Common use of Guidance Note for clause 11 Clause in Contracts

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 adequacy or completeness of searches that have been undertaken and in particular the Licensee acknowledges that: any searching undertaken by the Licensor cannot be held to a standard or quality applicable to professional patent attorney searches unless such searches were expressly required in item 7 of the Details Schedule; any opinions or inferences drawn by the Licensor from any searches undertaken cannot be held to constitute validity or infringement opinions of a standard or quality applicable to professional patent attorneys or patent lawyers unless such opinions or inferences were expressly required to be obtained by the Licensor in item 7 of the Details Schedule; and it is not reasonably possible to conduct meaningful targeted searches (including patent infringement searches) in the absence of a clearly defined product or process to search in respect of; or that Commercialisation of the Licensed IPR in particular applications or in conjunction with other enabling technology components, in accordance with a particular method of treatment or in accordance with a particular method of manufacture will not require additional licences or infringe the IPR of third parties; the use of the Licensed IPR and its Commercialisation in accordance with the Licence will not infringe any copyright; and the Licensor has not breached any past or current existing confidentiality obligations relating to any part of the Licensed IPR and there are no existing encumbrances or prior rights of third parties either preventing future authorised disclosure of such Confidential Information or requiring the Licensee to obtain prior consent to use or disclose such Confidential Information.

Guidance Note for clause 11. 23: 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. Acknowledgements The template position is Licensee acknowledges and agrees that the Licensor provides warranties except 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 expressly provided in this Agreement: 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 made, 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 does not by the scope of the representations and warranties provided in entering into 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 licencesAgreement make, 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 adequacy or completeness of searches that have been undertaken and in particular the Licensee acknowledges that: any searching undertaken by the Licensor cannot be held to a standard or quality applicable to professional patent attorney searches unless such searches were expressly required in item 7 of the Details Schedule; any opinions or inferences drawn by the Licensor from any searches undertaken cannot be held to constitute validity or infringement opinions of a standard or quality applicable to professional patent attorneys or patent lawyers unless such opinions or inferences were expressly required to be obtained by the Licensor in item 7 of the Details Schedule; and it is not reasonably possible to conduct meaningful targeted searches (including patent infringement searches) in the absence of a clearly defined product or process to search in respect of; or that Commercialisation of the Licensed IPR in particular applications or in conjunction with other enabling technology components, in accordance with a particular method of treatment or in accordance with a particular method of manufacture will not require additional licences or infringe the IPR of third parties; the use of the Licensed IPR and its Commercialisation in accordance with the Licence will does not infringe any copyrightthird party's IPR; and the Licensor does not make and has not breached made any past representation or current existing confidentiality obligations relating warranty in relation to whether any part valid patent will be granted or granted with the Claims sought; the Licensee exercises the rights granted under this Agreement to the Licensed IPR at its own risk and will make its own inquiries to determine that its Commercialisation of the Licensed IPR and there are no existing encumbrances or prior rights of any Product based on the Licensed IPR will not infringe any third parties either preventing future authorised disclosure of such Confidential Information or requiring party's IPR; 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 obtain prior consent 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 or disclose such Confidential Informationby third parties; and it will act in good faith in the exercise of the Licence to the Licensed IPR.