Common Agreements — Retain existing IP; Independently developed and Jointly developed property.
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Intellectual Property

Preexisting Intellectual Property. Each party will retain exclusive interest in and ownership of its Intellectual Property existing prior to this agreement or developed outside the scope of this agreement.

Independently Developed Intellectual Property. Any Intellectual Property developed solely by a party under this agreement without the participation of the other party is and will remain the sole and exclusive property of the developing party.

Jointly Developed Intellectual Property. In the event that the parties jointly develop Intellectual Property, the parties shall engage in good faith negotiations to establish their respective rights. In the event the parties cannot reach an agreement with regard to such jointly developed property, each party will have equal ownership and rights in such intellectual property, without further obligation and without a duty to account to the other party.

Intellectual Property Definition"Intellectual Property" means any and all of the following in any jurisdiction throughout the world (a) trademarks and service marks, including all applications and registrations, and the goodwill connected with the use of and symbolized by the foregoing; (b) copyrights, including all applications and registrations related to the foregoing; (c) trade secrets and confidential know-how; (d) patents and patent applications; (e) websites and internet domain name registrations; and other intellectual property and related proprietary rights, interests and protections (including all rights to sue and recover and retain damages, costs and attorneys' fees for past, present, and future infringement, and any other rights relating to any of the foregoing). 


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Neutral Exchange Agreements Ownership
Common Agreements — Retain Existing IP
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Intellectual Property 

Each Party Retains Intellectual Property. Each party will retain exclusive interest in and ownership of its Intellectual Property existing prior to this agreement or developed outside the scope of this agreement.

Intellectual Property Definition"Intellectual Property" means any and all of the following in any jurisdiction throughout the world (a) trademarks and service marks, including all applications and registrations, and the goodwill connected with the use of and symbolized by the foregoing; (b) copyrights, including all applications and registrations related to the foregoing; (c) trade secrets and confidential know-how; (d) patents and patent applications; (e) websites and internet domain name registrations; and other intellectual property and related proprietary rights, interests and protections (including all rights to sue and recover and retain damages, costs and attorneys' fees for past, present, and future infringement, and any other rights relating to any of the foregoing). 


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Neutral Exchange Agreements Ownership
License Agreement — Pro-Licensor Modifications
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Intellectual Property

Retain Ownership of Preexisting Intellectual Property. Except for the rights granted in the License Grant of this agreement, each party will retain all interest in and ownership of its Intellectual Property existing prior to this agreement or developed outside the scope of this agreement.

Retain Ownership of Licensed Intellectual Property. [PARTY A] retains all interest in and ownership of the Licensed Intellectual Property, except for the rights granted to [PARTY B] under the License Grant section of this agreement. [PARTY B]'s use of the Licensed Intellectual Property and any good will accrued is solely for [PARTY A]'s benefit.

Ownership of Modifications

Modifications by the Licensor. [PARTY A] shall grant to [PARTY B] a royalty-free license for any Modifications [PARTY A] makes, for the remaining length of this agreement and under the same terms of this agreement.

Modifications by the Licensee Granted-Back 

Modifications by the Licensee. [PARTY B] shall assign to [PARTY A] all interest in any Modifications it makes over the course of this agreement.

Grant-Back. [PARTY A] shall grant-back to [PARTY B] a license to such Modifications made by [PARTY B] and licensed to [PARTY A], for the remaining length of this agreement and under the same terms of this agreement.

Definitions

Intellectual Property"Intellectual Property" means any and all of the following in any jurisdiction throughout the world (a) trademarks and service marks, including all applications and registrations, and the goodwill connected with the use of and symbolized by the foregoing; (b) copyrights, including all applications and registrations related to the foregoing; (c) trade secrets and confidential know-how; (d) patents and patent applications; (e) websites and internet domain name registrations; and other intellectual property and related proprietary rights, interests and protections (including all rights to sue and recover and retain damages, costs and attorneys' fees for past, present, and future infringement, and any other rights relating to any of the foregoing). 

Modifications. "Modifications" means any additions to, updates, improvements on, bug patches, new versions of, or other modifications to the Licensed IP, made by either party during this agreement.


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Slight Pro-Provider License Ownership
License Agreement — Pro-Licensee Modifications
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Intellectual Property

Retain Ownership of Preexisting Intellectual Property. Except for the rights granted in the License Grant of this agreement, each party will retain all interest in and ownership of its Intellectual Property existing prior to this agreement or developed outside the scope of this agreement.

Retain Ownership of Licensed Intellectual Property. [PARTY A] retains all interest in and ownership of the Licensed Intellectual Property, except for the rights granted to [PARTY B] under the License Grant section of this agreement. [PARTY B]'s use of the Licensed Intellectual Property and any good will accrued is solely for [PARTY A]'s benefit.

Ownership of Modifications

Modifications by the Licensor. [PARTY A] shall grant a royalty-free license to the [PARTY B] for any Modifications to the Licensed IP [PARTY A] makes, for the remaining length of this agreement, and under the same terms of this agreement.

Modifications by the Licensee. [PARTY B] will retain all interest in  any independently-protectable (under patent, copyright, or other law) Modifications it makes to the Licensed IP the [PARTYB] makes over the course of this agreement. [PARTY B]'s right, title, and interest to and in such Modifications will not effect [PARTY A]'s exclusive interest in and ownership of  the underlying Licensed IP.

