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, and any Intellectual Property Rights arising from any of the above.
AAA Results: [all the Results which are not XXX’s Results] OR [the Results to the extent that they are directly related to the composition, characteristics, manufacture, development, enhancement or use of AAA’s Materials or AAA’s Confidential Information] OR [insert description of the specific kind of result which is to belong to AAA].
XXX Results: [the Results to the extent that they are directly related to the composition, characteristics, manufacture, development, enhancement or use of XXX’s Materials or XXX’s Confidential Information] OR [insert description of the specific kind of Result which is to belong to XXX];
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 AAA and to XXX 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 AAA and XXX to comply with their respective obligations under clause 4.11. The licence granted in this clause 4.2 will automatically terminate on the withdrawal or deemed withdrawal of AAA or XXX (as the case may be) from the Project [or the expiry of the assignment to that Party in accordance with clause 4.12 (whichever is the earlier)]
[…]
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 AAA and XXX grants each of the other Parties a royalty free, non-exclusive licence to use, respectively, the AAA Results and the XXXX Results for the purpose of carrying out the Project [and for Clinical Patient Care]. None of the Parties (except AAA and XXX) may grant any sub-licence to use any of the Results 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 of the Results for the purpose of carrying out the Project.
[…]
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 Group Company 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 AAA and XXX will use all reasonable endeavours to commercialise, respectively, the AAA Results and the XXX Results in accordance with the Exploitation Strategy. Each of the other Parties will notify AAA of any opportunity for the commercialisation of the AAA Results of which it becomes aware and will notify XXX of any opportunity for the commercialisation of the XXX 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.