In practice, when the proponent opts for a licence, the parties are almost always able to obtain acceptable terms for an intellectual property licensing agreement resulting from the sponsored research. If it is not possible to reach an agreement, mediation or arbitration can sometimes be helpful. From time to time, despite these efforts, an agreement still cannot be reached within the agreed time frame. In this case, the university has the right to negotiate with third parties. If the university is able to agree with a third party on more favourable terms than those submitted to the promoter, the promoter has the right to accept such a licence, which is offered to a third party. But IP transfer agreements can also have their advantages. If you cede the intellectual property to a third party, you are no longer responsible for the product. This means that you generally cannot be sued for problems related to your IP and that they are not responsible for maintenance costs. Intellectual property transfer is generally more appropriate when you sell your business or leave a field altogether. In certain circumstances, a tacit IP licence is created without the existence of a formal licensing agreement, where the conduct of the parties indicates that the IP right holder wanted to license to the other party.
Courts often grant tacit licenses in cases where one party has produced, at the request of another, a copyrighted work under a contract that does not expressly confer copyright on the purchaser after the payment and conclusion of the work. While exclusive intellectual property licenses and intellectual property transfer agreements grant another person the exclusive exercise of that right in exchange for financial compensation, an exclusive license is much more limited than a transfer. If you assign an IP right to another person, you transfer it permanently and you had to buy it back so you could use it again. In the event that the parties fail to reach a mutually acceptable agreement within the negotiation period, the university is authorized to negotiate in good faith with one or more third parties a license for any intellectual property of the university and the university`s interest in shared intellectual property. After such negotiations and before a licence is granted to such a third party on terms more favourable than those proposed to the promoter, the university will propose to the promoter a licence on the same terms.