Definitions

Intellectual Property"Intellectual Property" means any and all of the following in any jurisdiction throughout the world (a) trademarks and service marks, including all applications and registrations, and the goodwill connected with the use of and symbolized by the foregoing; (b) copyrights, including all applications and registrations related to the foregoing; (c) trade secrets and confidential know-how; (d) patents and patent applications; (e) websites and internet domain name registrations; and other intellectual property and related proprietary rights, interests and protections (including all rights to sue and recover and retain damages, costs and attorneys' fees for past, present, and future infringement, and any other rights relating to any of the foregoing). 

Modifications. "Modifications" means any additions to, updates, improvements on, bug patches, new versions of, or other modifications to the Licensed Intellectual Property, made by either party during this agreement.


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Neutral License Ownership
Independent Contractor Agreement — Assignment of Work Product
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Intellectual Property and Work Product

Ownership of Work Product. [PARTY B] hereby assigns to [PARTY A] all applicable ownership rights in the Work Product, including any Intellectual Property rights.

1.3. Cooperation. [PARTY B] shall provide all assistance that [PARTY A] reasonably requests, during and after the Term of this agreement, in establishing, preserving, and enforcing [PARTY A]'s interest in and ownership of the Work Product.

1.4. Moral Rights. [PARTY B] hereby waives all moral rights relating to the Work Product (including any rights (a) of identification of authorship, (b) of approval, restriction, or limitation on use, and (c) to subsequent modifications).

1.5. Design Documents. On the expiration or termination of this agreement, [PARTY B] shall promptly deliver to [PARTY A] all design documentation used to develop and create the Work Product, including all writings, drawings, schematics, models, and other tangible manifestations of the Work Product (including all originals and copies).

Definitions

Intellectual Property"Intellectual Property" means any and all of the following in any jurisdiction throughout the world (a) trademarks and service marks, including all applications and registrations, and the goodwill connected with the use of and symbolized by the foregoing; (b) copyrights, including all applications and registrations related to the foregoing; (c) trade secrets and confidential know-how; (d) patents and patent applications; (e) websites and internet domain name registrations; and other intellectual property and related proprietary rights, interests and protections (including all rights to sue and recover and retain damages, costs and attorneys' fees for past, present, and future infringement, and any other rights relating to any of the foregoing). 

Work Product. "Work Product" includes all information, work product, and other results, systems, and information developed in connection with the Services and any resulting Intellectual Property rights.


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Neutral Independent Contractor Agreement Ownership

About


Overview

IACCM CONTRACTING PRINCIPLES
Intellectual Property Rights and Indemnification for Third Party IP Claims

IACCM

1. General Concepts

  • Intellectual property owned by a party remains that party’s property unless expressly transferred under the contract.
  • A party’s use of and rights to another party’s intellectual property must be expressly specified in the contract.
  • Where services are provided by a supplier, the focus of the contract with the customer should be on the services and not on the intellectual property of the underlying components that are used in the provision of the services.
  • The supplier should stand behind all intellectual property incorporated into the services and indemnify the customer against third party claims that relate to the services and any elements thereof, subject to appropriate limitations (see below).

2.  IACCM Contracting Principles

2.1. Intellectual Property Rights

  • Each party owns the intellectual property it creates before, during and after the contract term, except as may be specifically provided in a contract or an attachment thereto.
  • As between the parties to a contract, the party furnishing information or materials to the other retains its intellectual property rights in such information or materials, subject to any license rights that are granted by the furnishing party (or by a third-party licensor).  Generally, where services do not contemplate software development, “work-for-hire” and similar provisions allocating ownership rights are not applicable.
  • The customer should have the right to use the supplier’s intellectual property as necessary to use the services for the customer’s business needs throughout the duration of the contract.
  • In circumstances where broader (or longer duration) license terms (e.g., to software or customer-specific deliverables) are appropriate, those rights should be specifically provided in the contract.
  • As to customized unique content (such as a custom software application) that is developed for a customer's sole use in accordance with the customer's specifications, a provision granting the customer ownership or exclusive use of such content may be appropriate if the supplier is not retaining the right to re-use the content for other customers.
  • Third-party software, services, and equipment are provided subject to the third party’s license terms.

2.2. Intellectual Property Infringement

  • The supplier should be responsible for defending and paying/settling any third-party claim against the customer alleging that the supplier’s services or products infringe the third party’s intellectual property rights in any country in which the service or product is provided or where the services/deliverables are intended to be used. The supplier should not be responsible to the extent an infringement claim arises from the following ("Excluded Claims"):
    • combination of the supplier’s service or product with items provided by the customer or others not under the supplier’s control;
    • modification to the supplier’s service or product by someone other than the supplier or others not under the supplier’s control;
    • the supplier’s adherence to the customer’s requirements;
    • the customer’s content; or
    • use of the service by the customer in breach of contract restrictions or in violation of law.
  • The customer should be responsible to defend and pay/settle any third-party claim against the supplier for Excluded Claims.
  • The obligation to indemnify for third party infringement claims should not be subject to any limitation of liability cap.  
  • The indemnified party should have the obligation to promptly notify the indemnifying party of any such claims, and the indemnified party will not be responsible for any losses attributable to a notification delay.
  • The indemnification of third-party claims is sufficient to protect the customer, and therefore, the supplier should not be expected to provide a warranty or representation that its services or products do not infringe third party intellectual property rights.
  • If the supplier’s service or product infringes a third party’s IP (or is subject to a claim of infringement), the supplier may:
    • obtain from the third party the right for the customer to continue its use of the service or product;
    • modify the service or product so it is not infringing without materially reducing the functionality or performance of the service; o
    • substitute another service or product having substantially the same functionality and performance criteria.
  • If the supplier is unable to implement any of these measures through commercially reasonable efforts, the supplier may cease providing the service or accept a return of the product that is subject to the third party claim and refund any prepaid charges or refund the current market value of the product, as the case may be.