|BETWEEN||Company42 ApS (“Licensor”) Porcelænshaven 26, 2000 Frederiksberg, Denmark||AND||Company(“Customer“) Address, Postal City, Country|
(Licensor and Customer each referred to as a “Party” and together as the “Parties“)
1. The Licensor has developed the 42Patents Platform software (the webpage www.42patents.com) that provides for a digitalization of the payment of Annuity Fees (as defined below in Appendix 1).
2. The Licensor is in the business of providing the Service (as defined below in Appendix1) and grant a license to the Software (as defined below in Appendix 1).
3. The Licensor is prepared to provide the Service and grant a license to the Software to the Customer and the Customer is prepared to receive the Service and license under the Terms and Conditions attached as Appendix 1 and also subject to all other Appendixes to this Agreement.
Subject matter of this Agreement:
For the duration of this Agreement and under the Terms and Conditions stated in Appendix 1 and also subject to all other Appendixes and subject to making Funds available for payment of the Annuity Fees and paying for the Service and license:
1. The Licensor will provide the Service to the Customer, and
2. The Customer will have access to use the Software.
The Parties are independent contractors. Nothing in this Agreement creates a joint venture, an agency or employment relation. The Parties are not entitled to represent each other and neither Party has the authority or power to bind the other Party or to contract the other Party or to assume any liability on behalf of the other Party of any kind, except that the Licensor is empowered to provide the Service.
This Service and License Agreement and all attached Appendixes (“Agreement“) is made on the Effective Date (as defined below in Appendix1) between the Licensor and the Customer and applies to the Service provided and Customer’s licensing of the Software. The Software licensed on the Effective Date hereof is described in Appendix 4 to this Agreement.
|For Customer:Date:_________________ _____Name of signature||For Company42 ApS:Date:_ _____________________Jesper Ohrt Juel Jensen|
Appendix 1: Terms and Conditions.
Appendix 2: Fee for Services and number of Users.
Appendix 3: Information about the Funds and Bank Account.
Appendix 4: Software Description.
Appendix 5: Form Yearly Statement.
Appendix 6: Software Release Note.
“Affiliates” means any entity in which Customer exercises control in the form of 50% or more of the voting rights in the senior decision-making body of the entity, or authority to appoint half or more of the directors of the entity.
“Annuity Fee” means the fee to be paid to patent authorities in order to maintain a granted patent in force, however it does not cover filing fees, grant fees or other applicable fees.
“Deposit Account” means a deposit account in countries where local rules require that such a deposit account is established where from the local patent authority will redraw Funds for payment of the Annuity Fee.
“Effective Date” shall mean the first date in the month following the date of the last signature for a Party on the Agreement.
“Force Majeure Event” shall have the meaning given to it in Section 11.2.
“Funds” means the amounts of money the Customer shall provide and pay into the bank account stated in Appendix 3 plus 5% for the payment of the Annuity Fee.
“Local Currency” means the actual used currency applied when paying the Annuity Fee to the patent authorities.
“Local Patent Agent” means a patent agent in countries where local representation is required by local rules in relation to the payment of the Annuity Fee.
“Local Patent Agent Fee” means any fee to be paid to a Local Patent Agent for payment of the Annuity Fee.
“Patents” means all the Customer’s patents uploaded in the Software.
“Payment Date For Funds” means the first date of each month, where the total Funds needed in the month after the month beginning with the first date of a month as specified in the Software (shown in the dashboard bar graph) shall be available in the bank account specified in Appendix 3, unless otherwise informed in writing by the Licensor.
“Payment Date For Funds To A Deposit Account” means the date where the Licensor in writing has required the Customer to make the Funds available for the Licensor to pay the Funds into the Deposit Account.
“Service” means the payment of the Annuity Fees for the Patents to the patent authorities.
“Software” means the 42Patents Platform (webpage, www.42patents.com) handling the payment of Annuity Fees and providing information regarding the Patents, as described in Appendix 4.
“Transaction Fee” means any fee charged by the banks in connection with transfer of Funds when paying the Annuity Fee to the patent authorities.
“User” mean the person appointed by the Customer to be the Software administrator at the Customer site.
