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
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:
Guidance Note for clause 10. 2: In the case of an 'exclusive' licence, it is important that the parties have agreed how to manage any Legal Proceedings in relation to the Licensed IPR. The IPR Management Plan should set out the agreed process for both initiating Legal Proceedings, and for defending or settling Legal Proceedings initiated by third parties. It will usually be agreed that the Licensee will be given control over these proceedings (in order to protect their exclusive interest). However, this is usually subject to the process and conditions. There may also need to be further agreement as to how this aspect is managed if there is cross-over with IPR licenced on a non-exclusive basis, or in other Fields/Territories. Proceedings or other action
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. 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
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. 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 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. 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.
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.
