Commercialisation Opportunity – Assignment of Intellectual Property DeedPage 1

THIS DEEDis made on 20.

Between:

GRIFFITH UNIVERSITY(ABN 78 106 094 461), a body corporate established pursuant to the Griffith University Act 1998, of Kessels Road, Nathan, QLD, 4111 (“University”);

and

[ACADEMIC’S FULL NAME] of [Insert physical address] (“You”).

Commercialisation Opportunity – Assignment of Intellectual Property DeedPage 1

Definitions

  1. Various defined terms, which appear in title case, are used throughout this Deed. These terms are defined in Schedule 1 which is part of this Deed.

Commercialisation

  1. The University will:
  2. undertake a Commercial Assessment of the Subject IP, develop a Commercialisation Strategy for the Subject IP and provide both to You within the time period specified within the University’s IP Policy;
  3. decide whether to Commercialise the Subject IP or not and notify You of its decision within the time period specified within the University’s IP Policy; and
  4. Commercialise the Subject IP in accordance with the University’s IP Policy, the Commercial Assessment and Commercialisation Strategy.
  5. The University will share with You the Net Financial Proceeds from the Commercialisation of the Subject IP as defined by, and in accordance with, the University’s IP Policy.
  6. You acknowledge that any Commercial Assessment and Commercialisation Strategy prepared by the University will remain the property of the University and will be provided to You in confidence. Accordingly, You agree to:
  7. keep confidential and not utilise the Commercial Assessment and Commercialisation Strategy; and,
  8. never disclose the Commercial Assessment and Commercialisation Strategy to any third party without the prior written consent of the University.

This requirement applies even after termination of the agreement set out in this Deed.

  1. To protect the University’s and Your ability to Commercialise Subject IP, You agree that You will not otherwise disclose, publish or otherwise deal with Subject IP, without the express written consent of the University.
  2. You acknowledge that You have read and understood the University’s IP Policy and You agree to be bound by the University’s IP Policy.

Required Assistance

  1. To enable the University to Commercialise the Subject IP, meet the University’s obligations to You and deal with the rights granted pursuant to this Deed, You will provide the University:
  2. as soon as is reasonably possible following a request from the University, with:
  3. a complete copy of all documentation (in any format) relating to the Subject IP, including information about any Improvements to the Subject IP;
  4. any documents, including copies of certificates of registration (if applicable) in Your possession or control that relate to any registered or pending Subject IP;
  5. any information, within Your knowledge, to allow the University to undertake a full Commercialisation Assessment and provide You with a Commercial Assessment and Commercialisation Strategy; and
  6. any other information, within Your knowledge, to allow the University to: (i) Protect the Subject IP; and, (ii) manage the Commercialisation of the Subject IP;
  7. as soon as is reasonably possible upon the creation of any Improvement to the Subject IP during the term of this agreement with information about such Improvement.
  8. You acknowledge that the University needs from You, as an inventor/creator, provision of ongoing information and support to the University and its Commercialisation partner(s) for the Protection of the Subject IP. This includes, but is not limited to, undertaking further acts and executing further documents as may be necessary or desirable to assist the University to (i) Protect the Subject IP; and, (ii) Commercialisation of the Subject IP.
  9. You appoint the University to be Your attorney to take such action as is necessary to give effect to the rights, title and interest conferred upon the University pursuant to this Deed, including the completion and signing of documents on behalf of You.

