Guidance Note for clause 10. 1: This clause requires a party that becomes aware of one of the relevant circumstances to promptly notify the other party. Each of these circumstances relates to third party actions that potentially infringe the Licensed IPR, or challenge the Licensor or Licensee's rights to the Licensed IPR. Notice of infringement Each party must give the other prompt written notice if it becomes aware of a third party:
(a) infringing or threatening to infringe the Licensed IPR, including where a third party is Commercialising or threatening to Commercialise technology that falls within the scope of a Claim;
(b) challenging the validity of the Licensed IPR;
(c) using or disclosing, or threatening to use or disclose Confidential Information relating to the Licensed IPR, or any other Confidential Information, in a way that impacts on the other party's rights under this Agreement; or
(d) taking action or threatening to take action on the basis that the Licensed IPR or a Product infringes the rights of the third party.
Guidance Note for clause 10. 7: This clause requires both parties to complete documents that are needed to give effect to the IPR licences. For example, if an assignment deed is required to be completed by a party to provide the Owner ownership of the IPR in the Project IP. Further action Each party will execute such documents or instruments, and do all other things reasonably required by the other party, in order to give effect to the parties' agreement and the rights in this clause 10.
Guidance Note for clause 10. 4: This clause identifies that a reduction in the Fee may be appropriate. However, this will not always be appropriate and the reduction may not equal the amount of the payments being made. There may also be contribution required from the Licensee, or by other third parties. Payment to a third party If the parties have exhausted all avenues to defend any third party infringement claim or challenge to the validity of the Registrations or the Registration Applications, the result being that the Licensee must pay a third party royalties, damages or an account of profits in connection with any part of the Licensed IPR, the parties will negotiate in good faith and seek to agree a reasonable reduction to the Fees to reflect any reduction in value to the Licensee of the Licensed IPR.
Guidance Note for clause 10. 4: This clause identifies that a reduction in the Fee may be appropriate. However, this will not always be appropriate and the reduction may not equal the amount of the payments being made. There may also be contribution required from the Licensee, or by other third parties.
Guidance Note for clause 10. 2: This clause preserves the Licensor's rights to commence and manage relevant proceedings, while requiring them to confer with the Licensee, and requiring the Licensee to provide assistance at the Licensor's cost. Proceedings or other action The parties will confer as to what steps, if any, are to be taken against any person infringing the Licensed IPR or in relation to the circumstances set out in clauses 10.1(b) or 10.1(d). The Licensor will not be bound to commence or join in any Legal Proceedings in respect of any matter referred to in clause 10.1. If the Licensor institutes proceedings, then the Licensee will provide, at the Licensor’s expense, all reasonably necessary assistance in relation to the proceedings. Notwithstanding the foregoing in this clause 10.2, the Licensor will at all times have the right to institute legal or other proceedings against any person or body responsible for any matter referred to in clause 10.1 whenever in the sole opinion of the Licensor it may be necessary or desirable to do so. This clause 10 does not limit any rights a party might have against the other for a breach of this Agreement.
Guidance Note for clause 10. 3: This clause recognises the Licensor's interest in controlling and managing actions involving the Licensed IPR. It restricts the ability of the Licensee to defend or settle legal proceedings, without providing the Licensor an appropriate opportunity to handle such negotiations and settlement. Defence of actions Subject to clause 10.3(b), the Licensee must not defend or settle any Legal Proceedings relating to the Licensed IPR without: notifying the Licensor in accordance with clause 10.1; providing the Licensor with at least 10 Business Days in which to elect, at the Licensor's option and expense, to handle all negotiations for settlement of the Legal Proceedings and, as permitted by law, to control and direct any settlement negotiation or the conduct of any litigation, provided that: the Licensor agrees to indemnify the Licensee in respect of costs and liabilities incurred by the Licensee from the conduct and the outcome of the Legal Proceedings and any settlement (without prejudice to any liability by either party under this Agreement or otherwise), and including amounts payable to any third party, and the Licensee's own remaining reasonable expenses from the conduct of the Legal Proceedings on an indemnity basis; the Licensor keeps the Licensee fully informed of such proceedings; and if the Licensee is a government entity, the Licensor agrees to comply with government policy and obligations, relevant to the conduct of the litigation and any settlement negotiation (including as applicable the Legal Services Directions 2017 and any direction issued by the Attorney General to the Commonwealth or delegate), and the Licensee must provide all reasonable assistance and information to the Licensor where the Licensor elects to handle the proceedings under clause 10.3(a)(ii); and keeping the Licensor informed of any significant developments relating to the conduct of the defence or settlement of any claim. Nothing in clause 10.3 prevents the Licensee from taking steps in response to any application for urgent injunctive or other relief in Legal Proceedings relating to the Licensed IPR, pending the election of the Licensor under clause 10.3(a)(ii).