“Warranty Period” shall mean the period from the Effective Date and until 365 days thereafter.
“Yearly Statement” means a statement of compliance in the form as attached as Appendix 5 and to be issued by the Customer to Licensor in accordance with Section 3.1.
2. Service and Grant of License
Licensor will provide the Service to the Customer and grants to Customer a non-exclusive, non-transferrable, without sublicense rights and limited right to use the Software (access is web-based only) with the following restrictions and limitations: (a) the Software may only be used by the number of named Users set out in Appendix 2 or in accordance with the Yearly Statement (if the Customer requires to use the Software for additional named Users it shall inform Licensor hereof and pay the corresponding fees); (b) the Software should only be accessed by using the browser specified in Licensor’s Software Release Note, Appendix 6; (c) the Software may not be operated or used by or for customers of Customer or any third parties (to the extent that these are not Affiliates of Customer); (d) the Software may only be used by employees of Customer and Affiliates, (e) the Software may be used only for its designated purposes, which are payment of Annuity Fees and access to information regarding the Patents.
The Customer will be informed a password for access to the Software. Such password may be amended by the Customer, however subject to the Licensor being informed in writing of the new password for record purpose only.
Customer is not entitled to make copies of the Software and may not distribute copies of the Software to third parties or make the Software available for any third party or make reverse engineer, decompile, or disassemble any of the Software’s components except and only to the extent permitted by applicable law without the possibility of contractual waiver.
The Licensor shall perform the Service with professional care and within its control perform the Service on time. The Service will be provided for Annuity Fees which are due four weeks after the Effective Date, subject to the Patents are registered in the Software latest on the Effective Date and Funds are available in the bank account specified in Appendix 3. The Licensor shall use commercially reasonable efforts to make the Software available for the Customers use twenty-four hours per day, seven days a week during the term of this Agreement. Notwithstanding the above the Software shall not be available 1) when scheduled system back-up or other ongoing maintenance as required and scheduled in advance by the Licensor are carried out or 2) if any unforeseen incident beyond the Licensor’s reasonable control occurs, including – but not limited to – failure by the Licensor’s suppliers, Internet network failure, outdated versions of the Customer’s software, denial of service attacks, similar attacks or any Force Majeure Event.
The Licensor further reserves the right to monitor and reasonable restrict the Customer’s ability to use the Software, if the Customer is using excessive computing resources impacting the performance of the Software for other customers. In such case, the Licensor will notify the Customer in advance and use commercially reasonable efforts to determine an appropriate alternative or work-around solution.
3. Fees and Payment
The Customer shall each year between 1 and 30 November provide to Licensor a Yearly Statement confirming the information set out therein, including the number of registered named Users of the Software.
Customer agrees to pay, without set-off or deduction, all invoiced amounts (fees, expenses and other charges) set out in Appendix 2 or as calculated on the basis of the Yearly Statement. Payment shall be made within thirty (30) days of Licensor’s invoice date. If Customer fails to pay any sum due, Licensor may (a) terminate the Agreement for breach if after thirty (30) days’ written notice Customer has not cured its default in payment and (b) charge interest on the default amount at 1.50 % per month from the date of the default in payment.
The fees set out in Appendix 2 are subject to change by Licensor upon 90 days’ prior written notice to Customer. Any price increase may not take place until one year after the Effective Date. In the event of a price increase under this Section 3.3, the Customer may terminate the Agreement by giving 60 days’ prior written notice to Licensor in which event Licensor shall not be liable for any and all consequences thereof. The termination shall become effective on the last day of the termination notice period.
4. Services Excluded
This Agreement only covers the right to use the Software and receive the Service. To the extent the Customer requires any other related services not specifically addressed in the Agreement or Appendixes (e.g. payment of other fees than Annuity Fees, training or guidance to the use of the Software), Customer may procure such services to be performed by Licensor by separate contract.
5. Software Maintenance
The Licensor will maintain the Software, including patches and fixes to the Software and provide access to new versions of the Software on the same IT-platform at no additional cost. Unless otherwise agreed, the maintenance shall not include any major releases of new versions of the Software on another IT-platform, new modules to the Software, additional functionality or custom programming.
