Royalty-Free IP Licence
MADE AS AN AGREEMENT BETWEEN
QUTbluebox Pty Ltd ABN 97 041 405 905 (as trustee for The Qutbluebox Trust) of Level 4, 88 Musk Avenue, Kelvin Grove,
Queensland 4059, Australia (bluebox) and the Licensee.
RECITALS
bluebox owns or has a right to license the Licensed IP. bluebox grants Licensee a licence to use and exploit the Licensed IP
on the terms of this agreement. Terms used in this agreement are defined in its schedule.
AGREED TERMS
1.
Subject to clause
2 and in consideration for Licensee undertaking to acknowledge QUT under clause 3, bluebox grants
to Licensee an exclusive, royalty-free, worldwide, non-transferable licence to use, commercialise and exploit the
Licensed IP (which exists at the date of this agreement) solely for the Declared Purpose and for the Term. Licensee
must not license the Licensed IP without the prior written consent of QUT, such approval not to be unreasonably
withheld after giving consideration to QUT’s Corporate and Social Responsibilities Policy.
2.
bluebox reserves the right to license the Licensed IP to QUT, students of QUT, academics, visiting academics and other
academic institutions for educational and research purposes (including to the extent such purposes involve collaboration
with persons not included in the categories of persons in this clause 2).
3.
Licensee must acknowledge QUT in accordance with the Acknowledgement Criteria.
4.
Licensee must use reasonable commercial endeavours to use, exploit and commercialise the Licensed IP for the
Declared Purpose.
5.
Licensee must deliver true and accurate Progress Reports to bluebox within 30 days of a request by bluebox and,
unless otherwise agreed in writing by bluebox, annually within 30 days of each of each anniversary of the Effective Date.
6.
bluebox may immediately terminate this agreement by notice to Licensee, if Licensee: (a) breaches this agreement
(capable of remedy) but does not remedy the breach within ten days of bluebox giving notice to remedy the breach; (b)
becomes insolvent, enters any form of administration, appoints receivers or commits any act of bankruptcy; or (c) fails to
comply with the Declared Purpose.
7.
bluebox has no obligation to (and does not warrant or represent that it has or will) assign, advise on, file applications for,
monitor, prosecute, maintain, register or do any other act or omission in connection with the Licensed IP (including in
respect of intellectual property protection for the Licensed IP, such as patent applications or registrations). Licensee
must promptly provide all correspondence to and from its intellectual property attorneys in connection with any
applications or registrations related to the protection of the Licensed IP. Licensee has no obligation to protect or
maintain the Licensed IP, but must provide at least 30 days’ prior written notice to bluebox before permitting any
application or registration in connection with the Licensed IP to expire or lapse. Without limiting any other rights or
remedies of bluebox under this agreement or at law, bluebox may, itself or on behalf of QUT or other persons, maintain
and protect the Licensed IP without notice to the Licensee.
8.
Licensee represents and warrants to bluebox that: (a) it has unconditional capacity and authority to execute this
agreement; and (b) this agreement constitutes its valid and legally binding obligations and is enforceable against it by
bluebox. To the extent permitted by law, bluebox excludes all warranties and representations that: (a) the Licensed IP
does not and will not infringe any third party Intellectual Property Rights; (b) any applications that are filed in relation to
the Licensed IP will proceed to registration or issue; (c) the Licensed IP is valid or enforceable; (d) the Licensed IP is fit
for any purpose, even if such purpose is known to bluebox; (e) the Licensed IP is suitable or safe for use by the
Licensee or any other person; and (f) that the use, exploitation and/or commercialisation of the Licensed IP will achieve
any particular commercial prospects or milestones.
9.
Licensee represents and warrants that it has performed its own investigations in respect of all matters relevant to the
Licensed IP and this agreement, including but not limited to the matters in clause 8. All express and implied terms,
conditions, guarantees and warranties which otherwise might apply to, or arise out of, this agreement are excluded other
than: (a) those expressed in this agreement; and (b) terms, conditions, guarantees and warranties which cannot lawfully
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be excluded or modified by agreement, including but not limited to statutory guarantees under the Competition and
Consumer Act 2010 (Cth).
10.
Subject to clause 11, the total liability of bluebox, its directors and employees and QUT for any Loss suffered or incurred
by Licensee, howsoever caused, including as a result of:
(a)
any breach of this agreement by bluebox (including any breach of warranty);
(b)
any act or omission (including any negligent act or omission) of bluebox, its directors and employees or QUT;
and
(c)
termination or repudiation of this agreement by bluebox,
is limited to $100, being an aggregate limit for all claims made.
11.
It is a condition of this agreement, that any goods or services that may be supplied by bluebox under this agreement are
not supplied, and the Licensee must not use such goods or services, for any personal, domestic or household use or
consumption. To the extent that bluebox is not permitted by law to limit its liability or the liability of QUT under clauses 9
or 10, it limits liability to: (a) for a supply of goods: (i) repair or replacement of the goods or the supply of equivalent
goods; or (ii) paying the cost of replacing the goods, acquiring equivalent goods or having the goods repaired; or (b) for
a supply of services: (i) supplying the services again; or (ii) paying the cost of having the applicable goods/services
supplied again.
12.
Licensee indemnifies bluebox, its directors and employees and QUT from and against all Loss arising directly or
indirectly from: (a) breach of this agreement by Licensee; (b) any act or omission (including but not limited to any
negligence, unlawful conduct or wilful misconduct) of Licensee; (c) the use and exploitation of the Licensed IP by or on
behalf of Licensee or any authorised sublicensee of Licensee; and (d) any claim by a third party against one or more of
bluebox, its directors and employees and QUT.
13.
