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WHEREAS, licensor has developed [description of products] and possesses certain know-how and intellectual property rights relating thereto;

WHEREAS, licensee wishes to manufacture and market such products; and

WHEREAS, licensor is willing to grant, and licensee wishes to obtain, the exclusive rights to use such know-how and intellectual property rights in the Territory, as that term is defined herein.

NOW, THEREFORE, in consideration of the mutual promises, terms and conditions set forth hereinafter, and other good and valuable consideration, the receipt and sufficiency of which is hereby acknowledged, the Parties do hereby agree as follows:

“Commencement Date” shall have the meaning indicated in Article 3.

“Contract” shall mean this transfer of technology contract together with its Annexes.

“Initial Term” shall have the meaning specified in Article 16.1.

“Know-how” shall mean licensor’s technical knowledge, written or oral, relating to the design and manufacture of the Products. know-how includes, but is not limited to, Technical documentation and secret or qualified know-how.

“Licensed Technology” shall mean the know-how, Patents, copyrights, and other intellectual property rights contemplated in this Contract.

“Manufacturing Equipment” shall mean the equipment, software, tools and test equipment (if any) listed in Annex 7.

“Minimum Royalty” shall mean the minimum royalty specified in Annex 10-C.

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“Net Sales Value”, relevant to the calculation of the Royalty, shall mean the invoiced sales value of the Products, sold by licensee ⁵, such Net Sales Value shall not include, to the extent that they are evidenced in the invoice: (a) normal sale discounts to licensee’s customers; (b) insurance, packaging and transportation expenses of the Products; and (c) tax or duties paid by licensee on the sale of the Products.

“Parts and Components” shall mean the items (if any) to be incorporated into the Products, listed in Annex 11, which licensee may purchase from licensor.

“Party” or “Parties” shall mean licensor and/or licensee.

“Patents” shall mean the patents, utility models, industrial designs and the relevant applications listed in Annex 3.

“Product(s)” shall mean the products listed in Annex 1, to which the licence granted under Article 4.1 relates.

“Renewal Term” shall have the meaning specified in Article 16.1.

“Royalty” shall mean the royalty specified in Annex 10-B.

“Successor Products” shall mean products developed by licensor that replace one or more of, are based on the same design as and contain only minor differences to the Products.

“Technical Documentation” shall mean the documentation relating to the design and manufacture of the Products specified in Annex 4.

“Territory” shall mean the area(s) described in Annex 6.

2.1 In carrying out their obligations under this Contract, the Parties shall act in accordance with the principles of good faith and fair dealing.

2.2 The provisions of this Contract, as well as any statements made by the Parties in connection with it, shall be interpreted in accordance with the principle of good faith.

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3.1 This Contract shall enter into force on the date of signature by the second of the Parties.⁶

3.2 The grant of the licence and related obligations shall commence on the date on which the latest of the events listed in Annex 2 has occurred (the “Commencement date”) and the Parties shall undertake all necessary steps for facilitating the occurrence of them. If no event has been listed in Annex 2, the Contract obligations shall commence on the date this Contract enters into force.

3.3 If the Commencement date has not occurred within six months from the date of entry into force (or within such other term as may be agreed between the Parties according to Annex 2), either Party may terminate this Contract by written notice to the other Party.

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4.1 Exclusive right to use the Licensed Technology

Licensor grants to licensee, who accepts, an exclusive right and licence during the term of this Contract to use the licensed Technology7 in accordance with the terms of this Contract in order to manufacture, use and sell the Products in the Territory.8

Licensor and licensee agree that any software included in the licensed Technology is being licensed by licensor to licensee for use in the Territory and pursuant to the conditions set forth in Annex 8.

Licensee has no right to sublicense the rights and licenses granted hereunder to any third party.