Licensor may, with written notice of not less than two weeks, perform an audit of the Customer’s use of the Software to ensure use in accordance with this Agreement and the latest valid Yearly Statement. Customer shall provide access to its systems, on site or remote as decided by Licensor, on which the Software are accessed and provide assistance in respect of any reasonable requests by Licensor.
7. Obligations of the Customer
The Customer shall comply with Licensor’s reasonable instructions and recommendations with respect to the Software and the use thereof.
The Software are licensed with no pre-configured settings or data. Any risks related to use of the Software as well as the responsibility for legitimate use shall remain with the Customer. The Customer is aware that all matters relating to regulatory or privacy law matters are matters within the Customer’s control for which Licensor will not be liable. Customer agrees to indemnify Licensor for any claim brought by a third party against Licensor but relating to Customer’s obligations.
When access to the Software is done the first time the Customer shall upload the information required by the Software for registration and which information are also specified in Appendix 4. The Customer is responsible for the information uploaded in the Software being correct. The information is needed for the Patents to be registered in the Software, and for Licensor to be able to perform the Service, and for the Customer to be provided with and have access to the information regarding the Patents as described in Appendix 4.
The Customer shall appoint a User to act as the Customer’s administrator of the access to the Software. The email address of the appointed User shall be informed to the Licensor. The name of the User and his/her email address shall be inserted in Appendix 2.
The Customer shall be responsible for providing and making available the Funds to be used for payment of the Annuity Fees on time at the latest on the Payment Date For Funds or such earlier date informed by the Licensor in writing. On the Payment Date For Funds the Customer shall transfer the total Funds (shown in the Software’s dashboard bar graph) which shall be used in the month after the month beginning with the Payment Date For Funds to the bank account specified in Appendix 3 available for use at the Payment Date For Funds or such earlier date informed by the Licensor in writing. If Funds have to be paid to a Deposit Account, the Customer will make Funds available on the Payment Date For Funds To A Deposit Account.
The Customer has the risk of any exchange rate of movement in the Local Currency in the period between the Payment Date For Funds or the Payment Date For Funds To A Deposit Account, and the actual date of payment of the Annuity Fee to the patent authorities or the payment date to a Deposit Account or the payment date to a Local Patent Agent cf. Appendix 3.
Local rules in countries require, that the Customer sign a power of attorney document giving the Licensor or a Local Patent Agent the right to represent the Customer in front of the patent authorities in relation to the payment of the Annuity Fee. The Customer therefore have to sign a power of attorney granting the Licensor said rights, including the right to grant a Local Patent Agent the right or sign a power of attorney directly with a Local Patent Agent to represent the Customer in front of the patent authorities.
Customer or its patent representative shall assist in informing the patent authorities that the Licensor or its Local Patent Agent in the future will take care of the payment of the Annuity Fee for the Patent. The Customer and its patent representative shall further assist in making sure that the Licensor receive information about paid Annuity Fees when such information is provided to the Customer or its patent representative.
Customer recognizes that Customer shall be liable for any additional costs incurred by Licensor as a result of Customer’s failure to perform its obligations.
Customer shall be jointly and severally liable with its Affiliates for any obligation, breach or claim under this Agreement. Obligations pertaining to “Customer” herein shall be deemed to also include all Affiliates of Customer.
All warranties given by Licensor herein are given for the duration of the Warranty Period only. The warranties provided by Licensor in this Agreement are exclusive and Licensor disclaims warranties on any other basis, cf. Section 8.1.3. The remedies set out in the respective sections shall be the sole and exclusive remedies of Customer under this Agreement.
No warranties are provided in relation to any claims resulting from: (a) Customer or third party media, sites, interfaces, etc.; (b) modifications not authorized by Licensor; (c) viruses, worms or any other malevolent code; or (d) negligence, accident, electrical disturbances, data loss, or other causes beyond Licensor’s control.
Disclaimer of other warranties. Except as provided in Section 8.2 and 8.3, all warranties, conditions, representations and guarantees, whether express or implied, arising by law, custom, oral or written statement of the Licensor or otherwise (including, but not limited to, any warranty or condition as to merchantability, satisfactory quality or fitness for particular purpose or error-free and uninterrupted use of the Software (including updates and upgrades)) are hereby superseded, excluded and disclaimed.
