Provision Language
Definitions
Academic and Research Purposes: research [(except [insert any exceptions]), teaching[, and] education[ and Clinical Patient Care]
Background: any information, data, techniques, Know–how, inventions, software, discoveries and materials (regardless of the form or medium in which they are disclosed or stored) which are provided by one Party (whether belonging to that Party or to a third party) to another Party for use in the Project, and whether before or after the date of this Agreement, except any Result.
Research Purposes: [any purpose except commercialisation, i.e. licensing for value or sale for value] OR [acts done for experimental purposes [or to obtain regulatory approval for any generic or innovative medicinal product (including any clinical trial)]
Results: all information, data, techniques, Know-how, results, inventions, discoveries, software and materials (regardless of the form or medium in which they are disclosed or stored) identified or first reduced to practice or writing in the course of the Project.
4. USE AND EXPLOITATION OF INTELLECTUAL PROPERTY RIGHTS
[…]
4.2 [Each Party grants each of the other Parties a royalty-free, non-exclusive licence to use its Background for the purpose of carrying out the Project. None of the Parties may grant any sub-licence to use any other Party’s Background except that any Commercial Party may allow any of its Group Companies, and any person working for or on behalf of it or any of its Group Companies, to use any Party’s Background for the purpose of carrying out the Project.
OR
[Each Party grants to each of the other Parties a royalty-free, non-exclusive licence to use its Background for the purpose of carrying out the Project and[, in return for the payments to be made to it under the Payment Plan,] each Party grants to the Lead Exploitation Party a non-exclusive[, fully paid-up, royalty free] licence (with the right to sub-license) to use the Intellectual Property Rights in its Background to the extent necessary to allow the Lead Exploitation Party to comply with its obligations under clause 4.11. The licence granted in this clause 4.2 will automatically terminate on the [withdrawal or deemed withdrawal of the Lead Exploitation Party from the Project] OR [termination of the licence granted in clause 4.3.]]
4.3 The Lead Exploitation Party will [own the Intellectual Property Rights in the Results] OR [have a worldwide exclusive licence to commercialise the Intellectual Property Rights in the Results] [for the Exclusive Period]], and [will take such steps, after consultation with the Steering Committee, as may be necessary] OR [may take such steps as it may decide] from time to time, at the Lead Exploitation Party’s expense, to register and maintain any protection for those Intellectual Property Rights, including filing and prosecuting patent applications for any of the Results, and taking any reasonable action in respect of any alleged or actual infringement of those Intellectual Property Rights] so as to allow it to comply with its obligations to commercialise the Results under clause 4.11.
[…]
4.6 Where any third party (such as a student or contractor) is involved in the Project, the Party engaging that third party will ensure that that third party has assigned to that Party any Intellectual Property Rights (including making a prospective assignment where appropriate) which that third party has in the Results in order to be able to give effect to the provisions of this clause 4.
4.7 The Lead Exploitation Party grants each of the other Parties a royalty free, non-exclusive licence to use the Results for the purpose of carrying out the Project [and Clinical Patient Care]. None of the Parties (except the Lead Exploitation Party) may grant any sub-licence to use any of the Results except that any Commercial Party may allow any of its Group Company and any person working for or on behalf of the Commercial Party or any of its Group Companies to use the Results for the purpose of carrying out the Project
4.8 [In return for the payments to be made to it under the Payment Plan, to the extent that any Intellectual Property Rights in the Results are capable of prospective assignment, each of the Parties (except the Lead Exploitation Party) now assigns its Intellectual Property Rights in the Results to the Lead Exploitation Party; and to the extent that any Intellectual Property Rights in the Results cannot be assigned prospectively, each of the other Parties will assign such of the Intellectual Property Rights as it owns in the Results to the Lead Exploitation Party as and when those Intellectual Property Rights are created, at the request of the Lead Exploitation Party.
OR
[In return for the payments to be made to it under the Payment Plan, each of the Parties (except the Lead Exploitation Party) now grants the Lead Exploitation Party a worldwide exclusive licence [for the duration of the Exclusive Period] to commercialise the Results in any way the Lead Exploitation Party sees fit, provided it complies with clause 4.10.]
4.9 Each Academic Party and each of its employees and students will have the irrevocable, royalty-free right to use any of the Results [(except the following types of Result: [insert details]) for Academic and Research Purposes [including] OR [excluding] research projects which are carried out by the Academic Party with any third party [in the commercial sector] [and Clinical Patient Care].
4.10 Each of the Commercial Parties will have a royalty-free, non-exclusive, worldwide, indefinite licence to use any of the Results for Research Purposes (with the right to sub-license to any of its Group Companies and to any person working for, or on behalf of, the Commercial Party or any of its Group Companies, but only for the purpose of carrying out that work for Research Purposes, and otherwise without the right to sub-license).
4.11 The Lead Exploitation Party will use all reasonable endeavours to commercialise the Results in accordance with the Exploitation Strategy [during the Exclusive Period]. Each of the other Parties will notify the Lead Exploitation Party of any opportunity for the commercialisation of the Results of which it becomes aware and no Party will do anything or omit to do anything that prevents the commercialisation of the Results in accordance with the Exploitation Strategy.
4.12 [On the expiry of the Exclusive Period, the rights of the Lead Exploitation Party under clause 4.8 will automatically come to an end and each Party will grant each of the other Parties a non-exclusive, indefinite[, fully paid-up, royalty free] licence (with the right to sub-license) to use the Intellectual Property Rights in any of the Results for any purpose.]