4.2 No trademark licence

Any use of licensor’s trademarks in connection with the sale, distribution, marketing and promotion, if any, of Products shall be governed by a separate trademark licence agreement between the Parties. This Contract does not confer any right to use licensor’s trademarks. ⁹

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5.1 Territorial Limitations

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5.2 Non-Competition Obligation

During the term of this Contract, licensee shall not engage in any negotiations or enter into a technology licence or similar agreement with third parties for the manufacture, distribution or sale of products that compete directly or indirectly with the Products.

6.1 Provision of Know-how

Licensor shall provide to licensee the know-how owned by licensor on the Commencement date,¹² mainly through the supply of the Technical documentation and the provision of training and technical assistance in conformity with this Contract.

A description of the know-how is contained in Annex 5.

6.2 Provision of Technical Documentation

Licensor shall deliver the Technical documentation to licensee, according to the time schedule specified in Annex 4.

Unless otherwise agreed, the Technical documentation shall be in English; all technical specifications shall be expressed according to the standards of measure and weight in use by licensor.¹³

Documents shall be supplied in two sets. Any conversion into other languages, units of measure or standards is to be at licensee’s own expense and risk.

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6.3 Training and Technical Assistance

Licensor shall provide appropriate training and technical assistance to licensee, as necessary to enable licensee to acquire sufficient knowledge of the methods of manufacture, testing and use of the Products, as specified in Annex 9. unless otherwise agreed, technical assistance shall be provided in English.

The employees or representatives of either Party, while on the premises of the other Party, shall be subject to the rules and regulations adopted by such other Party with respect to the conduct of its own employees or representatives to the extent these rules are reasonably acceptable.¹⁴

6.3.1 Training at Licensor’s Premises

Licensor agrees at licensee’s request to train employees of licensee in licensor’s plants on the manufacture of the Products.

The travel and living expenses and all other expenses for such employees shall be borne by licensee.

The visits of licensee’s personnel for such training shall be limited to the number and qualifications of employees and duration of stay as specified in Annex 9-A.

Licensee shall advise licensor in advance, in writing, of the names, interests, qualifications and expected length of stay of such personnel, in order to provide reasonable time to enable licensor to arrange for such visit(s). licensor shall have the right to postpone any such visit where it cannot provide adequate technical support to licensee’s personnel on the requested dates and shall allow the visit to be conducted as soon as the cause of the postponement has been remedied. In such cases, the licensor shall inform licensee, in writing, of such postponement reasonably in advance to the originally proposed date.

6.3.2 Training and Technical Assistance at Licensee’s Premises

Licensor shall send at licensee’s request technical personnel to licensee’s premises to give advice and assistance in the manufacture of the Products. Such visits of licensor’s personnel shall be restricted to the number and qualifications of employees and duration of stay as specified in Annex 9-B.

The travel and living expenses of licensor’s personnel, as well as a daily fee, calculated according to Annex 9-B, shall be reimbursed by licensee to licensor upon receipt of licensor’s invoice.

6.4 Payment of Patent Fees

Licensor shall keep in force all Patents in the Territory relevant to the Products listed in Annex 3 and shall pay all fees and expenses in connection therewith promptly as such fees and expenses become due and payable.

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6.5 Manufacturing Equipment

Parties may agree that licensor shall supply such manufacturing Equipment as is necessary for the manufacture of the Products according to licensor’s standards.

Where this is the case, the manufacturing Equipment, its price, delivery and payment conditions shall be specified in Annex 7.

7.1 Manufacturing and Assembly of Products

Licensee shall manufacture (and assemble, as the case may be) the Products itself. If licensee wishes to charge third parties with any or all of the manufacturing of the Products, it shall communicate the name of such third parties to licensor and seek its prior consent, which licensor shall not unreasonably withhold. licensee must ensure that such third parties are at all times bound by the terms and conditions of this Contract.