8.5 Software Warranty
Licensor warrants that the Software will be free of defects which (a) prevent operation of the Software or (b) which have, in the context of the Software as a whole, a material adverse effect on the functionality licensed. If Customer within the Warranty Period documents a breach of this present warranty, Licensor shall, at its sole discretion, be obligated to (i) remedy or correct the defect or error free of charge, or (ii) terminate the license in respect of the Software in question and repay the fees received against cancellation of Customer’s access to the Software. The provisions of this paragraph constitute Customer’s sole and exclusive remedies in the event of a defect or error in the Software.
8.7 Intellectual Property Rights Infringements
Licensor warrants that the Software will not infringe the intellectual property rights of any third party. If Customer within the Warranty Period documents a breach of this present warranty in the form of a claim against Customer by a third party asserting its intellectual property rights, Licensor shall, in its discretion, (i) modify or replace the infringing Software; (ii) on its own account settle or defend such claim, provided that Customer (a) promptly provides written notice to Licensor of the claim, (b) cooperates with Licensor and follows the reasonable instructions given by Licensor in the defence or settlement of the claim and (c) grants Licensor full and sole control of the defence of the claim; or (iii) terminate this Agreement in respect of the infringing Software or part thereof.
Licensor will not be liable in any way for claims of infringement caused by or arising from (a) modifications not made by Licensor, (b) compliance with Customer specific requirements, designs, instructions, specifications, or technical information (c) Customer’s use with products, software and services other than the Software, (d) Customer’s non-compliance with specifications and recommendations provided by Licensor, or (e) patent laws and patents whether pending or issued, unless issued and publicized in an EU member state on the Effective Date of this Agreement.
Appendix 4 (a) lists the open source and other third party-components which are included in the Software, and (b) identifies the licenses applicable to such components. The components are subject to the terms of the licenses identified and Licensor grants no further rights to the Customer than as set out in the applicable license. The limitations of liability set out in the licenses shall, in respect of Licensor, apply in addition to the limitations of liability set out herein.
9. Intellectual Property Rights
Other than as set out in Appendix 4, Licensor holds copyright, title and any other rights to the Software and Customer acknowledges that the Software and all copyright, trade secrets and other rights, title and interest therein, are the sole property of the Licensor. Licensing of the Software confers no title or ownership and is not a sale of any rights in the Software or any part hereof or other software. Without limiting the foregoing, Customer specifically acknowledges Licensor’s exclusive rights to ownership of any modification, translation or adaptation of the Software and any other improvement or development based thereon. All rights not expressly granted are reserved by Licensor. Customer assigns to Licensor free of charge all rights, copyright, title and interest in any correction, suggestion or other know-how created after the Effective Date and related to the Software or Customer’s use of the Software.
10. Limitation of liability
Licensor’s liability for any claim arising from this Agreement relating to the Service provided and the granted license to the Software shall be limited to liability for direct losses caused by Licensor’s negligent behaviour. Licensor disclaims liability for any special, incidental, indirect, or consequential costs or damages including, without limitation, damages for loss of business, loss of profits, business interruption, loss of business information, claims from third parties, loss or unavailability of or damage to data or software restoration.
Except for damages for bodily injury and death, Licensor’s aggregate liability shall not exceed the lower of (a) 200% of the total Service Fees invoiced to Customer for the last 12 months; or (b) EUR 200,000.
This Agreement may not be terminated by Licensor within 24 months after the Effective Date, but thereafter by giving no less than ninety (90) days written notice, except for Customer’s breach which Customer, if the breach is capable of remedy, has failed to cure after being given thirty (30) days written notice of the breach, where Licensor in such case at any time can terminate the Agreement with immediately effect.
Customer may terminate this Agreement for convenience by giving no less than ninety (90) days written termination notice.
Termination of the Agreement will not affect payments due nor shall it affect payments already made.
The termination of this Agreement will not have any effect on Section 8.3, Section 9, Section 10, Section 11.3, Section 11.4 and Section 11.8 which shall survive any termination of this Agreement.
