Terms and Conditions

Version: 2018-07-23

Richardson Oliver Insights Master Patent Data Licensing Agreement

This Master Patent Data Licensing Agreement (“Agreement”) is a legal agreement between the entity on whose behalf you (“Customer”) are accepting this Agreement and Richardson Oliver Insights, LLC. (“ROI”) for patent market data. Any data licensed hereunder will be described in a Data Licensing Statement.

1. Background

ROI is a leading provider of patent market data and analytics. ROI maintains a proprietary database of patent packages that are being, and have been, offered for sale. ROI compiles information gathered confidentially from patent brokers, patent sellers, select public records, and other sources used in the provision of Licensed Data.

2. License to Data

Licensed Data are protected by copyright laws and confidentiality obligations. ROI grants to Customer for Authorized Purposes only, a license to use the Licensed Data subject to the confidentiality obligations to both ROI and the third party providers as specified in Section 5 (“Confidentiality”). Customer will not use the Licensed Data for any Unauthorized Purposes and has no ownership rights in or to the Licensed Data.

3. Fees and Expenses

Customer shall pay the fees speciﬁed in each Data Licensing Statement to ROI in accordance with the payment terms set out in that Data Licensing Statement. If no fee schedule is set forth in an agreed Data Licensing Statement, ROI’s current rates shall apply. The fees will be invoiced regularly.
Customer agrees to promptly review our invoices and pay them within 30 days of the invoice date.
ROI’s fees are exclusive of all taxes and each party is responsible for all taxes levied upon it by any governmental tax or equalization authority.

4. Term and Termination of Agreement

Unless otherwise terminated under this Section, this Agreement will continue indefinitely. Either of the parties may terminate the engagement and relationship at any time for any reason. At the time the relationship concludes, all fees for services performed prior to that time become immediately due and payable. Upon termination of this Agreement, the terms and conditions of Sections 3 (“Fees and Expenses”), 5 (“Confidentiality”), 6 (“Disclaimers”), 7 (“Limitation of Liability and Warranties”), and 8 (“General Terms”) shall continue in full force and effect and shall survive such termination.

5. Confidentiality

Definition. “Confidential Information” shall mean any information disclosed by either party to the other party, either directly or indirectly, in writing, orally or by inspection of tangible objects (including without limitation documents, prototypes, samples and equipment), which is designated as “Confidential,” “Proprietary” or some similar designation. Information communicated orally will be considered Confidential Information if such information is confirmed in writing as being Confidential Information within a reasonable time after the initial disclosure. Confidential Information may also include information disclosed to a disclosing party by third parties. Confidential Information will not, however, include any information which (a) was publicly known and made generally available in the public domain prior to the time of disclosure by the disclosing party; (b) becomes publicly known and made generally available after disclosure by the disclosing party to the receiving party through no action or inaction of the receiving party; (c) is already in the possession of the receiving party at the time of disclosure by the disclosing party as shown by the receiving party’s files and records immediately prior to the time of disclosure; (d) is required by law to be disclosed by the receiving party, provided that the receiving party gives the disclosing party prompt written notice of such requirement prior to such disclosure and assistance in obtaining an order protecting the information from public disclosure.
Non-Use and Non-Disclosure. Each party agrees to use the Confidential Information for Authorized Purposes only. Each party agrees not to disclose any Confidential Information of the other party to third parties or to such party’s employees, except to those employees, contractors, lawyers and accountants of the receiving party who are required to have the information in order to evaluate or engage in discussions concerning the Authorized Purpose. Neither party shall reverse engineer, disassemble or decompile any prototypes, software or other tangible objects which embody the other party’s Confidential Information and which are provided to the party hereunder.
Maintenance of Confidentiality. Each party shall take reasonable measures to protect the secrecy of and avoid disclosure and unauthorized use of the Confidential Information of the other party. Without limiting the foregoing, each party shall take at least those measures that it takes to protect its own confidential information and shall ensure that its employees who have access to and a need to know the Confidential Information of the other party have signed a non-use and non-disclosure agreement in content similar to the provisions hereof, prior to any disclosure of Confidential Information to such employees. Each party shall reproduce the other party’s proprietary rights notices on any copies of the Confidential Information, in the same manner in which such notices were set forth in or on the original.
Return of Materials. All documents and other tangible objects containing or representing Confidential Information which have been disclosed by either party to the other party, and all copies thereof which are in the possession of the other party, will remain the property of the disclosing party and must be promptly returned to the disclosing party upon the disclosing party’s written request. The requirements of this Return of Material Section do not apply to copies of Confidential Information not reasonably capable of being readily located and segregated (such as, for example, backup copies of email and other information); the confidentiality obligations hereunder will continue to apply to all such copies.
Term of Confidentiality. The obligations of confidentiality arising hereunder shall apply until such time as the Confidential Information disclosed hereunder becomes publicly known and made generally available through no action or inaction of the receiving party, whichever comes first.