Licensee shall strictly follow the designs, drawings, specifications and indications furnished by licensor with respect to the manufacture and assembly of the Products.¹⁵

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7.2 Quality Standards

Licensee shall strictly observe licensor’s quality standard, for any Product manufactured and use in the manufacture and assembly of the Products equipment, tooling, materials and components that conform to such standards. licensee shall furthermore establish and maintain such test and inspection procedures as are necessary to ensure the fulfilment of its obligations under this sub-section.

If any Product fails to meet the above-mentioned standards, licensor shall assist licensee in identifying the deficiencies and furnish to licensee recommendations for correcting them. Where assistance is required in the Territory, licensee shall pay the cost of the dispatch of technical personnel by licensor.

Licensee shall not market or use any Products that fail to meet the abovementioned quality standards without licensor’s prior consent.

7.3 Audits

Licensor shall have the right to carry out, at its own expense, technical audits at licensee’s plants and offices, in order to check that licensee is conforming to licensor’s standards in the manufacture of the Products and that the quality of the manufactured Products is satisfactory.¹⁶

7.4 Labelling of Products

Licensee [may/may not/shall] label any Product manufactured with a label in the form: “manufactured by [licensee] in [Territory] under a licence of [licensor]”.

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8.1 Licensor shall supply at the request of licensee Parts and Components required by licensee for the assembly or manufacture of the Products. licensor shall not refuse such supply unreasonably.

8.2 The prices of such Parts and Components and the terms and conditions of sale to licensee are specified in Annex 11. Such prices shall be fixed until the end of [insert year]. After such date, they may be modified by licensor upon three months’ written notice.

8.3 Subject to applicable mandatory law, licensee hereby undertakes not to carry out any reverse engineering or attempt to seek protection, whether inside or outside of the Territory, in respect of any spare parts or components provided by the licensor.

8.4 Licensor may purchase from licensee the Products manufactured under licence at the price then currently paid by licensee’s customers. In such cases, the amounts payable as licence fees and/or royalties, according to Article 9 hereunder, may be set off against payments due by licensor to licensee.

In exchange for the rights granted under this Contract, licensee shall pay to licensor the amounts indicated in sub-sections 9.1-9.3.

9.1 Lump Sum

Licensee shall pay the lump sum as specified in Annex 10-A.

9.2 Royalty

Licensee shall pay, for the duration of this Contract, the Royalty specified in Annex 10-B, calculated on the Net Sales Value of the Products sold by licensee. The right of licensor to receive the Royalty shall accrue at the moment the Products are sold.

The Royalty shall be calculated on a six-month basis and paid by licensee to licensor within 60 days from the end of each [six-month] period.

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9.3 Minimum Royalty

Independent of the quantity of Products sold, licensee shall pay to licensor the minimum amount specified in Annex 10-C.

9.4 Statement of Royalty

Within 30 days following the end of each [six-month] period, licensee shall provide licensor with a complete and detailed statement of the Royalties accrued in the course of such period indicating the Net Sales Value and the quantity of Products sold. For the purpose of the above statement, Products shall be considered to be sold when invoiced or, if not invoiced, when [shipped/delivered]. Furthermore, licensee shall provide licensor with all additional information that it may reasonably require.

9.5 Licensor’s Right to Verify

Licensor, through an independent auditing firm appointed by it, shall have free access to the accounts and any other documents of licensee, in order to check such information as is necessary for verifying that the Royalty calculation made by licensee is correct.

If, following such verification, it is found that the Royalty paid was more than five per cent (5%) less than the Royalty actually due for any [six-month] period, licensor shall be entitled to reimbursement by licensee for the cost of the relevant audit and to immediately terminate this Contract, informing licensee by written notice.

9.6 Time of Payment – Delays

Any amount due by licensee to licensor shall not be considered as paid until it has been credited to the account indicated by licensor, net and without any deduction whatsoever including any withholding or other taxes due in licensee’s country.

