The majority of clauses applicable to fully funded contracts also apply to partly funded contracts. To avoid repetition, only the significant variations from fully funded contracts are outlined below.
Foreground IP - Ownership
As a general rule the contractor will own all IP arising from work performed under the contract and has the right to apply for registered IPR (53.1). This is the same rule that also applies to fully funded contracts.
Foreground IP - Registration
The same procedure as for fully funded contracts is applicable if the contractor wishes to apply for registered IPR (54.2-54.3).
However, ESA cannot require the assignment of rights if the contractor fails to apply for IPR.
Foreground IP – Access by ESA, Participating States and other persons or bodies
Clause 55.1 contains 3 further rules mandating the conditions of access and use for foreground IPR arising from a partly funded contract. Such IPR shall be available:
– to ESA on a free, worldwide licence for the Agency’s Own Requirements;
– to Participating States and any person or body under their jurisdiction to use for the Agency’s Own Requirements under the condition that the parties who paid for development of the rights being licensed will be compensated according to the level of contribution made;
– to any third party under Market Conditions to use for purposes other than for the Agency’s Own Requirements, providing the use is not contrary to the contractor’s legitimate commercial interests.
Foreground IP – Exploitation by the contractor
The contractor shall use reasonable endeavour to exploit IPR so as to promote space research and technology (58.1). However, the contractor is not required to pay a fee to ESA if it sells or licenses the results of the contract.
ESA can require the contractor to grant a licence to a third party on favourable terms (or assign rights to ESA) if it does not effectively exploit or intend to exploit the registered IPR (58.2). However, ESA cannot compel an assignment of rights if the contractor simply wishes to abandon its rights.
Background IP – Use in ESA contracts
ESA is to be granted access, on an irrevocable worldwide basis and on Favourable Conditions, to background IPR owned by the contractor needed for the project specified in the contract but not for any other purpose (57.4).