Guidance Note for clause 11. 3: To the extent permitted by law, this clause excludes any additional warranties, terms or conditions that may otherwise be implied by law into the Agreement. However some conditions, such as those implied by legislation, cannot be excluded by this clause. This may include warranties about goods and services under the Australian Consumer Law.
Guidance Note for clause 11. 1: This clause sets out the general representations and warranties that the parties make to each other with respect to entering into the Agreement. Warranties and liability
Guidance Note for clause 11. 4: Where Party A is liable to Party B under this Agreement, Party A's liability is reduced to the extent that Party B contributed to any loss it suffered. For example, Party B may have been negligent and contributed to its loss.
Guidance Note for clause 11. 2: The template position is that the Licensor provides warranties as to non-infringement of IPR based on their knowledge, but that otherwise the Licensee exploits the licensed technology at its own risk. The template states that the Licensor has not conducted searches. The Licensee must make its own "freedom to operate" searches. Often there may have been specific searches conducted / required and the parties may need to further negotiate the types of warranties (and potential indemnities) that should be included and set out in the Details Schedule. The Licensee also releases and indemnifies the Licensor in clause 12.1 against claims from third parties arising from its exercise of rights - including to Commercialise the IPR. The Licensor's reciprocal indemnity is limited by the scope of the representations and warranties provided in this clause. Where these warranties in clause 11.2 are not appropriate to the transaction the parties should agree to amend this clause. No item exists in the Details Schedule for this purpose as any amendment would become very complex and appropriate legal advice should be sought before altering this position. Licensor non-infringement warranties The Licensor represents and warrants that at the Commencement Date:
Guidance Note for clause 11. 3: This clause sets out the process to be undertaken in the unlikely event that a party becomes aware that any IPRs relevant to the Project are being infringed by a third party or a third party claims its IPRs are being infringed. Any potential or claimed infringements that a party becomes aware of must be reported to the other party and the parties will discuss and agree the steps, if any, to be taken. This clause survives the termination or expiry of the Agreement (see clause 24.12). Infringement and enforcement of IPR
Guidance Note for clause 11. 5(a): This clause limits the amount of financial exposure each party faces in the event a lawsuit is filed or another claim is made by the other party. The parties can agree to cap the total amount that a party may be liable to pay to the other party for loss suffered in relation to this Agreement. This cap should be set out in item 8 of the Details Schedule. Liability cap The aggregate liability of each party for loss suffered or incurred by the other party arising out of or in connection with this Agreement (including under an indemnity) however caused whether in tort (including negligence), contract, statute, equity or otherwise is, subject to clause 11.5(b), to the full extent permitted by law limited to the amount specified in item 8 of the Details Schedule. Guidance Note for clause 11.5(b): The liability cap specified in item 8 does not apply to the types of liability listed in this clause 11.5(b). This means that the liability of each party for these types of claims is unlimited. These types of liability are typically unlimited in commercial arrangements because it is difficult to quantify (for the purposes of determining a liability cap) the losses that can arise from such claims. Any limit on or exclusion of the liability of each party under clause 11.5(a) does not apply in relation to liability for: personal injury (including sickness or death); an infringement of Third Party IPR to the extent within the indemnity in clause 12.1; a breach of any obligation of confidentiality; or wilful default or fraud.
Guidance Note for clause 11. 2: The template position is that the Licensor provides warranties as to non-infringement of IPR based on their knowledge, but that otherwise the Licensee exploits the licensed technology at its own risk. The template states that the Licensor has not conducted searches. The Licensee must make its own "freedom to operate" searches. Often there may have been specific searches conducted / required and the parties may need to further negotiate the types of warranties (and potential indemnities) that should be included and set out in the Details Schedule. The Licensee also releases and indemnifies the Licensor in clause 12.1 against claims from third parties arising from its exercise of rights - including to Commercialise the IPR. The Licensor's reciprocal indemnity is limited by the scope of the representations and warranties provided in this clause. Where these warranties in clause 11.2 are not appropriate to the transaction the parties should agree to amend this clause. No item exists in the Details Schedule for this purpose as any amendment would become very complex and appropriate legal advice should be sought before altering this position. Licensor non-infringement warranties The Licensor represents and warrants that at the Commencement Date: it has not granted any licences, options, encumbrances, security interests or other rights to any person in relation to any rights, title or interest in the Licensed IPR that are inconsistent with this Agreement; there are no actions, claims or proceedings pending or threatened against it or by it which may have a material effect on the subject matter of this Agreement; to the best of its knowledge the Licensed IPR is not being infringed by any third party (and in the case of patent applications comprised in the Licensed IPR, would not, if they were granted, be being infringed by any third party); the Licensed IPR are not subject to any actual oppositions, claims or actions by any third party; and to the best of its knowledge, no other licences or rights to any other IPR are required in order to permit Commercialisation of the Licensed IPR in accordance with the Licence, without infringement of the IPR of third parties, subject to the following: except as identified in item 7 of the Details Schedule, the Licensor does not, by making this representation and warranty, make any representation or warranty, express or implied: that the Licensor has undertaken any searches in respect of Third Party IPR or concerning the ade...
Guidance Note for clause 11. The registration and protection of IPR in the Project IP may include applying for patent or design registration, or taking legal action where someone has infringed the IPR. The parties can specify in section 4 of Schedule 3 whether the Licensee has the right to register or protect the IPR in the Project IP, and whether it can require the Owner to register or protect the IPR. The responsibilities of the parties to manage IPR are ongoing and continue to apply following the termination of this Agreement (and completion of the Project).
Guidance Note for clause 11. 2: This clause provides an initial position in relation to Commercialisation of IPR in Project IP that places obligations on the Owner of the Project IP. This approach is intended to balance the respective contributions of the parties to the Project, despite one party being the Owner of the Project IP. The University should be aware that where it owns the IPR in the Project IP, during the Commercialisation Option Period it will be prohibited from Commercialising the Project IP and, if requested by the Collaborator, the University must negotiate a reasonable commercial licence for the Collaborator to Commercialise the Project IP and any incorporated Pre-existing IPR. If the Collaborator is the Owner of the Project IP, the University may seek to negotiate a reasonable commercial licence to Commercialise the Project IP (and any incorporated Pre-existing IPR) following the expiry of the Commercialisation Option Period. If both parties consider that this approach is not appropriate for their particular Project, the parties can agree an alternative approach and specify it in item 10 of the Details Schedule. The parties acknowledge and agree that each party's Personnel:
Guidance Note for clause 11. 3(e): Clause 11.3(e) is a general obligation to act in 'good faith'. Failure by the Licensee to comply with this requirement is a material breach of the Agreement, entitling the Licensor to terminate the Licence. This obligation applies in addition to specific performance criteria or milestones. It requires consideration of the circumstances, rather than setting out specific criteria that must be met. If the parties are able to agree detailed and specific obligations that set out the Licensee's Commercialisation efforts exhaustively, it may be appropriate to also agree to remove this general obligation. to the full extent permitted by law, the Licensor has not made and excludes all warranties, terms, conditions or undertakings, whether express or implied, written or oral, statutory or otherwise (including any implied warranty of merchantability or of fitness for a particular purpose) for the Licensed IPR, Products or any other matter, including, without limitation, as to the suitability or safety of the Licensed IPR or the Products for use by third parties; and
