The Licensor gives the Licensee a non-exclusive, perpetual, irrevocable, worldwide, royalty-free licence to use (and sub-license the Licensee’s other clients to use) any Project Intellectual Property which is a generic design or tool that can be used for purposes other than the Project, on the condition that Licensee and its clients do not use that Project Intellectual Property in a manner that competes with the part of the Licensor’s business to which the Project relates.
- The Parties acknowledge and agree that they jointly own the Project Intellectual Property as tenants in common in equal shares.
- Each Party agrees not to use the Project Intellectual Property without the prior written consent of the other Party unless such rights are expressly provided for under this Agreement.
- Subject to clause 4, each Party agrees not to assign its interest in any of the Project Intellectual Property without the prior written consent of the other Party, which consent is not to be unreasonably withheld.
- The Parties agree that it will not be unreasonable for a Party to withhold its consent to the other Party assigning its interest in Project Intellectual Property unless the proposed assignee agrees to be bound by and subject to the terms of this Agreement.
Background IP means Intellectual Property which is developed prior to or independently of this Agreement and made available by the Party to conduct the Project, including the Intellectual Property identified in Schedule and any additional Intellectual Property which the Party identifies during the Term as its Background Intellectual Property by written notice to the other Party.
Open Source Software means computer software that includes source code, supplied to or obtained by a person under a license which conforms to the Open Source Definition as promulgated by the Open Source Initiative (OSI), and regardless of whether the license is approved by the OSI.
Project means the research, development and Commercialisation activities of the the Parties as described in the project plan in Schedule [insert reference] and any amendments made to the project plan by written agreement between the parties.
Project Intellectual Property means:
- the Project Results;
- all Intellectual Property in or in relation to the Project Results; and
- all other Intellectual Property created or developed by the parties in or in relation to the conduct of the Project,
but does not include Background Intellectual Property.
Each Party must obtain for itself all available licences applicable to any Open Source Software contained in its Background Intellectual Property and Project Intellectual Property created by the that so that the Licensee has sufficient rights to use, modify, reproduce and distribute such Open Source Software in Commercialising the Project Intellectual Property.
Each Party agrees to notify the other Party immediately upon becoming aware of any Open Source Software contained in that Party’s Background Intellectual Property and Project Intellectual Property created by that Party.
The Licensor/Assignor warrants that, as at the date of this Agreement:
(a) it is the registered owner or applicant (as the case may be) of the Patents;
(b) it has not entered into any Agreement which prevents it from fulfilling its obligations under this Agreement; and
(c) to the best of its knowledge without making enquiries, it is not aware of any claim that the Patents infringe the rights of any third party.
Each party acknowledges that, except for warranties on the part of the Licensor that are expressly set out in this Agreement, there are no other terms or warranties binding on the Licensor and the Licensor has not made and does not make any other warranty or representation in relation to the Technology or its Commercialisation, including in particular:
- the safety of the Technology;
- the profits or revenues that may result from the Commercialisation of the Technology;
- the marketability, Commercialisation prospects or success of any part of the Technology;
- whether any Patents may be granted, or granted with the claims sought, or any reduced claims; or
- whether any Patent granted may be declared invalid or cease to be registered;
The Licensor has not, nor has any person on behalf of the Licensor made any term, warranty, undertaking or understanding that is not expressly set out in this Agreement; and
no representation or promise of any kind, not expressly included in this Agreement, was made before this Agreement was entered into.