Policy on Title to Intellectual Property Arising Under Crown Procurement Contracts

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Introduction

The primary objective of Crown Procurement Contracts is to receive the deliverables contracted for, and to be able to use those deliverables, and any Intellectual Property arising by the virtue of such Crown Procurement Contracts for Government of Canada activities. The Government of Canada's Contracting Policy further states that officials are to achieve best value for money and to seek the optimal balance of benefits to the Crown and the Canadian people through its purchases. As part of this commitment, the Government of Canada has made specific provisions for social and economic development objectives to be pursued through procurement.

One of the socio-economic objectives pursued through Crown Procurement Contracts is the commercialization of Intellectual Property by the private sector to create jobs and generate economic growth. The revised policy on Title to Intellectual Property Arising Under Crown Procurement Contracts sets out a framework for the Intellectual Property arising by virtue of such Crown Procurement Contracts to be vested in the Contractor, while ensuring the Crown's ability to use the deliverables contracted for and the Intellectual Property for all Government of Canada activities, including future contracts and procurements, and to protect the broader public interest.

While this policy provides for specific exceptions for the Crown to take title to Intellectual Property arising under Crown Procurement Contracts, other circumstances in the public interest may, from time to time, warrant the Crown taking title to Intellectual Property beyond the exceptions cited under Section 6. In these circumstances, Responsible Departments are required to seek and obtain prior approval from the Treasury Board.

Underlying Principles

The Government of Canada's primary objective in entering into Crown Procurement Contracts is to receive the deliverables contracted for, and to be able to use those deliverables, and any Intellectual Property arising by the virtue of such Crown Procurement Contracts for Government of Canada activities.

The Government of Canada has an overall objective of promoting economic growth and job creation in Canada and has made specific provision for social and economic development objectives to be pursued through procurement.

The Government of Canada believes that Commercial Exploitation of Intellectual Property contributes to economic growth and job creation.

The Government of Canada believes that Commercial Exploitation of Intellectual Property is best achieved by the private sector.

1. Policy Objective

The objective of this policy is to increase the potential for Commercial Exploitation of Intellectual Property developed by a Contractor in the course of a Crown Procurement Contract by having the ownership of such property vest with the Contractor, subject to "exceptions" set out in Section 6.

2. Authority

The authority for this policy is found in Section 7(1) (a) of the Financial Administration Act.

3. Application of the Policy

3.1 This policy applies to all Departments, unless specifically exempted by an Act of Parliament or by Treasury Board.

3.2 This policy applies to Intellectual Property that arises by virtue of a Crown Procurement Contract and that is developed by the Contractor.

3.3 This policy does not affect existing ownership rights of the Crown, the Contractor, or a third party of their respective Background.

3.4 This policy does not affect Intellectual Property ownership rights between the Contractor and any of its subcontractors, except that the Contractor shall be required to obtain from its sub-contractors those ownership or licence rights that the Contractor agrees, in the Crown Procurement Contract, to provide to the Crown.

3.5 This policy does not apply to the ownership of, or the right to use, any trademarks or trade names.

3.6 This policy does not apply to personal information as defined under the Privacy Act (R.S.C.) c. P-21, nor to Foreground in any compilation or database, containing personal information or Crown-supplied information if that Foreground cannot be exploited without using that personal information or Crown-supplied information.

3.7 This policy replaces and supersedes the Treasury Board policy entitled Title to Intellectual Property Arising under Crown Contracts (September 1991), as well as the Treasury Board Circulars dated October 30, 1991 and December 18, 1991.

4. Definitions

All defined terms in this policy shall have the meaning given in this section.

Background (Acquis) - all Intellectual Property that is not Foreground.

Commercial Exploitation (Exploitation commerciale) - any use, transformation and/or dissemination of the Foreground that generates, or is intended to generate, revenues.

Contracting Authority (Autorité contractante) - the appropriate Minister as defined in the Financial Administration Act, or the departmental corporation as defined in the Financial Administration Act , entering into a Crown Procurement Contract.

Contractor (Entrepreneur) - any party or parties, collectively, to a Crown Procurement Contract not defined as the Crown.

Crown (État ou Sa Majesté) - Her Majesty the Queen in Right of Canada, including departmental corporations as defined in the Financial Administration Act.

Crown Procurement Contract (Marché d'acquisition de l'État) - an agreement between the Crown and a Contractor for the acquisition by, or provision to, the Crown of good(s) and/or service(s).

Department (Ministère) - department as defined in the Financial Administration Act.

Deputy Head (Sous-ministre) - the deputy head, the chairperson, the president or other chief executive officer of a Responsible Department and, except in Section 10, any person having the appropriate capacity to act on her or his behalf.

Foreground (Élément original) - all Intellectual Property first conceived, developed, produced or reduced to practice as part of the work under a Crown Procurement Contract.

