As defined in the attached Memorandum of Understanding, Parties may at their own discretion enter into legally binding research agreements to govern NBIPI projects. Parties may under the cover of a research agreement define terms under which IP generated will be owned, managed and commercialised. The following IP Principles are intended only as a guide and it is understood that separate IP terms may be agreed by parties, particularly in the case where industry partners become involved in an NBIPI project, or in the case of research projects which avail of funding from additional sources. It is the duty of each Party to ensure that appropriate research agreements are put in place which comply with any grant conditions where further funding has been received.
The objective of the IP Principles is to ensure proper management, protection and exploitation of IP that is generated from NBIPI projects.
1. BACKGROUND IP
1.1 DECLARATION OF BACKGROUND IP
Before the start of any collaboration between Parties, each of the participating parties will list the Background IP that each party will make available for use in the NBIPI project and state whether such declared background IP is subject to any third party licence agreements or third party rights. The parties shall also state whether the declared background IP is available for research purposes and/or commercialisation purposes and the terms on which it is to be made available for commercialisation purposes.
1.2 OWNERSHIP OF BACKGROUND IP
Ownership of declared background IP or in any other technology, design, work, invention, software, data, technique, know-how, or materials that are not foreground IP will remain the property of the party that contributes it to the NBIPI Project.
1.3 ACCESS RIGHTS TO BACKGROUND IP FOR RESEARCH PURPOSES
Each of the collaborating Parties will grant to each partner collaborating on a specific project a non-exclusive royalty free licence to its declared background IP for the purpose of carrying out the research as agreed under a NBIPI project.
1.4 ACCESS RIGHTS TO BACKGROUND IP FOR COMMERCIAL PURPOSES
Each of the parties grants the other participating parties within a NBIPI project, a non-exclusive, royalty-bearing licence to its declared background IP for commercial use in a defined field of use should the declared background IP be required to exploit Foreground IP arising from the project and provided they are contractually free to do so. The licence fee will be at market commercial terms.
2. FOREGROUND IP
2.1 OWNERSHIP OF FOREGROUND IP
Each Party will own the foreground IP that is solely developed by its researchers within a NBIPI project and may take such steps as it may decide, and at its own expense, to register and maintain any protection for the foreground IP, including filing and prosecuting patent applications for any of the foreground IP. ("Sole IP")
Each Party shall promptly disclose to its Technology Transfer office in writing any inventions, works, discoveries, creations or otherwise which are so invented, discovered or created in the performance of work done an NBIPI project and which may be considered foreground Intellectual Property. For the avoidance of doubt, any IP created by a Party should be managed by the owning Party, unless agreed otherwise.
In situations where foreground IP is jointly developed by two or more Parties then this foreground IP will be jointly owned. ("Joint IP"). The Parties agree to address issues relating to the management and exploitation of the joint IP under a joint ownership management agreement. Specifically, the Parties agree to nominate a lead Party who will be responsible for the management and commercialisation of the joint IP. Typically, the lead academic Party will be that party whose researchers made the greatest intellectual contribution to the Joint IP. The joint owners agree that they will divide revenues received under any licence broadly in accordance with their relative contribution to the development of the joint IP. The terms to be agreed under a JOMA are broadly defined in Appendix II hereto.
3. CONFIDENTIALITY AND IP ASSIGNMENT
Each Party will ensure that their students, staff members, consultants, employees, visiting academics, adjunct appointments, or any other person working on an NBIPI project execute appropriate confidentiality agreements before commencing any work in relation to NBIPI project
A template confidentiality agreement is set forth in Appendix III of these IP Principles. It will be the responsibility of each Party's principal investigators (PI) who is leading the NBIPI project to ensure that the confidentiality agreement is executed. The PI will provide a copy to the Party's Technology Transfer Office.
Each Party will procure the transfer of Intellectual Property to foreground IP to itself from its employees, agents, consultants, contractors, and any researchers engaged in or working on an NBIPI project, including without limitation undergraduate and graduate students visiting academics, adjunct appointments.
A template IP assignment agreement set out in Appendix IV of these IP Principles before commencing any work in relation to NBIPI project.
4. MATERIALS TRANSFER AGREEMENTS
In the event that it is required to transfer material from one party to another for the purposes of conducting an NBIPI project, the parties will execute a material transfer agreement. A template agreement is attached as Appendix V hereto. An executed copy detailing the type and quantity of material transferred will be provided to the Party's Technology Transfer Office.
5. TEACHING AND RESEARCH
The NBIPI Partners and each employee and student (once they remain employed at the academic institution) will have the irrevocable, royalty-free right to use the foreground IP generated by that partner within a project for the purposes of academic teaching and research.
The NBIPI Parties recognise the need to publish the results of the research subject to appropriate IP protection and confidentiality provisions. Where two or more Parties are listed as authors on a publication, each party agrees to consult the other party in advance of any proposed publication, which shall include oral presentations, conference abstracts or manuscripts or similar materials containing any reference to results generated from NBIPI research. The other party will have thirty (30) working days to review and comment on the proposed publication, during which they may, acting reasonably:
i) recommend changes which the publishing party may make at its sole discretion and/or
ii) require the removal of any confidential information and/or proprietary information owned by said party; and/or
iii) to the extent the publication contains details of any novel intellectual property, require a delay of publication for up to six(6) months from the date when the proposed publication was reported in order to enable said party to take such steps as it reasonably believes are necessary to protect its intellectual property rights.
Annexes can be downloaded along with the full MOU here.