Any delay in payments by licensee shall accrue interest, to be paid to licensor, up to the actual date of payment. The interest shall be calculated at the official lending rate for immediate money of the central bank in the country where licensor is headquartered, increased by five percentage points.¹⁷

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10.1 Licensed Technology Warranty

Should licensee claim that the licensed Technology is not complete or adequate, the Parties shall discuss the issue in good faith and seek a mutually satisfactory solution.

Licensor shall correct any material deficiencies in the Technical documentation identified by licensee within one year of receipt of the Technical documentation by licensee without undue delay after receipt of written notice by licensee specifying the deficiencies, and thereafter provide licensee with a corrected version of the deficient part of the Technical documentation without undue delay.

10.2 Disclaimer of Other Warranties

Except for the warranty set forth in Article 10.1 above, licensor makes no representation or warranty of any kind with respect to the licensed Technology.

In particular, licensor does not give any warranty or assume any responsibility or liability with respect to the ability of licensee to market the Products successfully.

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Subject to mandatory provisions of law:

• The liability of each Party for damages shall be limited in the aggregate, i.e., for all damages in relation to this Contract, to an amount not to exceed [insert amount].
• In no event shall licensor be liable for special, indirect, incidental or consequential damages, loss of profits and anticipated savings, loss of goodwill, loss of data or loss of use arising out of the manufacture, sale or supply of the Products, even if it has been advised of the possibility of such damages or losses.

Nothing contained in this Contract shall limit licensor’s liability for death or personal injury resulting from any act, omission or negligence of licensor.¹⁸

12.1 Ownership

Licensor confirms that it owns or controls the licensed Technology as may be necessary.¹⁹

Without a prior written consent from licensor, licensee undertakes not to apply or attempt to register or obtain protection, in any country within or outside the boundaries of the Territory, for any right comprised under the scope of the licensed Technology.

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12.2 Infringement claims by third parties

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12.3 Indemnity By Licensee

Licensee shall defend and indemnify licensor from and against any damages, liabilities, costs and expenses (including reasonable attorneys’ fees and court costs) arising either out of: (i) the use of the Products by licensee or its customers in an application or environment for which such Products were not designed or contemplated; or (ii) modifications of the Products by licensee, provided, however, that: (a) licensor shall have promptly provided licensee with written notice thereof and reasonable cooperation, information and assistance in connection therewith; and (b) licensee shall have sole control and authority with respect to the defence, settlement or compromise thereof.²⁰

13.1 Regulatory Matters

Licensee shall be responsible for obtaining regulatory approval, if required, in the Territory for the Products and shall own the regulatory approvals. licensee shall comply with all commitments made in any application or similar filing regarding licensee’s manufacturing responsibilities as described herein.

Each Party shall provide reasonable assistance to the other, at no charge, to respond to regulatory audits, inspections, inquiries or requests concerning the licensed Technology or the Products.

13.2 Product Safety and Product Liability

Each Party shall give the other prompt notice of any information it receives regarding the safety of Products, including any confirmed or unconfirmed information on adverse, serious or unexpected events associated with the use of the Products.

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14.1 Modifications and/or Improvements of Products and/or Licensed Technology by Licensor

14.2 Modifications and/or Improvements of Products and/or Licensed Technology by Licensee

Licensee shall inform licensor about any modifications and improvements of the licensed Technology. If at any time during the term of this Contract licensee wishes to make any modifications and improvements to the Products, licensee must request the prior written consent of licensor, which consent shall not be unreasonably withheld.

If a modification or improvement is made with licensor’s consent, any and all warranties given by licensor with respect to the Product so modified or improved shall not extend to such modification or improvement.

Licensor shall have the right to use the modifications or improvements made by licensee without additional payment and to sublicense them to other licensees, provided such licensees are willing to grant to licensee the same right on modifications or improvements made by them.²²

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15.1 The Parties shall be bound to confidentiality according to the ICC Confidentiality Clause 2006, which is incorporated by reference in this Contract.

