4.10 If Party 1 decides not to defend or to enforce the Joint IP
on the ground that the defense or enforcement does not stand
a good chance of success and Party 2 disagrees with Party
1’s assessment of the situation, the Parties shall seek the
opinion of a QC (the identity of the QC to be agreed between
the Parties and in default of agreement by the Chairman for
the time being of the Bar Counsel (or relevant foreign
equivalent)) as to whether the action would stand a good
chance of success. If the QC advises that the action stands a
good chance of success, Party 2 shall be entitled to
commence litigation in its own name to defend or enforce the
Joint IP, provided that Party 2 shall consult with Party 1 and
keep Party 1 informed in all stages of the litigation and that
Party 2 shall indemnify Party 1 in respect of all claims,
demands, actions, liabilities and da
mages made by or
awarded to any person and any associated costs and
expenses that arise directly or indirectly from the litigation.
Note that the words preceding
“success” are limiting.
4.11 If Party 1 decides to cease prosecuting or
maintaining any of the Joint Registrations or to let them lapse,
Party 1 shall first offer to assign to Party 2 the Joint
Registrations that are the subject of that decision. All such
offers shall be made in writing and shall be open for
acceptance in writing by Party 2 for a period of 20 Business
Days from the date of the Party 1’s offer. If Party 2 accepts
any such offer, Party 2 shall make all payments relating to the
Joint Registrations that are the subject of the offer with effect
from the date of the offer and Party 1 shall (at the cost of Party
2) execute all documents that Party 2 may reasonably require
to effect the assignment. Immediately on assignment, Party 2
shall be deemed to have granted to Party 1 a perpetual,
irrevocable, royalty-free, non-exclusive, worldwide license
(with the right to grant sub-licenses) in all territories where the
Joint Registrations may subsist for the duration of the rights
licensed.
The obvious drawback of assigning
the property is the potential for the
property to create blocking IP, which is
most likely to block the assignor if they
are still working on the technology. A
license back may therefore be crucial.
4.12 Each Party shall inform the other promptly in
writing of any alleged infringement of the Joint IP of which it is
aware and shall provide the other Party with any available
evidence of the alleged infringement.
5 EXERCISE OF RIGHTS UNDER THE JOINT IP
5.1 Each Party may itself exercise all rights under
the Joint IP but s
ave as provided in clauses 5.2 and 5.3,
neither party may grant a license under (or amend the terms
of a license under), otherwise dispose of rights or encumber
(including by way of charge) or do any other act in relation to
any rights under Joint IP without the prior written consent of
the other Party
[which consent shall not be unreasonably
withheld, conditioned or delayed]. [In the case of a license, a
condition of cons
ent may be the requirement for the other
party to agree to the terms of the license].
One of the areas in which there is
considerable territorial variation is the
extent to which joint owners may
exercise the jointly owned rights
without the consent of
may licens
without consent. In the UK it is not
possible for a joint owner of copyright
to exercise any of the jointly owned
rights without a license from the other
joint owner. Conversely,
under US
law, each joint owner of patent rights