Coming to America: Converting a UK Technology License Agreement To A US Technology License Agreement

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US and UK technology license agreements are fundamentally similar to each other. UK licensors should take heed, though, because there are nuances that, if not addressed, can create problems - sometimes small and sometimes large - when you come across the pond to sell your wares. The following is intended to provide you with a general guide to those nuances.

Limitations of Liability: Within the limitation of liability, do not carve-out personal injury or death resulting from negligence. UK agreements typically contain this language because of the UK Unfair Contract Terms Act 1977. US agreements are silent on this. In all other respects, though, UK and US agreements contain similar disclaimers of liability whether such liability is in contract, tort, negligence or otherwise for loss of profits, goodwill, or reputation, for loss or corruption of data or the cost of restoration of data, or for any indirect or consequential costs or damages whatsoever.

US agreements also often contain internal statutes of limitation which state, for example, that all claims must be brought within one year of the event upon which the claim is based or be barred forever.

Warranty Disclaimers: Similar to the UK, US agreements allow for disclaimers of implied warranties. However, US agreements tend to specifically disclaim the implied warranty of fitness for a particular purpose (i.e., a warranty implied by law that goods are suitable for the buyer's special purpose for such goods) and merchantability (i.e., a warranty implied that the goods are fit for the ordinary purposes for which it is used).

Dispute Resolution: Think through your dispute resolution options. Many US clients will insist upon US domestic law, and the particular choice of law (e.g., New York, Delaware, Ohio, etc.) should not impact the interpretation of, or dispute resolution to, an agreement.

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