Clauses 10, 11 and 12 survive termination or expiry of this agreement. bluebox has brought the promises made by
Licensee under clauses 10, 11 and 12 to the attention of QUT and each of the directors and employees of bluebox and,
by this clause 13, communicates acceptance of those promises to Licensee for and on behalf of QUT and the directors
and employees of bluebox.
14.
A notice, demand, certification, process or other communication relating to this agreement must be in writing in English
and may be given by an agent of the sender. In addition to any other lawful means, a communication may be given by
being: (a) personally delivered; (b) left at the party’s current delivery address for notices; (c) sent to the party’s current
postal address for notices by pre-paid ordinary mail or, if the address is outside Australia, by pre-paid airmail; or (d) sent
by fax to the party’s current fax number for notices. The particulars for delivery of notices are set out in item
9 of the
schedule. Each party may change its particulars by notice to the other party.
15.
This agreement is governed by the laws of Queensland and Australia. Each party irrevocably and unconditionally
submits to the non-exclusive jurisdiction of the courts exercising jurisdiction in Queensland and any courts which have
jurisdiction to hear appeals from any of those courts and waives any right to object to any proceedings being brought in
those courts.
16.
This agreement is the entire agreement between the parties as to its subject matter. Licensee has not relied on any
representations or misrepresentations by bluebox or QUT in connection with the Licensed IP, this agreement or
otherwise. Each party must pay its own legal and other costs and expenses of negotiating, preparing, executing and
performing its obligations under this agreement.
This agreement may only be varied or replaced by a document
executed by the parties. A single or partial exercise or waiver by a party of a right relating to this agreement does not
prevent any other exercise of that right or the exercise of any other right. In this agreement, "person" includes but is not
limited to a natural person, body corporate, partnership, joint venture, unincorporated association, corporation and a
government or statutory body or authority. In this agreement, bluebox may conditionally or unconditionally give or
withhold any consent to be given under this agreement and is not obliged to give its reasons for doing so or act
reasonably in doing so. This agreement may consist of a number of counterparts and, if so, the counterparts taken
together constitute one document. This agreement does not create a relationship of partnership, joint venture or agency
between the parties.
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Schedule
Item
Description/definition
1
Licensee
{please insert company name, ABN and address}
2
Licensed IP
The Licensed IP means the following patent rights existing as at the
Effective Date:
3
Term
Detail
(a)
issued and unexpired patents;
(b)
patent applications;
(c)
patent applications (including foreign applications) that are filed
based on or corresponding to patent applications;
(d)
divisional and continuation, in whole or in part, applications and
reissue applications based on any patent application;
(e)
issued and unexpired patents resulting from any patent application;
and
(f)
all issued and unexpired reissue, re-examination, renewal, or
extension patents,
subsisting in {please insert patent application title, number and filing date}
Term means the period commencing upon the date of this agreement,
and ending:
(a) where a patent encompassing any of the Licensed IP has been
granted in that country – upon the day before the date of expiration
of the last to expire patent granted in that country; or
(b) where a patent encompassing any of the Licensed IP has not been
granted in that country – upon the day before the date of expiration
of the last to expire patent granted in any country; or
(c) where no patent encompassing any of the Licensed IP has been
granted in any country - upon the expiration of the period of 20
years from the date of this agreement.
4
Effective Date
{date to be entered}
5
Declared Purpose
The Licensee undertakes that it will use and exploit the Licensed IP for
the following purpose only:
(a) All use, exploitation and commercialisation provided that no QUT
resources, property or personnel may be used in connection with
this purposes without the prior written approval of an authorised
QUT signatory is obtained.
6
Acknowledgement
Criteria
Licensee must acknowledge QUT in the following manner:
(a) All oral and written presentations and publications directly or
indirectly relating to the Licensed IP (or relating to the Licensed IP
and other Intellectual Property Rights or technology) must include
the following statement in a prominent manner:
“The intellectual property described above was originally invented and
developed at the Queensland University of Technology, Brisbane,
Australia”
7
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Progress Reports
Each Progress Report must address the following matters:
(a)
Stage of prosecution of Licensed in each jurisdiction;
(b)
Commercialisation progress of the Licensed IP;
(c)
(d)
Details of all licences or assignments of the Licensed IP; and
Details of all commercial revenue received by the Licensee from
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use, exploitation or commercialisation of the Licensed IP.
8
Other definitions
Intellectual Property Rights means copyright (including future
copyright), trade mark, design, patent and circuit layout rights, rights in
respect of confidential information, know-how and trade secrets and all
other rights generally falling within the scope of this term, whether
registered or unregistered and whether registrable or not.
Loss means any direct, indirect or consequential loss or damage
(including, but not limited to, loss of profit, loss of revenue, loss of
opportunity, loss or damage to reputation; loss of bargain, loss of data
and loss in connection with claims by third parties) legal costs, claim,
action, penalty, liability, cost, charge, expense, outgoing, payment,
diminution in value or deficiency of any kind or character.
QUT means the Queensland University of Technology ABN 83 791 724
622.
9
Notices
bluebox
Licensee
Attention: Chief Executive Officer
Address: Level 4, 88 Musk Avenue,
Attention:
Address:
Kelvin Grove, Queensland 4059
Phone:
Australia
Fax:
Phone: +61 7 3138 9420
Fax: +61 7 3138 9421
Email:
Email: enquiries@qutbluebox.com.au
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Execution
Executed as an agreement.
Executed by QUTbluebox Pty Ltd
)
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Witness
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Officer
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Name of Officer (print)
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Date
Executed by Licensee by its duly appointed
officer in the presence of:
)
)
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Witness
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Officer
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Name of Witness (print)
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Name of Officer (print)
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Date
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