11.6 Force Majeure
If either of the Parties is prevented from carrying out its obligations (other than payment obligations) under this Agreement (or such are delayed) by circumstances beyond the Party’s reasonable control and which could not reasonably be foreseen at the time this Agreement was entered into, including but not limited to failure in electricity or telecommunication, statutory invention, strikes, lockout, boycott, war, civil disorder, sabotage, terror or vandalism, computer viruses and hacking (“Force Majeure Event“) then the Party shall not be deemed to be in breach of this Agreement. In the event that the Force Majeure Event continues for a period longer than six months, the other Party shall be entitled to terminate this Agreement with immediately effect. Such termination shall be without prejudice to the accrued rights and liabilities of the Parties on the date of the termination.
11.7 Protection of the Customer’s Data
The Licensor undertakes to treat all Customer information uploaded in the Software as confidential information and the Licensor will maintain appropriate, physical, organizational and technical measures for protection of the security and confidentiality of the Customer’s information and data. The Licensor will not disclose the Customer’s information or data to any third party except as compelled by applicable law or as expressly permitted in writing by the Customer or access the information or data except for proving the Service and preventing technical problems in the Software. Upon termination of this Agreement any parts of the Customer’s information or data that the Licensor may be in possession of will be returned to the Customer or destroyed by the Licensor.
The Parties shall treat as confidential any information relating to this Agreement or the other Party of which they may gain knowledge. However, Licensor may list Customer and base facts of the Customer’s use of the Software and receiving the Service on its web site and other marketing documents, but may not to any further extent use Customer as a reference without Customer’s prior acceptance.
11.9 Assignment and Transfer
Customer may assign, delegate or otherwise transfer all or any part of this Agreement without prior written consent from Licensor as part of a statutory reorganization within the Customer’s company group. Any other assignation, delegation or transfer is subject to Licensor’s approval and possible novation of the contract. Licensor may assign, delegate and transfer any rights and obligations hereunder to an entity within Licensor’s company group or as part of a transfer of all or a material part of its business at any time.
No amendments of this Agreement or waiver of any rights hereunder shall be effective unless in writing and signed by an authorized representative of the Party against whom enforcement is sought.
11.11 Entire Agreement
This Agreement is the entire Agreement between Licensor and Customer regarding the Service provided to the Customer and the Customer’s licensing of the Software and supersedes any other communications or agreements. If a court or government body of competent jurisdiction determines that any paragraph or section of this Agreement is invalid or limited, this Agreement shall prevail in full effect with the actual paragraph or section excluded or limited.
11.12 Governing Law and Proper Forum
This Service and Licence Agreement shall be governed by and construed in accordance with Danish law. The sole and proper forum for the settlement of disputes hereunder shall be the City Court of Copenhagen.
Fee for Service and License and Users
Service Fee for each payment of the Annuity Fee for each Patent:
(total Patents uploaded on the Effective Date: )
Licenses Fee per year (include one User):
Fee per extra User per year:
Name of User:
Email Address of User:
Invoice of the Service Fee will be made first time on the Effective Date covering the following 12 months and thereafter every 12 months covering a 12 months’ period.
Invoice of the License Fee will be made on the Effective Date covering the following year and thereafter on a date one year after the latest invoicing.
Invoice of extra Users will be made when the number of extra Users have been agreed and thereafter on a date one year after the latest invoicing.
Any Transaction Fees or Local Patent Agent Fees paid by the Licensor will be charged to the Customer on the Payment Date For Funds for the period before the Payment Date For Funds, meaning the period in between two Payment Date For Funds.
Any charges for increase of the currency rate of the Local Currency, as stated in Appendix 3, will be made when the Licensor has calculated the extra Funds to be paid for the difference in Funds paid on the Payment Date For Funds or the Payment Date For Funds To A Deposit Account and the needed Funds to paid the Annuity Fee or payment to a Deposit Account or payment to a Local Patent Agent.
Information about Funds for Annuity Fees and Bank Account.
