Common use of Intellectual Property (IP) Clause in Contracts

Intellectual Property (IP). 6.1. The Charity and the Host Institution agree that all rights, title and interest in or to any information, data, reports, documents, procedures, forecasts, technology, know-how and any other intellectual property rights whatsoever owned by the Charity or the Host Institution prior to the period of grant shall remain the property of that party. 6.2. All intellectual property rights arising as a result of activity funded by the grant (the ‘IP Rights’) shall, in the first instance, vest in the Host Institution. The Host Institution shall be responsible for ensuring that contracts of employment and other such terms of engagement relating to the research personnel provide for automatic and immediate vesting in the Host Institution of the IP Rights. 6.3. The Host Institution undertakes that it shall not enter into any arrangement with another funder, sponsor or other person or body relating to the Research, such that any third party shall have any proprietary interest in the IP Rights, without the prior written approval of the Charity. 6.4. The Charity is under an obligation to ensure that the useful results of research that it funds (whether in whole or in part) are applied for the public good. In some circumstances, this obligation may be best achieved through the protection of intellectual property and commercial exploitation. The Host Institution must also prioritise the delivery of public benefit, with no excessive private or personal benefit. 6.5. None of the IP Rights may be exploited, sold, assigned or otherwise be disposed of or purported to be disposed of, without the prior written agreement of the Charity (such agreement not to be unreasonably withheld or delayed). The Charity will only refuse the Host Institution’s request where it considers that the proposed commercial exploitation would run counter to its interests and charitable objectives. 6.6. The Host Institution must have procedures in place for the identification, protection, management and exploitation of the IP Rights. As a condition of granting consent, the Charity will require the Host Institution to accept the standard revenue and equity sharing terms of the Charity. 6.7. The Charity’s standard revenue and equity sharing terms include the provision that all revenue received from the commercial exploitation of the IP Rights, after legal costs, any applicable taxes and other incidental expenses incurred directly in connection with the exploitation of the IP Rights (‘Net Revenue’) shall be divided equally between the Charity and the Host Institution. The party responsible for the exploitation shall account to the other party for its share of the Net Revenue on a quarterly basis in pounds sterling to the bank account nominated by that party. 6.8. If any third parties pay costs for the Research, which are included in the total cost of any Research which is funded in whole or in part by the grant, then the Charity’s amended share of the Net Revenue shall be calculated on the same percentage as the grant represents, as a percentage of the total costs of the Research. 6.9. The Host Institution must notify the Charity promptly in writing when IP Rights that may be of medical or commercial value arises from the Research, including full details of the nature and relevant commercial potential of the IP Rights. 6.10. The Host Institution must notify the Charity of the proposed terms of any exploitation of the IP Rights arising from the Research and provide regular updates on the progress of negotiations between the Host Institution and all relevant third parties. 6.11. Consideration must be given by the Host Institution to the need to protect the IP Rights prior to any publication or public presentation of Research results. 6.12. The Host Institution must deliver, at least annually, an exploitation report detailing the commercialisation activities for that year to the Charity, including but not limited to, details of all patent applications filed, and other protection sought as well as details of any protection obtained for the IP Rights. 6.13. The Host Institution must arrange and hold commercialisation update meetings at least once every six months, or as otherwise agreed with the Charity. 6.14. If the Host Institution does not protect, manage or exploit the IP Rights arising from the grant to the Charity’s satisfaction, the Charity shall have a right but not a duty, to protect, manage and exploit the IP Rights. If the Charity decides to exercise its right, the Host Institution shall procure that its employees, students and any third parties acting on its behalf carry out all acts reasonably required by the Charity to assist the Charity in such protection, management and exploitation. 6.15. The Host Institution and the research personnel shall co-operate fully with the Charity on all matters relating to the IP Rights.