RESEARCH, INNOVATION &COMMERCIALISATION

research.unimelb.edu.au

General License AgreementTermsThe University is committed to workingwith industry to deliver societal benefitsthrough the development of newtechnologies, products, and services.However, during licence negotiation withthe University, industry partners shouldkeep in mind that universities havedifferent commercialisation drivers andconstraints to industry. Licences with theUniversity of Melbourne, as with otheruniversities, generally cover the areasoutlined below.

Licensing the Technology• Grant of exclusive or non-exclusive

licensing rights

• Field and scope of use (application andlimitation of rights)

• Territory (e.g. Australia or international)

• Sublicensing rights (referring to thelicencee’s ability to sub-licence its rightsto the technology granted under itslicence with the University)

• The University reserves the right to usethe technology for its research andacademic purposes

Consideration• Licence fees

• Equity (for start-up organisations)

• Royalty on sales of product or provisionof service by licencee and its sub-licencee

• Percentage of non-sales based sub-licence income (such as sub-licencefees)

• Minimum royalties or annualmaintenance fees

• Milestone/diligence payments

Patent prosecution andpaymentThe University oversees patent prosecutionand generally consults with the licencee

on decisions regarding the prosecutionstrategy or where the patent applicationshould be filed (i.e. in Australia and/orinternationally). Typically, under anexclusive licence, the licencee will beresponsible for reimbursing the Universityfor all costs relating to preparing, filing,prosecuting and maintaining the licencedpatents.

Reporting requirementsLicencees have an obligation to submit tothe University either quarterly or annualreports, which includes information suchas:

• Royalties due

• Sub-licence agreements and payments

• Other revenues

• Key activities undertaken in theimmediately preceding period inconnection with the licencedtechnology.

Diligence termsThe licencee will need to meet certaindiligence milestones that if unmet mayresult in termination of the licence. Theserequirements are there to ensure that thetechnology is actively developed andcommercialised. Sometimes performanceterms include financing milestones (morecommon with start-ups), technicalmilestones, regulatory approvals, firstprototype or commercial sale, or issuingthe first patent.

Sub-licence provisionsExclusive licences usually permit thelicencee to sub-licence its rights to thetechnology granted under the licence withthe University to third parties. All such sub-licence agreements must include the samekey terms found in the original licence,including:

• Warranty disclaimers

• Indemnification of the University

• Maintaining the University’s right to usethe licenced technology for its researchand academic purposes

• Requirement that sub-licencee obtainsProduct liability insurance

• Confidentiality

• Termination

Term and TerminationThe University will usually grant a licencefor a defined period of time, which may beextended further with the University’swritten consent. The University willotherwise be entitled to terminate thelicence in certain instances, such as wherethe licencee has failed to meet its diligencemilestones, or has materially or repeatedlybreached the licence agreement.

No warranties; limitation ofliabilityThe University will not guarantee thecapability and/or merchantability of anylicenced technology or the validity ofpatent rights, and will not accept anyresponsibility or liability for any indirect oreconomic loss suffered by any party inconnection with the licence. The licenceeassumes all risk and liability associatedwith the licenced technology and thecommercialisation activities it undertakesin connection with it.

IndemnificationThe licencee will indemnify the university,its employees, regents, trustees, etc.against all claims, proceedings, demandsand liabilities of any kind whatsoever. TheUniversity may also require that thelicencee obtain and maintain certainamounts of public and product liabilityinsurance as a condition of its grant of thelicence.

Other requirementsVarious other terms generally found inlicencing agreements include:

• Provisions for resolving any dispute thatmay arise between the University andthe connection with the licence granted

• Provisions for Victorian law governingthe agreement and compliance with allapplicable laws and regulations

• Prohibiting the use of the University’sname in any publicity or advertisingwithout the University’s prior writtenconsent

• Provision against assigning or varying alicence without prior written consent

• Provisions for force majeure

• Provisions against an agency relationship

Copyright

© Copyright University of Melbourne January 2016. Copyrightin this publication is owned by the University and no part of itmay be reproduced without the permission of the University.

CRICOS PROVIDER CODE: 00116K

research.unimelb.edu.au

General License Agreement Terms(continued)

Disclaimer

The University has used its best endeavours to ensure thatmaterial contained in this publication was correct at the time ofprinting. The University gives no warranty and accepts noresponsibility for the accuracy or completeness of informationand the University reserves the right to make changes withoutnotice at any time in its absolute discretion. The Universityreserves the right to make changes to the programs advertisedas appropriate.

Intellectual property

For further information refer to: www.unimelb.edu.au/Statutes

Authorised by: Technology Licensing Team

Published by: Research, Innovation & Commercialisation