Provision Language
Definitions
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.
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.
4. Use and Exploitation of Intellectual Property Rights
4.1 This Agreement does not affect the ownership of any Intellectual Property Rights in any Background or in any other technology, design, work, invention, software, data, technique, know–how, or materials which are not Results. The Intellectual Property Rights in them will remain the property of the Party that contributes them to the Project (or its licensors). No license to use any Intellectual Property is granted or implied by this Agreement except the rights explicitly set out in this Agreement.
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4.3 The Party which creates or generates any Result will own the Intellectual Property Rights in that Result and, subject to its obligations under clause 4.9.4, [will take, after consultation with the Steering Committee, such steps as may be necessary] OR [may take such steps as it may decide] from time to time, at its expense, to register and maintain any protection for those Intellectual Property Rights, including filing and prosecuting patent applications for those Results, and taking any action in respect of any alleged or actual infringement of those Intellectual Property Rights.
4.4 Where any Result is created or generated by two or more Parties jointly and it is impossible to distinguish each Party’s intellectual contribution to the creation of the Intellectual Property Rights in that Result, the Intellectual Property Rights in that Result will be co–owned by those Parties as tenants in common in equal shares. The co–owners may take such steps as they may decide from time to time, at their joint and equal expense, to register and maintain any protection for those Intellectual Property Rights, including filing and prosecuting patent applications, and taking any action in respect of any alleged or actual infringement of those Intellectual Property Rights. If one or more of the co–owners does not wish to take any such step or action, the other co–owner(s) may do so at their expense, and the co–owner(s) not wishing to take such steps or action will provide, at the expense of the co–owner making the request, any assistance that is reasonably requested of it.
4.5 Any co-owner of any of the Intellectual Property Rights in any Result may deal with and exploit those Intellectual Property Rights as though it were the sole owner, [without being required to account to any other co-owner for any share in the revenues generated by that dealing or exploitation] OR [subject to payment to the other co-owner(s) in accordance with the Payment Plan], provided that no co-owner may grant any third party any rights which detract from any other co-owner’s right to deal with any co-owned Intellectual Property Rights as it sees fit.
4.6 Each of the Parties will ensure that its employees and students (if any) involved in the creation of the Results gives each of the other Parties such assistance (except financial assistance) as that other Party may reasonably request in connection with the registration and protection of the Intellectual Property Rights in its Results, including filing and prosecuting patent applications for any of its Results, and taking any action in respect of any alleged or actual infringement of those Intellectual Property Rights.
4.7 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 (including making a prospective assignment where appropriate) all rights which that third party has in the Results in order to be able to give effect to the provisions of this clause 4.
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4.9.1 Each Party (the Potential Grantor) will, if another Party (the Party Wishing to Exploit) gives it written notice (an Option Notice) at any time during the Project Period plus a further [6] OR [12] months (together called the Option Period), negotiate the terms on which the Potential Grantor will grant the Party Wishing to Exploit [an exclusive] OR [a non-exclusive] licence (with the right to sub-license) to use the Intellectual Property Rights in certain of the Potential Grantor’s Results [and its Background].
4.9.2 Following the Potential Grantor’s receipt of an Option Notice, the Potential Grantor and the Party Wishing to Exploit will negotiate in good faith, for a period of up to [90 days] OR [6 months] after the date of receipt of the Option Notice (the Negotiation Period) the terms of an assignment or licence. If the Potential Grantor and the Party Wishing to Exploit are unable to agree the terms of an assignment or licence within the Negotiation Period, the rights of the Party Wishing to Exploit under clauses 4.9.1, 4.9.3 and 4.9.4 (but not the licence in clause 4.8) will lapse.
4.9.3 The Potential Grantor will not, during the Option Period or the Negotiation Period, negotiate with any other person with a view to granting a licence to use its Results or Background or assigning the Intellectual Property Rights in its Results or Background. nor grant a licence to use the Potential Grantor’s Results or assign the Intellectual Property Rights in the Potential Grantor’s Results to any other person. During the [3][6] OR [12] months following the end of the Negotiation Period, the Potential Grantor will not grant a licence of any of its Results or assign any of the Intellectual Property Rights in its Results or its Background to any person on any terms more favourable than those offered to the Party Wishing to Exploit pursuant to this clause 4.9.
4.9.4 Until the end of the Option Period and, if the Party Wishing to Exploit gives the Option Notice, until the earlier of the end of the Negotiation Period and the date of the assignment or grant of a licence pursuant to this clause 4.9, the Potential Grantor will consult with the Party Wishing to Exploit about making patent or other applications in respect of the Potential Grantor’s Results. If, during the Negotiation Period, the Party Wishing to Exploit wishes the Potential Grantor to apply for any patent or any other protection in relation to any of those Results, the Party Wishing to Exploit will reimburse to the Potential Grantor the reasonable costs and expenses incurred by the Potential Grantor since the date of this Agreement in relation to the filing and prosecution of that patent or other application, including patent agents’ fees, as a result of the Party Wishing to Exploit’s request to apply for, or to maintain, any patent or other protection. If the Potential Grantor later licenses or assigns to another person any of the Results or the Background for which the Party Wishing to Exploit has paid any such costs and expenses, the Potential Grantor will reimburse those costs and expenses to the Party Wishing to Exploit.