Provision Language
Definitions
“Research Purposes” is defined as EITHER (i) any purpose except commercialisation, i.e. licensing for value or sale for value OR (ii) acts done for experimental purposes [or to obtain regulatory approval for any generic or innovative medicinal product (including any clinical trial).]
4. Use and Exploitation of Intellectual Property Rights
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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 sublicense 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, and except as permitted by any licence granted pursuant to clause 4.9.
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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.
4.8 Each 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. Any Commercial Party may allow 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 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].
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.
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.
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.
4.10 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].
4.11 License for Commercial Parties. Each of the Commercial Parties will have a royalty–free, non–exclusive, worldwide, indefinite licence to use any of the Results for Research Purposes only (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).