Intellectual Property Assignment (International)

Definitions

"Intellectual Property Rights" means patents, utility models, rights to inventions, copyright and related rights, trade marks and service marks, business names and domain names, rights in get-up and trade dress, goodwill and the right to sue for passing off or unfair competition, rights in designs, rights in computer software, database rights, rights in confidential information (including know-how and trade secrets) and all other intellectual property rights, in each case whether registered or unregistered, and including all applications for, and rights to apply for and be granted, any of them, all renewals and extensions of them, all rights to claim priority from them, and all similar or equivalent rights anywhere in the world.

"Assigned IP" means all Intellectual Property Rights in or relating to the Assigned Materials, whether existing at the date of this agreement or coming into existence afterwards, anywhere in the world, but not moral rights or similar personal rights of authors, which the Moral Rights clause deals with.

Interpretation

Where a party is an individual, "it" and "its" include him or her and his or her, a reference to this agreement being duly authorised on a party's behalf applies only to a party that is a body corporate or other entity, and a reference to a party's successors includes his or her heirs and personal representatives.

Assignment

In return for the Consideration, the Assignor assigns to the Assignee absolutely all its right, title and interest in the Assigned IP, for the full term of each right, including all renewals, revivals and extensions, throughout the world, for every type of use, including reproduction, distribution, adaptation, translation, communication and making available to the public, rental, lending and licensing, for all purposes and in all media, including types of use not yet known.

To the extent any Assigned IP comes into existence after the date of this agreement, including copyright in any part of the Assigned Materials not yet created and rights that arise on registration, the Assignor assigns it to the Assignee by way of present assignment of future rights, with effect from the moment it comes into existence. To the extent the law does not allow a present assignment of a future right, the Assignor must assign that right to the Assignee promptly when it comes into existence, without further consideration.

Where the law of any country does not allow any of the Assigned IP to be assigned, the Assignor grants the Assignee, for the full term of that right, an exclusive, irrevocable, worldwide, royalty-free and transferable licence of it, with the right to grant sublicences, for every type of use, including types of use not yet known. The Consideration includes payment for that licence.

The assignment includes the right to bring proceedings, and to recover and keep damages, an account of profits and any other remedy, for any infringement of the Assigned IP, whether the infringement occurred before or after the date of this agreement.

The Assigned IP includes the Registered Rights, together with all rights to claim priority from them and all rights to apply for and obtain registration of any of the Assigned IP anywhere in the world.

Where the Assigned IP includes a trade mark, it is assigned together with the goodwill of the business connected with that trade mark.

The Assigned IP does not include any Intellectual Property Rights in the Excluded Materials.

Consideration

The Assignee must pay the Consideration to the Assignor within the Payment Period, to the bank account the Assignor notifies in writing.

The Consideration is exclusive of value added tax, goods and services tax and similar taxes, which the Assignee must pay in addition if chargeable. If the Assignee is required by law to withhold tax from the Consideration, it may do so and must give the Assignor evidence of payment, and the parties will cooperate to obtain any available relief under a double tax treaty.

Delivery

By the end of the Delivery Period, the Assignor must deliver to the Assignee all copies of the Assigned Materials in its possession or control, in every form in which they are held, including source files, source code, design documents, laboratory notebooks, and the files and correspondence with any intellectual property office relating to the Assigned IP.

After delivery, the Assignor must not keep any copy of the Assigned Materials, except as permitted under this agreement or as required by law.

Moral Rights

To the extent the applicable law allows, the Assignor waives all moral rights in the Assigned Materials. Where a moral right cannot be waived, the Assignor consents to the Assignee and its licensees and successors publishing, adapting, modifying, translating and otherwise exploiting the Assigned Materials, and using them without attribution where that is customary, and agrees not to exercise that right to prevent those acts, to the extent the law allows. The Assignor must use all reasonable endeavours to obtain written waivers or consents in the same terms from each other author of any work comprised in the Assigned Materials.

Further Assurance

At the Assignee's request and cost, the Assignor must promptly sign and deliver all documents, and do all other things, that the Assignee reasonably requires to perfect, record, register, maintain, defend or enforce the Assignee's title to the Assigned IP, including confirmatory assignments in a form suitable for filing at any intellectual property office. This obligation continues without limit of time.

The Assignor must use all reasonable endeavours to ensure that each of its employees, contractors and other persons who created or contributed to the Assigned Materials signs any document the Assignee reasonably requires to confirm that their rights in the Assigned IP vest in the Assignee.

If the Assignor does not sign a document required under this Further Assurance clause within 10 business days after the Assignee's written request, the Assignor irrevocably appoints the Assignee, to the extent the governing law allows, as its attorney-in-fact to sign that document in the Assignor's name solely for the purpose of vesting, recording or perfecting the Assignee's title to the Assigned IP. This appointment is coupled with an interest.

