALLOW THE EXCLUSION OF IMPLIED WARRANTIES, IN WHICH CASE SUCH EXCLUSION MAY NOT APPLY TO LICENSEE. LICENSOR SHALL NOT BE LIABLE FOR ANY DAMAGES ARISING FROM OR RELATED TO THIS LICENSE, INCLUDING INDIRECT, INCIDENTAL, CONSEQUENTIAL, PUNITIVE OR SPECIAL DAMAGES, WHETHER ON WARRANTY, CONTRACT, NEGLIGENCE, OR OTHERWISE, EVEN IF LICENSOR HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES PRIOR TO SUCH AN OCCURRENCE.