영문 컨설팅 기술도입계약서

TECHNICAL LICENSING AGREEMENT

 

TECHNICAL LICENSING AGREEMENT made by and between [the licensing company], a corporation organized and existing under the laws of the [Nation of the licensing company], having an office at [Address of LICENSOR](hereinafter referred to as "LICENSOR"); and [the licensed company], a corporation organized and existing under the laws of the Republic of Korea, having an office at [Address of LICENSEE](hereinafter referred to as "LICENSEE")

 

WITNESSETH:

 

WHEREAS, LICENSOR now manufactures and sells, in the [Nation of LICENSOR] and elsewhere, a proprietary line of [ ]; 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 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;

 

Article 1. Definitions

For the purpose of this Agreement:

1. "Products" means the following LICENSOR products:

[Description of Products]

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, 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, specifications, 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] as contemplated in Article 19 herein whichever is later.

 

Article 2. Technology License

1. For the duration of this agreement, and upon the terms and conditions more specifically 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 th Proprietary Informations, Trademarks, and Patent Rights to manufacture, use, or sell the Products with prior written consent of LICENSOR, which consent shall not be unreasonably withheld. All sublicensees 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.

 

Article 3. Technical Information

Upon receipt of payment of [one hundred thousand U.S. dollars(US$100,000)], the initial disclosure fee referred to in Article 6 hereof, LICENSOR shall furnish LICENSEE with 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; and

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 hereinater described.

 

Article 4. Technical Assistance

1. LICENSOR shall grant access to its facilities in the [Nation of LICENSOR] 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 assist such LICENSEE personnel in obtaining any visas required by the [Nation of LICENSOR] 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 Korean 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 shall assist such LICENSOR personnel in obtaining any visas required by the Korea authorities.

 

Article 5. Protection of Proprietary Information

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.

 

Article 6. Disclosure Fee and Royalties

1. LICENSEE shall pay to LICENSOR a disclosure fee of [one hundred thousand U.S. 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 U.S. dollars(US$1,000,000)] per year; and [two percent(2%)] of the total net sales of the Products over [one million U.S. dollars(US$1.000,000)] up to net sales of [two miillion U.S. do11ars(US$2,000,000)] per year ; and [one percent(l%)] of the total net sales of the Products in excess of net sales of [two million U.S. dollars(US$2,000,000)] per year.

3. For purposes of paragraph 2 hereof the term "net sales" shall mean the total sales proceeds of Products less the following items :

a. Sales discounts(including sales rebates)

b. Sales returns

c. Indirect taxes, insurance fees, packaging expenses, freight and delivery expenses, sales commissions, advertising expenses, and installation expenses incurred with regard to the sale of goods

d. CIF price, import duties and taxes, and fees on goods manufactured by the LICENSOR on the event that they are used as raw materials

4. Payment of the royalties to be made pursuant to paragraph 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 Nation of LICENSOR] 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 U.S. 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 from any payment to be made to LICENSOR pursuant to this Agreement shall be for the account of LICENSOR.

 

Article 7. Accounting Records

At the time it pays the royalties under Article 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 and amount sold. In addition, LICENSEE will keep records and books of account showing the amount of royalties due to LICENSOR hereunder.

 

Article 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 [Description of Products] 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.

 

Article 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.

 

Article 10. Export of LICENSEE's Products

1. LICENSEE may export to other countries, with the exception of the [Nation of LICENSOR], 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 [Nation of LICENSOR] markets.

 

Article 11. Suits for Infringement

In the event that any suit, action or other proceeding shall be brought against LICENSEE involving any claim of patent and other industrial property right infringement based upon LICENSEE's permitted use hereunder of the Trademarks, Patent Rights, or Proprietary Information, LICENSOR shall at its own expense take charge of the defense of any such claim and of the settlement thereof through counsel of its own choice, but if LICENSOR fails to defend any such claim, LICENSEE may do so at LICENSOR's expense. LICENSEE will notify LICENSOR promptly in the event that any such suit, action or other proceeding 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 proceeding. LICENSEE is hereby permitted to sue any third party who infringes the Trademarks, Patent Rights, or Proprietary Information within the Territory.