Assignment of Subject IP to the University

  1. To enable the University to Commercialise the Subject IP, meet the University’s obligations to You and deal with the rights granted pursuant to this Deed, from the date upon which the last Party signed this Deed, You assign all rights, title and interest in the Subject IP to the University.
  2. You acknowledge and agree that by assigning the Subject IP, the University has the exclusive right to:
  3. Protect the Subject IP anywhere in the world; and
  4. Commercialise the Subject IP in accordance with the University’s IP Policy.
  5. You acknowledge and agree, to the best of Your knowledge without further investigation by You, that:
  6. You are the owner of all the Subject IP;
  7. the Subject IP does not infringe the Intellectual Property Rights of any third party; and
  8. You have advised the University of any information available to You which may alter sub-paragraph a. and b.
  9. The University will use its best endeavours to ensure that Your Moral Rights are observed. Nevertheless, You agree to waive, to the extent permissible at law, Your Moral Rights in respect of the Subject IP and voluntarily and unconditionally consent to the University or persons authorised by the University doing, or omitting to do, any act which would otherwise infringe Your Moral Rights in the Subject IP. This includes, but is not limited to:
  10. reproducing, publishing, communicating, performing or adapting the Subject IP without attributing its authorship to You;
  11. any alteration to or deletion from the Subject IP (including relocation, demolition or destruction of the Subject IP, whether or not the alteration to or deletion from is prejudicial to Your honour or reputation); or
  12. dealing in any way with the Subject IP which has been substantially altered, or reproducing the Subject IP which has been substantially altered, as Your unaltered work.

No Guarantees or Warranties

  1. Both Parties acknowledge that Commercialisation of Intellectual Property Rights, including the Subject IP, is often uncertain and that the University gives no guarantees or warranties and makes no representations regarding the success or otherwise of the Commercialisation of the Subject IP.

Termination

  1. The University may elect at any time not to become involved in, or not to continue, the Commercialisation of the Subject IP. This election will be notified to You in writing and the agreement set out in this Deed will be terminated with immediate effect from the date of that notification.
  2. Either Party may terminate the agreement set out in this Deed by notice in writing served upon the other if:
  3. one Party is in default of any obligation contained in this Deed;
  4. such default has continued for not less than 14 days;
  5. the non-defaulting Party serves upon the defaulting Party notice in writing requiring the default to be remedied within 30 days of the date of such notice, or such greater number of days as the non-defaulting Party may in its discretion allow; and
  6. the defaulting Party shall have failed to comply with the notice referred to in sub-paragraph c;

and in that event, this Deed terminates upon the expiration of the period referred to in the notice given pursuant to sub-paragraph c.

  1. The effect of termination under either Clause 15 or 16 is that the University assigns all rights, title and interest in the Subject IP to You, effective from the advised date of termination.
  2. Despite the termination of the agreement set out in this Deed, the obligation under Clause 4 continues to apply in perpetuity.

Other Matters

  1. Each Party will bear their own costs of preparing, negotiating and executing this Deed.
  2. All fees, costs and expenses associated with registration, protection and prosecution incurred by the University will be borne by the University, including the costs of obtaining the grant of Deeds patent in respect of any patent application comprised in the Subject IP.
  3. All stamp duty and other similar governmental charges payable in respect of this Deed are payable by the University.
  4. Any personal tax implications (such as income tax and capital gains tax) that may arise in respect of this Deed are payable by You.
  5. This Deed is governed by the laws of the State of Queensland in Australia and the parties agree to submit to the exclusive jurisdiction of the courts of the State of Queensland in respect of any dispute arising in connection with this Deed.
  6. No rights under this Deed will be deemed to be waived except where the waiver is in writing and signed by both Parties. A waiver by a Party will not prejudice that Party's rights in respect of any subsequent breach of this Deed. Any failure by either Party to enforce any clause of this Deed, any forbearance, delay, or indulgence generated by either Party to the other will not be construed as a waiver of rights under this Deed.
  7. The contents of this Deed constitutes the whole agreement between the Parties with respect to its subject matter, and supersedes all prior representations, agreements or understandings between the Parties in respect of that subject matter.
  8. All formal notices under this Deed may be delivered by hand, mail, fax or email to the contact representative set out in Items 3 or 4 of Schedule 2, or another address notified in writing by the relevant Party.
  9. No variation to this Deed will be effective unless in writing and signed by both Parties.

SCHEDULE 1: Definitions

In this Deed:

“Commercialise” or “Commercialisation” means to manufacture, sell, hire or otherwise exploit for financial gain or otherwise a product, process or information, or to provide a service, or to license, sub-license, joint venture or make any other similar arrangement with any third party to do any of those things.

