17.  PROJECT SPECIFIC IPR AND SPECIALLY WRITTEN SOFTWARE10

17.1.  The Service Provider hereby assigns to the Authority, with full title guarantee, title to and all rights and interest in the Project Specific IPRs [and the Specially Written Software] or shall procure that the first owner of the Project Specific IPRs [and the Specially Written Software] assigns them to the Authority on the same basis.  

17.2.  The assignment under clause 17.1 shall either take effect on the Agreement Date or as a present assignment of future rights that will take effect immediately on the coming into existence of the relevant Project Specific IPRs [and the Specially Written Software], as appropriate.

17.3.  The Service Provider shall waive or procure a waiver of any moral rights in any copyright works assigned to the Authority under this Agreement.

17.4.  If requested to do so by the Authority, the Service Provider shall, without charge to the Authority, execute all documents and do all such further acts as the Authority may require to perfect the assignment under clause 17.1 or shall procure that the owner of the Project Specific IPRs [and the Specially Written Software] does so on the same basis.

17.5.  The Authority shall grant to the Service Provider a licence of the Project Specific IPRs [and the Specially Written Software] to enable:11

17.5.1.  the Service Provider to provide the Transition Services and the Services; and

17.5.2.  the creation of works for other customers that are adapted or derived from the Project Specific IPRs [and the Specially Written Software].

17.6.  [Subject to clause 17.7 and to the extent only that this is necessary to enable the Authority to obtain the full benefits of ownership of the Specially Written Software as an integrated product, the Service Provider hereby grants to the Authority and shall procure that any relevant third party licensor shall grant to the Authority a perpetual, irrevocable, non-exclusive, assignable, royalty-free and global licence to Use, sub-license and/or commercially exploit any Service Provider's Background IPRs or IPRs owned by a third party that are embedded in or which are an integral part of the Specially Written Software, provided that, where the Specially Written Software consists of customisation of Service Provider Software and/or Third Party Software, this clause 17.6 shall not have the effect of granting to the Authority any greater rights over the Service Provider Software and/or the Third Party Software than the Standard Licence Terms. ]12

17.7.  [The Service Provider shall deliver to the Authority the Specially Written Software in both Source Code and binary code forms [within five (5) Business Days of [specify]] [and shall provide updates of the Source Code on each new release of the Specially Written Software] [or specify period] on media that is reasonably acceptable to the Authority.]]

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10 Guidance:  This clause will not be necessary in all cases.  It depends on the nature of the project and the extent to which the Service Provider can utilise past work to develop the Database.  If it is required, the clause recognises that the Database will contain Background IPRs that are not specially developed for the Authority.  The Authority will require a licence if it wishes to use and commercially exploit its database rights. The licence in clause 16.4 is drafted on the basis that it needs to be broad enough not to hinder the use of the Database which is owned by the Authority.  Careful consideration must be given so that this licence is as broad or narrow as it needs to be for the intended use of the Contractor's Background IPRs.

11  Guidance:  The licence granted back by the Authority to the Service Provider is narrower than those granted by the Service Provider to the Authority in clause 15.  The Service Provider may want a wider licence and the Authority will need to consider this in relation to its likely use of the Project Specific IPRs and Specially Written Software.  The Service Provider may also argue that it has not recouped all of its investment costs in the IPRs it has developed for the Authority and therefore should not pay for the licence.  The Authority will want to consider the extent to which the Service Provider will be able to recoup its capital if it was permitted to commercially exploit the IPRs and, therefore, whether some payment to the Authority is justified.

12  Guidance:  This clause will only be relevant where there is Specially Written Software that is to be owned by the Authority.  The clause recognises that Specially Written Software will contain Background IPRs or software components (routines or code that the Service Provider uses for other software that it has developed itself or which have been taken from software "libraries") that is not specially written but is a building block used in the Specially Written Software and that the Authority will require a licence if it wishes to use and commercially exploit such IPRs. Very often standard software products are customised using tools that are part of the package.  The proviso to clause 17.6 makes it clear that it is not intended for the Authority to acquire extensive rights over the basic proprietary product just because the Specially Written Software interoperates with it. The licence in clause 17.6 is drafted on the basis that it needs to be broad enough not to hinder the use of the Specially Written Software which is owned by the Authority.  Careful consideration must be given so that this licence is as broad or narrow as it needs to be for the intended use of the Background IPRs and the software components integral to the Specially Written Software.