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.
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 which contributed them to the Project (or its licensors). No licence to use any Intellectual Property Rights is granted or implied by this Agreement except the rights expressly 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 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, and taking any action in respect of any alleged or actual infringement of any Intellectual Property Rights in its Results.
4.4 Each Party will ensure that its employees and students (if any) (and each of the Commercial Parties will ensure that the employees of any of its Group Companies) involved in the creation of the Results of another Party gives that other Party 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 any of that other Party’s Results, including filing and prosecuting patent applications for any of that other Party’s Results, and taking any action in respect of any alleged or actual infringement of any Intellectual Property Rights in any of that other Party’s Results.
4.5 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.
4.6 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.
4.7 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.
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4.11 [None of the Parties will exploit the Results in any way that is in breach of the Funding Conditions but, subject to that, each Party will use all reasonable endeavours to exploit the Results. To that end the Parties will endeavour to agree a strategy for the exploitation of the Results.]