“Deed” means this Deed and all schedules to this Deed.

“Improvements” means:

  1. all developments of, improvements to, additions to or alterations to the Subject IP (whether made before or after the date of this Deed);
  2. made or contributed to by You or pursuant to Your directions; and
  3. which do not satisfy the requirements for the grant of a separate patent in Australia.

“Intellectual Property Rights” means all intellectual property rights including, without limitation patents, patentable and non-patentable inventions or discoveries (together with field/laboratory notebooks, papers, biological materials, manner, methods or processes of manufacture or construction, chemical compositions or formulations relating to such patents, inventions or discoveries); Registered and unregistered designs; Plant breeder’s rights; Topographies, databases, computer software (including source code, firmware, courseware and related material), works generated by and/or with computer equipment or software; Copyright (including future copyright); Registered and unregistered trade marks; Trade secrets; Know-how; Eligible layout or design (or other exclusive rights in relation to any integrated circuit or semiconductor chip); the right to have confidential information kept confidential; and any related rights (including the right of registration or application for registration) throughout the world.

“IP Policy” means the Griffith University’s Intellectual Property Policy and Griffith University’s Intellectual Property Procedures (as amended from time to time).

“Moral Rights” means the right if integrity of authorship (that is, not to have a work subjected to derogatory treatment), the right of attribution of authorship of a work, and the right not to have authorship of a work falsely attributed, which rights are created by the Copyright Act 1968 (Cth), and if the works are used in any jurisdiction other than Australia, any similar right capable of protection under the laws of that jurisdiction.

“Party” means a party to this Deed. “Parties” means all parties to this Deed.

“Patents” means the patents and patent applications listed in Item 2 of the Schedule.

“Protect” or “Protection” means the registration, filing and prosecution of Intellectual Property Rights covering the Subject IP, including the right to bring infringement proceedings and recover damages for infringements of the Subject IP, whether such infringements took place before or after the date upon which the last Party signed this Deed.

“Subject IP” means:

  1. the Intellectual Property Rights subsisting within the Subject IP identified in Item 1 of Schedule 2;
  2. the Patents, including all patent applications associated with sub-paragraph a;
  3. any discoveries, invention, know-how and trade secrets associated with sub-paragraphs a and b; and
  4. any Improvements to sub-paragraphs a, b and c made by You,

but excludes the copyright subsisting in any student thesis that may contain any of the above.

“University” means Griffith University, established pursuant to the Griffith University Act 1998 (Qld).

SCHEDULE 2: Details

Item 1 / Subject IP / [ insert details of Intellectual Property being assigned to the University]
(ie. All Intellectual Property Rights in the Patents
Or
All Intellectual Property Rights created by You in relation to your investigation and research into [give a brief description of the research/technology/program/item being assigned to the University]
Item 2 / Patents / [insert details of each patent application or granted patent – include country of filing, patent/patent application No., title of patent/patent application, date of filing - being assigned to the University]
Item 3 / University's Address / Director, Griffith Enterprise
Griffith University
Nathan campus
170 Kessels Road,
Nathan QLD 4111
Phone:07 3735 5489
Fax:07 3735 5516
Email:
Item 4 / Your Address / [INSERT CONTACT NAME]
[INSERT ADDRESS]
Phone:
Fax:
Email:

Commercialisation Opportunity – Assignment of Intellectual Property DeedPage 1

EXECUTED as a deed

SIGNED sealed and delivered)

by GRIFFITH UNIVERSITY)……………………………………..

In the presence of:)Signature

……………………………………...Nicholas Mathiou

Signature of WitnessDirector, Griffith Enterprise

……………………………………...…………………….………………..

Name of Witness (print)Date

Commercialisation Opportunity – Assignment of Intellectual Property DeedPage 1

SIGNED sealed and delivered)

By [Insert full name of Academic])……………………………………..

In the presence of:)Signature of [Insert full name of Academic]

……………………………………...…………………….………………..

Signature of WitnessDate

……………………………………...

Name of Witness (print)