Negotiating Intellectual Property in Partnerships

Negotiating intellectual property in partnerships

3.05-3.50pm Friday 10 August 2007

VIP Room, Level 1, Bay 8, AustralianTechnologyPark

David Fischl, partner Hicksons
Sam Meredith, Manager Online Projects, TAFE NSW New England Institute

Excerpts from Collaboration Agreement

1.Intellectual Property

1.1Pre-existing IP No party’s Pre-existing IP is assigned or otherwise transferred to the other.

1.2Project IP Each party will own the Project IP they create.

The parties must tell each other about and give each other copies of the Project IP they create. They must also give all other information the other needs to understand and use it including any source code.

1.3TAFE education and research The Partner gives TAFE a non-exclusive, world-wide licence to use:

(1)Project IP its Project IP;

(2)Partner’s Pre-existing IP itsPre-existing IP that is part of anything it gives TAFE; and

(3)Commercial product any product, that includes either party’s Project IP, that the Partner makes commercially available,

for internal use including TAFE non-commercial education and TAFE research.

TAFE must ensure that its personnel, who come into contact with the Partner’s Project IP or Pre-Existing IP, are made aware of the terms of this licence.

1.4Register, maintain & prosecuteProject IP Each party, at is discretion, will (at its cost) be responsible for registering, maintaining and prosecuting its Project IP.

Each party must also:

(1)assist give the other (at its own cost) any reasonable assistance it asks for about these matters;

(2)consult consult the other about these matters; and

(3)inform tell the other if it finds out about any actual or apparent infringement of either’s Project IP or if anyone asserts or claims that either’s Project IP infringes anyone’s IPRs.

2.Commercialisation

A party must who wants to use the other’s Project IP in a commercial arrangement with a 3rd party must:

(1)approval first get the other’s approval;

(2)information give the other any information it reasonably asks for to assist its decision;

(3)involvement use reasonable efforts to find and negotiate a way for the other to be involved, if it would like to be involved;

(4)terms of use if approval is given then the party:

(a)licence will have a non-exclusive, non-transferable licence to use the other’s Project IP for that arrangement;

(b)royalty mustgive the other 30% of the cash it and its Affiliates receive from licensing any part of the other’s Project IP. (If it wants to commercialise by any way other than licensing it must first agree the other’s fair and reasonable return.);

(c)payment must pay the royalty within 14 days of the end of the month it is received. Interest will accrue on late payments, calculated daily, at 3% p.a above the RBA Cash Rate Target;

(d)records must keep records of the arrangement and its commercialisation of theProject IP in sufficient detail forthe otherto work out if it has been paid correctly. It must give the other copies of anything it reasonably asks for within 7 days;

(e)insurance must get and maintain with a financially strong and reputable insurance carrier:

(i)a products liability insurance policy with coverage for at least $10,000,000 per occurrence which includes professional liability protection; and

(ii)a commercial general liability insurance policy covering bodily injury and property with coverage for at least $10,000,000 per occurrence; and

(f)other must comply with any other terms given with the approval.

The parties may agree to change these terms for individual arrangements.

Excerpts from Materials and Services Agreement

3.Intellectual Property

3.1TAFE to own The Supplier will ensure that any IPR’s in the Materials and Services are assigned to TAFE on creation.

The Supplier must fairly disclose those IPR’s to TAFE.

3.2Pre-existing IPR

(1)no transfer Unless otherwise expressly stated in this agreement no party’s Pre-existing IPR is assigned or transferred.

(2)licence if in Materials The Supplier grants TAFE a perpetual, worldwide, non-exclusive licence to do the following with any Supplier Pre-Existing IPR that forms part of the Materials:

(a)use, reproduce adapt, distribute and communicate; and

(b)all such other things TAFE may need to exercise its rights under this agreement.

3.3Personal rights The Supplier consents to, and will procure that the relevant author(s) consent(s) to:

(1)any use of the Materials and Services without identifying the Supplier or the author;

(2)doing anything with the Materials and Services which would otherwise infringe the Supplier or authors’ moral or personal rights;and

(3)allow TAFE full use and quiet enjoyment of the Materials and Services.

3.4IPR Indemnity The Supplier indemnifies TAFE against all claims, losses, liabilities, expenses, damages and costs arising out of a claim that the Materials or Services infringes anyone’s IPR’s.

Without prejudice to TAFE’s rights, if there is such a claim, the Supplier must, as soon as practicable, either:

(1)get TAFE a continuing lawful right to use the Materials or Services; or

(2)replace or modify the Materials or Services to stop it infringing with equivalent functionality and performance according to the Specifications.

The Supplier will not be liable under the indemnity to the extent a claim arises from TAFE modifying the Materials.

4.Materials that are software

If the Materials include software:

(1)warranty the Supplier warrants that the software will:

(a)not contain any virus or code designed to allow access to it or TAFE’s systems without TAFE’s permission or disrupt their normal use; and

(b)be able to store and correctly process date related information without manual intervention subject to the Specifications.

(2)source code the Supplier must, with delivery of the software, give TAFE:

(a)the source code version of the software; and

(b)any materials reasonably needed to compile, correct or maintain the Software including the Documentation.

(Note Special Terms wording in the Agreement if required:‘The Supplier will own any IPR's it creates in the Materials and Services. TAFE will have a perpetual, worldwide, non-exclusive licence to do anything it likes with those IPR'sincluding use, reproduce, adapt, distribute and communicatethem.’)

References

New South Wales Technical and Further Education Commission by its New England Institute(NEI) 2007,Collaboration Agreement. (Produced by David Fischl, Partner Hicksons Lawyers under contract to NSW DET Legal Services Unit and NEI)

New South Wales Technical and Further Education Commission by its New England Institute (NEI) 2007, Materials and Services Agreement. (Produced by David Fischl, Partner Hicksons Lawyers under contract to NSW DET Legal Services Unit and NEI)