IACCM Contract Management Forum

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2015-02-16 13:22:16

IP issues in EPC and R&D contracts

Please,can someone share knowledge on what are the key IP terms and conditions/clauses to seriously look out for in an EPC, and or R&D contracts?
 •  New Zealand Defence Industry Association (NZDIA)  •   2015-02-16 17:49:14
I hate saying depends but you might want a lot of IP clauses or very few depending on the seat you are in.
A good approach is to start with a blank piece of paper imagine the delivery is occurring and consider how you might answer a series of questions from the Board then check if the contract has the answers. if not it should.
Questions might include:
Who can make one of these again?
Who owns the plans, diagrams, blueprints, samples when all is done?
Are the plans etc trade secrets and subject to a range of different types of copyright and who has ownership and/or has licence rights?
If repairs, rectification is needed, who has a right to access plans, drawings etc to get work done

More suggestions for questions and issues to tick off?
 •  Nexen Energy ULC  •   2015-03-03 08:23:26
My experience has lead me to asking an EPC company to expressly list what in the scope of executing this contract they feel is their intellectual property. From that list I would find out what has patents/licenses associated with it and either reject or negotiate the balance.
It is a reasonable expectation that a contractor would limit the use of it's work product solely to the contract's stated purpose. WRT IP, I always want the contractor to give us a royalty free, non-irrevocable license to use their IP for future projects and use what info (drawings, etc.) they have given us for the maintenance and repair of the work product.
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