 

Article 12. Developments and Improvements

1. LICENSOR shall communicate to LICENSEE full details and particulars of all of commercially utilized developments and improvements relating to the Products and the tools and equipment used to manufacture the Products which, during the life of the Agreement, it owns or controls, or may discover, or may come under its control, or it may receive from other licensees, whether patented or not, and LICENSEE shall be entitled to the non-exclusive use and benefit thereof without any further payments during and after the life of this Agreement.

2. 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 th Products, shall become available to LICENSEE or any of its employees, LICENSEE shall promptly disclose the same to LICENSOR, whether patentable or not, and shall furnish LICENSOR with 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.

 

Article 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 any changes in the design, specifications, material or similar characteristics of the Products.

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.

 

Article 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 [Nation of LICENSOR].

2. During the term of this Agreement, LICENSOR shall be responsible for damages 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.

 

Article 15. Exclusive Use of Trademark in Territory

LICENSOR shall not permit or license others in the Territory to use the Trademarks with respect to the Products whether manufactured by LICENSEE or not.

 

Article 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, by mutual agreement of the parties hereto for an additional period of [three years].

 

Article 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:

a. bankruptcy or insolvency

b. the filing of a petition therefor

c. the making of an assignment for the benefit of creditors

d. the appointment of a receiver over any of its assets which appointment shall not be vacated in [sixty(60) days] thereafter

e. the filling of any other petition based upon the alleged bankruptcy or insolvency which shall not be dismissed within [ninety days] thereafter

 

Article 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 Proprietary Information or Patent Rights licensed hereunder.

3. Upon termination of this Agreement by expiration as provided in Article 17 or, for breach by LICENSOR of this Agreement, LICENSEE shall have a permanent, non-exclusive, free license to all of the Proprietary Information or Patent Rights licensed hereunder.

 

Article 19. Government Approval

1. It shall be the responsibility of LICENSEE to obtain promptly from the proper authorities in the Republic of Korea any required governmental approval of this Agreement and this Agreement shall not take effect until such approval is obtained on terms and conditions acceptable to LICENSOR. LICENSEE shall advise LICENSOR immediately of the date of approval of 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 it as contemplated in paragraph 1 within [six(6) months] from the date of its execution by both parties.

 

Article 20. Arbitration

All disputes, Controversies, or differences which may arise between the parties, out of in relation to or in connection with this Agreement, or for the breach thereof, shall be finally settled by arbitration in Seoul, Korea in accordance with the Commercial Arbitration Rules of the Korean Commercial Arbitration Board and under the Law of Korea. The award rendered by the arbitrator(s) shall be final and binding upon both parties concerned.

 

Article 21. Governing Law

This Agreement shall be 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

 

Article 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 thereof by cable, telex or facsimile confirmed by registered airmail to the last known address of such other party. If a party changes its address, notice thereof must be given to the other party.

 

Article 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.

 

Article 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 representatives of both parties.

 

Article 25. Miscellaneous

1. In the event any terms or provisions of this Agreement shall for an 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 nonobservance or nonperformance of any of the covenants 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 other licensee of the Trademarks, Patent Rights, or Proprietary Information for the manufacture of the Products has been or will be offered more favorable terms. In the event LICENSOR has offered or offers, during the time this Agreement is in force, more favorable 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	signed at
This 1st day of December, 1994	This 9th day of December, 1994
For and on behalf of	For and on behalf of
Name :	Name :
Title :	Title :

 

SCHEDULE (A)

 

PER DIEM RATES FOR LICENSOR PERSONNEL

WHO VISIT LICENSEE PURSUANT TO

ARTICLE 4.2

 

Senior Supervisor	U.S.$
Technician	U.S.$
Skilled Labor	U.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