Registration and Recordal

The Assignee may record the assignment of the Assigned IP at any intellectual property office, at its own cost. The Assignor must promptly give the Assignee the information and signed documents it reasonably requires for that purpose and must cooperate reasonably in any pending application, opposition, revocation, cancellation or other office proceeding concerning the Assigned IP.

Until the assignment of a registered right comprised in the Assigned IP is recorded, the Assignor must not do anything that would impair that right, must promptly forward to the Assignee any correspondence it receives about it, and must take any step the Assignee reasonably requests, at the Assignee's cost, to maintain or defend it.

Until any Assigned IP vests in the Assignee, the Assignor holds it on trust for the Assignee.

Warranties

Each party warrants that it has full power and authority to enter into and perform this agreement, and that this agreement has been duly authorised and signed on its behalf.

The Assignor warrants to the Assignee that, at the date of this agreement: it is the sole owner of the Assigned IP and is entitled to assign it; it has not assigned, licensed, charged or otherwise encumbered the Assigned IP, except as disclosed to the Assignee in writing before the date of this agreement; so far as the Assignor is aware, the Assigned IP is valid and subsisting, and nothing has been done or omitted that would make any registered right comprised in it invalid or liable to revocation; and so far as the Assignor is aware, the exploitation of the Assigned Materials does not infringe the rights of any third party, no third party is infringing the Assigned IP, and no claim has been made or threatened that challenges the Assigned IP or its ownership.

Indemnity

The Assignor must indemnify the Assignee against all losses, damages, costs (including reasonable legal fees) and expenses that the Assignee suffers as a result of any claim by a third party that it owns or is entitled to any of the Assigned IP.

Limitation of Liability

Nothing in this agreement limits or excludes liability for fraud, wilful misconduct or any liability that cannot lawfully be limited or excluded. Subject to that, the Assignor's total aggregate liability arising out of or in connection with this agreement is limited to the Liability Cap.

Licence Back

The Assignee grants the Assignor a non-exclusive, royalty-free, worldwide and perpetual licence to use the Assigned IP solely for the Licence-Back Purpose. The Assignor may sublicense it only to its affiliates and to contractors working for it on that purpose, and may transfer it only with the whole of the business to which it relates.

Improvements

During the Improvements Period, the Assignor must promptly disclose to the Assignee every modification, improvement or development of the Assigned Materials made by or for the Assignor, and all Intellectual Property Rights in them form part of the Assigned IP without further payment.

Confidentiality

The Assignor must keep confidential all non-public information comprised in or relating to the Assigned IP, including unpublished inventions, source code and know-how, and must not use or disclose it except as permitted under this agreement, as required by law or with the Assignee's written consent.

Each party must keep the terms of this agreement confidential, except for disclosure to its professional advisers, as required by law or a competent authority, or as needed to record or enforce the assignment.

Notices

A notice under this agreement must be in writing and delivered by hand, by courier or by email to the Assignor at [TO BE CONFIRMED — Assignor notice address and email] and to the Assignee at [TO BE CONFIRMED — Assignee notice address and email], or to any replacement details a party notifies in writing. A notice delivered by hand or courier is received on delivery, and an email when it reaches the recipient's mail server, unless the sender receives a delivery failure message.

General

Each party bears its own costs of negotiating and entering into this agreement. The Assignee bears the official fees for recording the assignment.

This agreement is the entire agreement between the parties about its subject matter and replaces all earlier discussions and arrangements about it. A variation is effective only if it is in writing and signed by both parties.

A waiver is effective only if it is in writing and applies only to the circumstance for which it is given. If any provision of this agreement is invalid or unenforceable, the rest of this agreement remains effective.

The Assignee may assign or transfer its rights under this agreement, together with the Assigned IP. The Assignor may not assign or transfer its rights or obligations under this agreement without the Assignee's prior written consent. This agreement binds the parties' successors.

A person who is not a party to this agreement has no right to enforce any of its terms, except a successor in title to the Assigned IP.

This agreement may be signed in counterparts and by electronic signature, each of which is an original and which together form one agreement.

Governing Law and Disputes

This agreement and any non-contractual obligation arising out of or in connection with it are governed by the Governing Law, except that the subsistence, validity, ownership formalities and registration of each Intellectual Property Right are governed by the law of the country in which it subsists or was granted, to the extent that law mandatorily applies.

Any dispute arising out of or in connection with this agreement, including any question about its existence, validity or termination, must be finally resolved by arbitration under the Arbitration Rules. The tribunal is to consist of one arbitrator, the seat of arbitration is the Dispute Forum, and the language of the arbitration is English. Either party may seek urgent injunctive relief in any court of competent jurisdiction.