Guidance Note for clause 10. 2: The University may Use the Collaborator's Pre-existing IPR to perform the Project. If the University's Use of the Collaborator's Pre-existing IPR is to be subject to certain conditions (for example, the Pre-existing IPR can only be used in Australia), these should be specified in section 2 of Schedule 3. Right to use the Collaborator's Pre-existing IPR
(a) The Collaborator grants to the University a royalty-free, world-wide, non-transferable, non-exclusive licence to Use the Collaborator Pre-existing IPR for the sole purpose of and only to the extent necessary to exercise the University's rights to the Project IP for the Purpose.
(b) Subject to clause 10.2(d), the Collaborator warrants that:
(i) it owns or is otherwise entitled to grant to the University the right to Use Collaborator Pre-existing IPR (and any other information provided to the University) in accordance with this Agreement; and
(ii) to the best of its knowledge and belief (having made reasonable enquiry of those of its Personnel involved in the Project or likely to have relevant knowledge), the University’s use of Collaborator Pre-existing IPR to carry out the Project (in accordance with this Agreement) as at the time such material is provided to the University by the Collaborator, will not infringe any third party’s rights (including IPR).
Guidance Note for clause 10. 3: This clause set out that the Collaborator may Use the University's Pre-existing IPR that is included in the Project IP for the Purpose (refer to section 3 of Schedule 3). If the Collaborator's Use of the University's Pre-existing IPR is to be subject to certain conditions (for example, the Pre-existing IPR can only be used in Australia), these should be specified in section 2 of Schedule 3. Right to use the University's Pre-existing IPR
(a) The University grants to the Collaborator a royalty-free, world-wide, non-transferable, non-exclusive licence to Use any University Pre-existing IPR in the Project IP for the sole purpose of and only to the extent necessary to exercise the Collaborator's rights to the Project IP for the Purpose.
(b) Subject to clause 10.3(d), the University warrants that:
(i) it owns or is otherwise entitled to grant to the Collaborator the right to Use University Pre-existing IPR in accordance with this Agreement; and
(ii) Guidance Note for clauses 10.3(c) and 10.3(d): These clauses require the University to promise that no entity or person has started or is intending to start a law suit against the University, in relation to the University's Pre-existing IPR. However, the University's legal exposure is limited by clause 10.3(d). The University does not provide any assurance if the Collaborator uses the University's Pre-existing IPR in a way that is not expressly permitted by the description of the Purpose or if the Collaborator combines the University's Pre-existing IPR with other methods or components (for example, the Collaborator incorporates an existing University method into its manufacturing line and this has not been expressly permitted by the Agreement or Project Plan). to the best of its knowledge and belief (having made reasonable enquiry of those of its Personnel involved in the Project or likely to have relevant knowledge), the Collaborator's use of University Pre-existing IPR in accordance with this Agreement will, as at the time such material is provided to the Collaborator by the University, not infringe any third party’s rights (including IPR).
(c) The University warrants that there are no actions, claims or proceedings pending or threatened against the University in respect of its University Pre-existing IPR.
(d) The University does not make any representation or warranty, express or implied, that Use of the University Pre-existing IPR, will not require additional licences, or will not infringe the IPR of third par...
Guidance Note for clause 10. 4: This clause applies if a party proposes to use Third Party IPR for the Project. Third Party IPR will likely have licensing arrangements that are different (and typically more limited) compared to the licensing arrangements for the Project IP under the Agreement. For example, the Licensee can modify or adapt the Project IP, which is often prohibited for Third Party IPR. If Third Party IPR will be used, the Third Party IPR must be listed in section 7 of Schedule 3, together with any restrictions on the use of that Third Party IPR. The party proposing to use the Third Party IPR must purchase the necessary licence for the other party. If during the Project, the parties need to use Third Party IPR that is not identified in section 7 of Schedule 3, the parties can amend this section, in accordance with clause 24.6 of this Agreement.
Guidance Note for clause 10. 8: This clause prevents either party from using the other party's name or logo without the other party's consent. For example, the Collaborator cannot use the University's logo on its website without the University's prior written consent. Use of the party's name and acknowledgement
(a) Except with a party's prior written consent, the other party must not use that party's name:
(i) in a manner that suggests that the party endorses or is associated with the other party's business, products or services; or
(ii) in any publication or promotional material.
(b) A party must not use the other party's logo or branding without prior written consent of an authorised representative of the other party.
(c) Each party must acknowledge the other party's contribution in any publication that refers to the Project IP in accordance with any requirements or restrictions specified in item 9 of the Details Schedule.
