The private party is responsible for the costs of intellectual property required by the project (including costs resulting from infringements, subject to any government warranties and indemnities in respect of intellectual property contributed to the project by government). Government must be able to use any intellectual property required to operate and maintain the facility in the event that it takes over the project, whether during or after expiry of the end of the Contract Term.
36.1 Warranties
(a) The private party must warrant that, in performing its activities under the project agreement:
it will not breach the intellectual property ("IP") rights or moral rights of (i)
any person;
there are no security interests, and it will not allow any security interests (ii)
to be created, (other than Permitted Security Interests) over any IP it contributes to the project;
subject to section 36.3, it has authority to grant to government the (iii)
licence or other rights to be granted under the project agreement; and neither the use nor exercise by government (or any party authorised by (iv)
government) of such IP rights will infringe any law, or any IP or moral rights of any person.
(b) If government contributes IP to the project, the scope of the warranty described in paragraph (a) will be adjusted to exclude matters warranted by government.108
36.2 Grant of licences
Subject to section 36.3, the private party will grant government (and where necessary ensure the grant by third parties of) non-exclusive, irrevocable, perpetual, transferable and royalty-free licences with the right to sub-licence, use and exercise all IP rights in or used in the project including:
(a) the design of the works and facility;
(b) the design and construction documentation (including final design documentation); (c) methods of working and materials used in the construction, commissioning and
completion of the works; and
(d) operation, maintenance and handover of a part or the whole of the facility (including all technologies comprised in the facility109) ,
108
See section 36.6.
109
as required for government to exercise its rights under the project agreement (including its Step-in Rights) and, where applicable, to allow for the continuation of the project services following termination of the agreement or expiry of the Contract Term110 or for any other project involving the site.
36.3 Obligation
Where, after having used its reasonable endeavours, the private party is unable to procure the grant to government of any of the licences required to be granted by third parties and the material which is the subject of the relevant IP rights is generally commercially available on reasonable commercial terms then government may exclude such third party IP from the requirement to provide a licence under section 36.2 on such conditions as it sees fit.111. Government and the private party will negotiate in good faith with a view to the private party obtaining such rights or arrangements for government’s or its associates' benefit as
government reasonably requires having regard to government’s rights as set out in
section 36.8.1. Government and the private party will also negotiate in good faith where, after having used its reasonable endeavours, the private party is unable to grant to government any of the licences the private party is required to grant.
36.4 Moral rights
In addition to obtaining all copyright and patent consents required for the project, the private party will be required to obtain, for the benefit of government, the consent of the authors of all copyrighted works of which use is made for the purposes of the project.
36.5 Survival of rights
The IP and moral rights granted to government survive:
(a) any frustration, suspension, termination or expiry of the project agreement; and (b) the exercise by government of its Step-in Rights.
36.6 Indemnity
Subject to the exclusion of any matters warranted by government under section 36.7, the private party will indemnify government, and its associates, against claims or liabilities arising from a breach of a representation, warranty or obligation relating to IP.
36.7 IP rights passed from government
If government contributes IP which the private party is either required or entitled to use for the project, government will provide a licence to the private party. The terms of the licence will only entitle the private party to use government’s IP for the project and only for the Contract Term. In such a case, government may consider requiring from the private party appropriate IP and moral rights warranty and indemnity provisions.
110
Government may require that the licence to use IP developed for the project be assigned to government and able to be used in other projects.
111
36.8 Rights to IP on expiry of term
36.8.1 Government rights
The project agreement will provide that:
(a) if the private party has not been able to grant the licence under section 36.2 for use of third party IP rights beyond the expiry or earlier termination of the project
agreement, the private party will procure a novation of any IP licences from those third parties to government and the private party will be obliged to ensure that the IP licences it obtains for the benefit of government make provision for this; or (b) if the requirements in paragraph (a) prove impossible, the private party must secure
government’s right to obtain those licences at commercial rates.
These obligations survive expiry or earlier termination of the project agreement in the same manner as in section 36.5.
36.8.2 Indemnity
The private party must indemnify government against any costs incurred because the IP necessary for the continuation of the project is not available.
36.8.3 Provision of data
To ensure government's immediate ability to operate the facility, the private party may be required to provide any data (including source code for software) that is necessary for operation to an independent party to be held in escrow for release in appropriate circumstances.