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.
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
4.1 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 AAA Institution will own the Intellectual Property Rights in the AAA Results; and XXX will own the Intellectual Property Rights in the XXX Results, and each [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 the Intellectual Property Rights in its Results, 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 so as to comply with its obligations to commercialise the Results under clause 4.11.
4.4 Without prejudice to its obligations under clause 4.3, if AAA or XXX does not think it necessary to register or maintain any protection for the Intellectual Property Rights in, respectively, the AAA Results or the XXX Results or to take any action against any infringer of the Intellectual Property Rights in those Results, it will notify the Project Manager accordingly and in good time before abandoning any application or before failing to meet any deadline and, without prejudice to any other right that a Party may have against either AAA or XXX, the Party which created those Intellectual Property Rights may take such steps as it sees fit to register and maintain any protection for those Intellectual Property Rights, including filing and prosecuting patent applications for any Result, and taking any action in respect of any alleged or actual infringement of any Intellectual Property Rights in its Results.
4.5 Each of the other Parties will ensure that its employees and students (if any) involved in the creation of the Results of another Party gives that other Party such assistance (except financial assistance) as that other Party reasonably request in connection with the registration and protection of its Intellectual Property Rights in the 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.
4.6 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.
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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 AAA Results are capable of prospective assignment, each of the Parties (except AAA) now assigns its Intellectual Property Rights in the AAA Results to AAA; and to the extent that any Intellectual Property Rights in the AAA Results cannot be assigned prospectively, each of the other Parties will assign such of the Intellectual Property Rights in the AAA Results as it owns to AAA as and when those Intellectual Property Rights are created, at the request of AAA. In return for the payments to be made to it under the Payment Plan, to the extent that any Intellectual Property Rights in the XXX Results are capable of prospective assignment, each of the Parties (except XXX) now assigns the Intellectual Property Rights in the XXX Results to XXX; and to the extent that any Intellectual Property Rights in the XXX Results cannot be assigned prospectively, each of the other Parties will assign such of those Intellectual Property Rights in the XXX Results as it owns to XXX as and when those Intellectual Property Rights are created, at the request of XXX.
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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.
4.12 [If AAA or BBB becomes insolvent; or if an order is made or a resolution is passed for its winding up (except voluntarily for the purpose of solvent amalgamation or reconstruction); of if an administrator, administrative receiver or receiver is appointed over the whole or any part of its assets; or if it makes any arrangement with its creditors, it will reassign to the each of the other Parties the Intellectual Property Rights assigned to it by that other Party under this Agreement.] OR [The assignment to AAA and XXX in this Agreement will be limited in duration until the day before the earliest of the following occurs: the AAA or XXX respectively becoming insolvent; an order being made or a resolution being passed for its winding up (except voluntarily for the purpose of solvent amalgamation or reconstruction); an administrator, administrative receiver or receiver being appointed over the whole or any part of its assets; or it making any arrangement with its creditors.]