Guidance Note for clause 5. 2: The Commercialisation Business Plan is a separate document (not attached to this Agreement). It should be agreed by the parties prior to the Commencement Date, and should set out more detail of the process that will be used to Commercialise the Licensed IPR.
Guidance Note for clause 5. 3: Performance Criteria are intended to be clear, measurable achievements. This clause seeks to balance the consequences of failing to meet the Performance Criteria for both the Licensee and Licensor. Often the reason for failing to meet Performance Criteria is complex. Accordingly, the clause reflects a process to manage Licensee performance fairly. The initial consequences of a failure to meet the Performance Criteria are management actions that can be initiated by the Licensor (see clause 5.3(b)) to seek to explore why there has been a failure. If the management of these failures does not resolve the issues, the onus can be placed on the Licensee (see clause 5.3(c)) to either give up rights to the Licensed IPR, put in place mitigations, or compensate the Licensor for the revenue they would have otherwise obtained. Further guidance on the Performance Criteria is included in Schedule 4. The Licensee must, in Commercialising the Licensed IPR, throughout the Term to the extent permitted by any Licence, carry out the Commercialisation Business Plan. Consequences of failure to achieve Performance Criteria The Performance Criteria have been agreed in recognition of the circumstances of the Agreement and the parties' intentions for Commercialisation of the Licensed IPR. Without limiting the obligations in this clause 5, if at any time for which there are applicable Performance Criteria, the Licensee fails to achieve the Performance Criteria: the Licensor may send the Licensee written notice asking them to identify the reason that the Performance Criteria were not met, and the steps being taken to ensure the Performance Criteria are able to be met for future periods. The Licensee must respond to such request within 20 Business Days of receipt; and if the Licensor is not satisfied with the Licensee's response, the Licensor will offer to meet with the Licensee to discuss in good faith the reasons the Performance Criteria were not met, as well as any proposed adjustments to the Performance Criteria, or other measures that could ensure future performance in accordance with the Performance Criteria. If following the process set out in clause 5.3(b), the Licensee again fails to meet the Performance Criteria as they apply in any subsequent period for measurement of the Performance Criteria, the Licensor may require that the Licensee to: either, at the Licensee's option: pay any deficit in the Fees as a result of the Performance Criteria not being met, being the differe...
Guidance Note for clause 5. Where the Licensee is granted a Commercialisation right, it is important that the Licensee exercises this right in a way that maximises the Fees and promotes the Products incorporating the Licensed IPR. The specific performance measures relevant to the transaction can be agreed by the parties in Schedule 4. These measures should reflect the intentions of the parties, including recognising that this template is granting exclusive rights. See further the guidance in Schedule 4. Performance
Guidance Note for clause 5. 5: This Agreement requires each party to provide IPR to the other party (for example, material, data, products) to undertake the Project and this clause requires the party providing the IPR to promise to the other party that, as far as it is aware, that it has the rights to provide the IPR on the terms of this clause 5. Universities should note that the warranty will apply to any IPR developed by Students that the University is required to license to the Collaborator.
Guidance Note for clause 5. There is no right for either party to amend the Performance Criteria, but the template encourages discussion and collaboration to ensure these remain appropriate. At the request of either party, the parties will meet in good faith to review and discuss the Performance Criteria to ensure they remain appropriate and within the reasonable ability of the Licensee to achieve. Any amendment to the Performance Criteria must be agreed in accordance with clause 19.4.
Guidance Note for clause 5. 3: At the end of the Agreement, the University must destroy or return Collaborator Material either as specified in the Project Plan or as directed by the Collaborator. In providing Material, the Collaborator should be aware that this Material may be altered, damaged or destroyed as a result of the Project.
Guidance Note for clause 5. This clause makes it the Assignee's responsibility (and at its cost) to notify IPR registers of the transfer of the IPR in the Property.
Guidance Note for clause 5. 2: This clause clarifies that if the Collaborator is required to provide Collaborator Material for the Project, the University does not need to commence or continue a part of the Project until the Collaborator provides the Material needed for that part. The Material provided by the Collaborator must be safe and suitable for the Project. University’s receipt and use of Collaborator Material
(a) Where the Collaborator is required to provide Collaborator Material for the conduct of the Project, the University is not obliged to commence or continue the part of the Project for which the relevant Contribution Material relates until:
(i) the Collaborator has provided the relevant Collaborator Material; and
(ii) the University has completed an assessment to confirm the Collaborator Material is safe and suitable for the purposes of the Project.
(b) The Collaborator must at its own cost replace any of the Collaborator Material that the University reasonably determines to be unsafe or unsuitable for the purposes of the Project.
(c) The Collaborator grants the University a non-transferable, non-exclusive, royalty free licence to Use the Collaborator Material (including any IPR in the Collaborator Material) for the purposes of carrying out the Project.
Guidance Note for clause 5. 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 item 9 of the Details Schedule 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). Intellectual Property Rights management
Guidance Note for clause 5. 2: This clause allows the parties to specify the Owner and Licensee of the IPR in Project IP in the Details Schedule (see items 7 and 8 of the Details Schedule). The licence granted under these clauses allows the Licensee to Use the Project IP for the Purpose (refer to clause 1 definition of 'Use' and item 10 of the Details Schedule).