15.2 The ICC Force majeure Clause 2003 and ICC hardship Clause 2003 are incorporated by reference in this Contract.

16.1 Term of the Contract

This Contract shall enter into force according to Article 3 hereof and shall continue in full force and effect for an initial term until [insert date of expiry].

Upon expiration of this initial term (“Initial Term”), this Contract shall remain in force for consecutive terms of one year (“Renewal Term(s)”), unless either Party gives written notice of termination to the other Party at least three months prior to the end of the Initial Term or any Renewal Term.

16.2 Termination for breach and Important reason

Upon the occurrence of a material breach by a Party and the failure of such breaching Party to remedy said breach within 30 days of receiving written notice thereof from the non-breaching Party, this Contract may be terminated with immediate effect by the non-breaching Party by giving written notice of termination to the breaching Party.

16.3 Termination for bankruptcy or Change of Control

Either Party shall have the right to terminate this Contract with immediate effect by giving written notice of termination in the case of:

(a) bankruptcy, moratorium, receivership, liquidation or any kind of arrangement between debtor and creditors of the other Party; or

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(b) a change in control of either Party, if the controlling organization is reasonably not acceptable to the other Party and provided the Party subject to such change in control failed to pursue within 90 days of receiving written notice thereof from the other Party a remedy designed to cure the other Party’s objections to such change in control.²³

16.4 Effects of Termination

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16.5 Cooling Off

In all cases where licensee must cease the use or practice of the licensed Technology under Article 16.4, licensee shall nevertheless have the right:

(1) to continue using the licensed Technology with respect to the manufacture or assembly of Products that, at the date of expiration or termination of this Contract, were already in the course of manufacture or for which licensee had received orders or binding offers, provided licensee notifies licensor within 15 days following the date of termination or expiration the exact amount of the Products in the course of manufacture and the orders or binding offers received; and

(2) for a period of […] years after the date of termination or expiration, to service and install Products sold by licensee.

17.1 In the event of any dispute arising out of or in connection with the Contract, the Parties shall submit the matter to settlement proceedings under the ICC ADR Rules. If the dispute has not been settled pursuant to the said Rules within 45 days following the filing of a request for alternative dispute resolution, or within such other period as the Parties may agree in writing, such dispute shall be finally settled in accordance with Article 17.2 hereunder.²⁴

17.2

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20.1 The English text of this Contract is the only one to be considered as original.

20.2 Recitals and Annexes to this Contract form an integral part of it.

20.3 This Contract supersedes all previous understandings, whether oral or in writing, between the Parties on the same subject.

20.4 Any amendment to this Contract shall be in writing.

20.5 This Contract cannot be assigned or transferred by any Party in whole or in part without the previous written consent of the other. however, where a Party requests the other Party to be permitted to assign the Contract to a parent company, the other Party shall not unreasonably refuse consent, provided it receives adequate warranties as to the correct performance of this Contract by the assignee.

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20.6 Any provision to be found invalid or unenforceable shall not affect the validity of the Contract as a whole. The Parties undertake in good faith to replace the invalid provisions with valid provisions having equivalent or similar content.

20.7 All notices or other communications given pursuant to this Contract shall be in writing in English, effective upon receipt and delivered by: (i) certified or registered airmail with postage prepaid; (ii) facsimile or cable communications; or (iii) hand. Such communications shall be deemed given and received upon dispatch or hand delivery if sent by telex, cable or personal delivery, or within five (5) days of mailing, if sent by certified or registered airmail, and shall be addressed as follows:

20.8 If the Parties have not made a choice between the alternative solutions provided in Article 5, alternative A shall apply if licensee is established outside the European union and alternative B shall apply if licensee is established within the European union.

20.9 If the Parties have not made a choice between the alternative solutions provided in Articles 10.1, 12.2, 14.1, 16.4, 17.2, 18 and/or 19, alternative A shall apply.

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