6. Disclaimers

The information provided through the Licensed Data is not a substitute for legal and other professional advice where the facts and circumstances warrant. If Customer requires legal advice or other professional assistance, the Customer should always consult their own legal or other professional advisors and discuss the facts and circumstances that apply to the Customer.
ROI reserves the right to add materials and features to, and to discontinue offering any of the materials and features that are currently a part of the Licensed Data. In the event that ROI discontinues a material portion of the materials and features that Customer regularly uses in the ordinary course of its business, and such materials and features are part of a flat fee subscription plan to which Customer has subscribed, ROI will, at Customer’s option, issue a prorated credit to Customer’s account.
Information exchanged under this agreement constitutes inadmissible communications pursuant to Federal Rule of Evidence 408 and all other similar statutes and rules (“Settlement Purposes”). The parties specifically agree that such communications may not be used by any party to support any action before any court, administrative agency, or governing entity anywhere in the world, including without limitation: (i) any use to support a declaratory judgment action or patent office proceeding, e.g. PR, opposition, re-exam; (ii) any use to support an allegation of infringement; or (iii) as notice of patent infringement, willfulness, inequitable conduct, or any other purpose.

7. Limitation of Liability and Warranties

ROI and its suppliers do not guarantee the accuracy, correctness, comprehensiveness, completeness, currentness, or timing of any reports, data or other information furnished in connection with the Data Licensing Statement. ROI hereby expressly disclaims all warranties and guarantees, express or implied, including but not limited to warranties of merchantability and fitness for a particular purpose.
Except for a breach of Section 5 (“Confidentiality”), ROI shall not be liable for:
- Loss of proﬁts, revenues or contracts, business interruption, loss or corruption of data, and/or
- Direct, indirect, special or consequential losses, even if those losses were reasonably foreseeable and whether arising from negligence, breach of contract or otherwise.

8. General Terms

This Agreement shall bind and inure to the benefit of the parties hereto and their successors. This Agreement may not be assigned by Customer without ROI’s written consent. This Agreement shall be governed by the laws of the State of California, without reference to conflict of laws principles. This Agreement and any agreed Data Licensing Statements contain the entire agreement between the parties with respect to the subject matter hereof. Any failure to enforce any provision of this Agreement shall not constitute a waiver thereof or of any other provision hereof. These terms and conditions governing the provision and use of Licensed Data may be updated from time to time by ROI.
ROI has a privacy policy which is posted on its website and which may be updated from time to time by ROI. Customer agrees to allow ROI to use the name and logo of Customer in marketing and publicity materials unless ROI receives written notification to the contrary.
Customer indemnifies ROI for (i) any costs and damages associated with breaches of Section 5 (“Confidentiality”) or breaches of the “Settlement Purposes” provision of Section 6 by Customer and (ii) for any fees or costs born by ROI in producing documents or witness evidence for use in proceedings between Customer and a third party. The indemnity shall include costs incurred by ROI (or by outside counsel on ROI’s behalf) to respond, object to or negotiate the terms of ROI’s compliance with the proceedings together with ROI’s then current rates to respond to the proceedings and reasonable out-of-pocket expenses and travel costs.
The parties agree to submit any disputes to a binding arbitration proceeding before the American Arbitration Association in Santa Clara County, California. The losing party shall bear all reasonable attorneys’ fees and costs for each party in connection with the arbitration, including the costs of the AAA and the arbitrator(s), and any fees and costs to enforce a discovery order by the arbitrator(s). With respect to any dispute about Confidential Information, the foregoing shall not limit either party from immediately pursuing any and all remedies in court, subject to the exclusive jurisdiction of the state and federal courts in Santa Clara County, California, and each party hereby consents to the personal jurisdiction thereof.
Each party agrees that any violation or threatened violation of this Agreement may cause irreparable injury to the other party, entitling the other party to seek injunctive relief in addition to all legal remedies.

9. Definitions

“Agreement”, “Customer”, and “ROI” are as defined in the preamble.
“Authorized Purposes” means using the Licensed Data to (i) evaluate Customer’s own purchase or sale of specific patents or packages and (ii) develop Customer’s internal intellectual property strategies.
“Confidential Information” is as defined in Section 5.
“Data Licensing Statement” means a document identifying this Agreement, mutually agreed to by both parties that includes a description of the data to be licensed.
“Licensed Data” means the data products (and where necessary, ancillary services) provided by ROI as specified in a particular Data Licensing Statement including, but not limited to, reports on the patent market prepared by ROI, access to ROI’s patent market information database and derived trends, and related information.
“Unauthorized Purposes” means purposes including but not limited to: data laundering (e.g. making the Licensed Data available, in whole or in part, to any person, or entity, outside Customer, or quoting excerpts from the Licensed Data to any such person, except for the necessary sharing of information with accountants and/or attorneys under NDA); circumvention of brokers (e.g. direct contact with the owner of a patent or package identified in or otherwise referred to in the Licensed Data without obtaining an indication that the owner is no longer represented by the broker); using the Licensed Data for marketing purposes; using the Licensed Data for developing, supporting; providing or enabling a service competitive with ROI, including providing aggregate market reports/data; de-anonymize data provided in aggregate or anonymized form; use of the data in violation of the confidentiality provisions; removing text, symbols or other signs from Licensed Data indicating rights relating to copyright, trademark, authorship, or confidentiality; or any purposes not listed under Authorized Purposes.