The Customer shall pay the Funds, in order for the Licensor to be able to pay the Annuity Fee to the patent authorities for the renewal of the patent rights, into the below stated bank account:
Bank account holder: COMPANY42 ApS
Bank Registration Number: 3409
Bank Account number: 12529309
The Customer shall make the Funds available on the above bank account on the Payment Date For Funds with an amount equal to the total monthly required Funds stated under the Software’s “Dashboard” in a bar graph for the month after the month beginning with the Payment Date For Funds. This means that e.g. if the Payment Date For Funds is the 1. December the total required Funds indicated in the bar graph for January shall be paid in on the 1. December. The Funds shall at the latest be in the bank account specified above on the Payment Date For the Funds and be available for use on that date. If Funds have been paid to a Deposit Account, the Customer shall make the Funds available on date required in writing by the Licensor.
However, the first time the Customer shall transfer Funds to the above bank account, the Customer shall transfer an amount equal to the needed Funds for the first hole month, where Licensor shall provide the Service and for the following as well. Such Funds shall be transferred on the Effective Date. Thereafter shall Funds be transferred as stated above, meaning if the Effective Date is 1. November, the needed Funds for December and January shall be transferred on the Effective Date and next transfer shall be on the 1. January for Funds needed in February.
The payment of the Funds is based on the currency rate of Local Currency on the Payment Date For Funds or the Payment Date For Funds To A Deposit Account. If the currency rate of the Local Currency is changed in the period between the Payment Date For Funds or the Payment Date For Funds To A Deposit Account and the actual date of payment of the Annuity Fee or payment date to a Deposit Account or Payment Date to a Local Patent Agent, than any increase in the currency rate of the Local Currency will be charged to the Customer for the period before the next Payment Date For Funds ( as stated in Appendix 2) and any decrease in the currency rate of the Local Currency shall be deducted, when calculated by the Licensor, in the next payment of Funds.
The Software is a web-based software and can only be accessed through the use of the User’s email address and a password generated by the Licensor. Such password may be amended by the Customer, however subject to a new password being informed to the Licensor for record purpose only.
The Software is used for renewing patents and providing information about the Patents.
“Dashboard” page of the 42patents platform. The User can access data information in an overview of expenses called the expenses overview for the payment of the annuity fee for the Patents in a given month. The overview shows the expenses to be funded by the Customer for payment of the Annuity Fee for the Patents which the Customer have selected shall be renewed by the payment of the Annuity Fee through the selected month. The user can select months from a 12-month period.
“Notifications” page of the 42patents platform. The User can see an overview of all actions and processes made through the 42patents platform by the Licensor or the User, such as the onboarding successful of the Patents, that all Patents were uploaded with commercial licensing information if such exist, that all Patents were uploaded with protection certificate information if such protection exists and other information that has been the result of actions and processes made through the 42patents platform.
“Settings” page of the 42patents platform. The User can update company information, billing information and/or delete the account.
Information for the Customer to upload when first time accessing the 42patents platform:
Company Name, Email, Password, Repeated Password.
Industry, Organization Type, Custom Domain Name, Company URL, Company Logo.
Names of different entities, e.g. Departments or chapters of a company. For each of there Billing Information is provided as such:
Currency, Billing Email, Address, City, Postal Code, Country, Company Registration Number, VAT Number, name of cost centre, id number of cost centre.
A file containing a list of patent data regarding the Users patent portfolio specified in the format during the 42patents on boarding process.
Start date for shifting to the 42patents platform, the current renewal provider, the current patent agency.
Software where Licensor have a license and the 42patens platform rely on.
1)Heroku – platform as a service provider
– Postgres Databases
– Back up of the above
2)Google – Primary databases (non-relational)
– Backup of the above
– Live chat
– Automated emails
4)Amazon Web Service
– Automated bank transfers
All of the above are paid services or licensed by the Licensor, where the Customer will not be granted any rights or license, but only have an indirect access through the license to the 42patent platform.
Form Yearly Statement
The number of registered named users of the Software:
The number of registered Patents for the payment of the Annuity Fee:
Annuity Fee: DKK per patent per payment
License Fee per year:
Software Release Note
Recommended browser and systems requirements
The Licensor recommend that all users of the Software use the Chrome browser version 62 and upwards on a Chrome version 62 compatible operating system when accessing the 42patents platform.