Set out below are explanations of the definitions of the various categories of IP likely to be needed.
33.2.1 Intellectual Property Rights: this definition should be broad and non-exhaustive. It is common to list the types of IPR included e.g. "patents, rights to inventions, trademarks, service marks, trade names and domain names, rights to sue for passing off, unfair competition rights, copyright, database rights, rights in a design, know-how, confidential information" as well as including a 'sweep-up statement' such as "and all or any other intellectual or industrial property rights". Any goodwill relating or attached to the IPR should also be caught. Although it is not necessary to include rights in computer software because they are not really separate IPR (as software is currently protectable in the UK by copyright and in some other countries by patents), it is common to list it as a separate IPR to focus the attention of the parties on its inclusion. Moral rights should not be included in the definition of IPR as they cannot be assigned or licensed. Moral rights can only be waived. A clause waiving moral rights should therefore be included. The definition should cover registered and unregistered IPR, applications and rights to apply for ,and extensions and renewals of, IPR. It should also cover equivalent rights which subsist or will subsist in the future anywhere in the world so that any new IPRs created after the Contract has commenced will also be caught. The definition of IPRs should be generic (i.e. not linked to any particular party) because it is used in relation to the Authority, the Contractor, the Contractor Related Parties and third parties.
33.2.2 Project: Usually the definition of the Project is quite broad and includes the provision of the Works and Services. However, it is worth considering whether there are other required deliverables / duties of the Contractor that are not caught by the definition of the Project when considering the IP
provisions.
Foreground IP
33.2.3 Design Data: This definition is intended to cover foreground IP and forms part of the definition of Project Data. Therefore, it should cover IP subsisting in or relating to all data, drawings, reports, documents, software etc relating to the design, construction, testing or operational elements of the Project that is acquired or created by the Contractor (or any Contractor Related Party) specifically for the purpose of the Project (see Clause 31.2 (d) (Contractor's Records and Provision of Information)). If Design Data is created by a Contractor Related Party specifically for the Project, the Contractor will need to get the IP in such Design Data assigned to it so that the Contractor owns the IP in such Design Data and is therefore free to assign or license it to the Authority.
33.2.4 Project Data: This definition is intended to cover foreground IP and includes Design Data. It also covers IP subsisting in or relating to any other materials, documents or data acquired or created by the Contractor (or any Contractor Related Party) specifically for the purpose of the Project (see Clause 31.2(d) (Contractor's Records and Provision of Information)). Generally, this definition covers data that is acquired or created regardless of whether it is actually used in the Project, but in some cases it may be appropriate to limit it so that the definition only includes data that is also used for the purpose of the Project. If Project Data is created by a Contractor Related Party specifically for the Project, the Contractor will need to get the Project Data assigned to it so that the Contractor owns the IP in such Project Data and is therefore free to assign or license it to the Authority.
Background IP
33.2.5 Authority Data: This definition is intended to cover the Authority's background IP. Therefore, it should cover all data, drawings, reports, documents, software etc which the Authority owns or is authorised to license or sub-license to the Contractor (or any Contractor Related Party), for use in the Project. For the IP licensed from third parties, the Authority will need to ensure that it has permission to grant a sub-licence to the Contractor. To avoid overlap between the definitions, it is wise to specifically exclude Project Data (which is foreground IP) from this definition.
33.2.6 Contractor Materials: This definition is intended to cover the Contractor's background IP. Therefore, it should cover IP subsisting in or relating to all data, drawings, reports, documents, software etc which the Contractor owns that will be used by the Contractor (or any Contractor Related Party) for the Project or to perform its obligations under the Contract and/or that the Authority may require to enjoy the Services. To avoid overlap between the definitions, it is wise to specifically exclude Project Data (which is foreground IP) from this definition.
33.2.7 Third Party Materials: This definition is intended to cover all third party's (including a Contractor Related Party's) background IP. Therefore, it should cover all data, drawings, reports, documents, software etc in which a third party (including a Contractor Related Party) owns the IP, that will be used by the Contractor (or any Contractor Related Party) for the Project or to perform its obligations under the Contract and/or that may be required by the Authority to enjoy the Services. To avoid overlap between the definitions, it is wise to specifically exclude Project Data (which is foreground IP) from this definition.