Intellectual Property (Propriété intellectuelle) - for the purposes of this policy, any rights resulting from intellectual activity in the industrial, scientific, literary, or artistic fields including all intellectual creation legally protected through patents, copyright, industrial design, integrated circuit topography, and plant breeders' rights, or subject to protection under the law as trade secrets and confidential information. Intellectual Property does not include prototypes or any other physical embodiments of intellectual creation when such physical embodiments are deliverables of a Crown Procurement Contract.

Responsible Department (Ministère responsable) - the Department of the Contracting Authority or, when the good(s) and/or service(s) being acquired under the Crown Procurement Contract are for another Department, that Department.

5. General Procedures on the Title to Intellectual Property Arising under Crown Procurement Contracts

5.1 It is the policy of the Government of Canada that the Contractor be the owner of any Foreground created by the Contractor arising by virtue of a Crown Procurement Contract, subject to "Exceptions" as set out in Section 6.

5.2 The Crown may require a royalty-free licence to have the right to use, or have used by a third party, the Foreground owned by the Contractor for Government of Canada activities. The right to use the Foreground could include, without being limited to, the right to manufacture, reproduce and modify.

5.3 The Crown may require Commercial Exploitation of the Foreground in Canada and/or within a specific period of time, to the extent that the requirement is consistent with Canada's trade agreement obligations. The detailed requirements can be specified in the contract or in a separate agreement between the Crown and the Contractor.

5.4 When the Contractor will own the Foreground, the Contracting Authority should:

5.4.1 in a competitive bidding situation, indicate in the solicitation documents the fact that the Contractor will own the Foreground and, if any, the terms of the licence required by the Crown, and, if any, the requirements for commercialization in Canada and/or within a certain time frame;

5.4.2 in the case of sole source contracting, indicate to the Contractor, in writing, in advance of negotiations with the Contractor, the fact that the Contractor will own the Foreground and, if any, the terms of the licence required by the Crown, and, if any, the requirements for commercialization in Canada and/or within a certain time frame.

5.5 In instances where the Crown owns the Foreground as set out in Section 6, the Crown may require that the Contractor provide, at the Crown's expense, any reasonable assistance to enable the Crown to seek and secure Intellectual Property rights in the Foreground.

6. Exceptions to Contractor Ownership

Under the Crown Procurement Contract, the Crown may own the Foreground for the following reasons:

6.1 national security;

6.2 where statutes, regulations, or prior obligations of the Crown to a third party or parties preclude Contractor ownership of the Foreground;

6.3 when the Contractor declares in writing that he/she is not interested in owning the Foreground;

6.4 where the main purpose of the Crown Procurement Contract, or of the deliverables contracted for, is:

6.4.1 to generate knowledge and information for public dissemination;

6.4.2 to augment an existing body of Crown Background as a prerequisite to the transfer of the augmented Background to the private sector, through licensing or assignment of ownership (not necessarily to the original Contractor), for the purposes of Commercial Exploitation;

6.4.3 to deliver a component or subsystem that will be incorporated into a complete system at a later date (not necessarily by the original Contractor), as a prerequisite to the planned transfer of the complete system to the private sector (not necessarily to the original Contractor), through licensing or assignment of ownership, for the purposes of Commercial Exploitation.

6.5 where the Foreground consists of material subject to copyright, with the exception of computer software and all documentation pertaining to that software.

7. Procedures for the Use of Exceptions

7.1 When the Crown intends to own the Foreground by invoking an exception in Section 6 of the Policy, the Contracting Authority should:

7.1.1 in a competitive bidding situation, indicate in the solicitation documents the fact that the Crown will own the Foreground or, where relevant, the specific components of the Foreground that the Crown will own, and set out the exception being invoked; or,

7.1.2 in the case of sole source contracting, indicate to the Contractor, in writing, in advance of negotiations with the Contractor, the fact that the Crown will own the Foreground or, where relevant, the specific components of the Foreground that the Crown will own, and set out the exception being invoked.

7.2 The Crown may take ownership of the Foreground when the bidder or potential Contractor chooses not to own the Foreground and makes a declaration in writing to that effect.

8. Treasury Board Exemption

8.1 The Crown may take ownership of Intellectual Property in circumstances where it is justified but not provided for in Section 6, and the Responsible Department has sought and obtained Treasury Board approval for such an exemption.

9. Licensing of Crown Intellectual Property

9.1 In the event that the Crown takes ownership of the Foreground, the Crown should not unreasonably refuse to grant a licence to the Contractor for the Contractor's use of the Foreground. The Contractor should make a request in writing for such a licence no later than 30 working days following the completion of the Contract. The Crown shall respond, in writing, to any request for such a licence within a reasonable period of time after receiving the request in writing. If such a request is refused, the Crown's response must provide an explanation for the refusal.

9.2 When the Crown takes ownership of the Foreground through the use of exceptions described in Sections 6.4.2 or 6.4.3, and in the event that the Crown grants (not necessarily to the original contractor(s)) a licence for the Foreground, other than a licence granted as part of the transfer of the final product or complete system to the private sector, the licence granted must be royalty-free. When the Crown takes ownership through the use of any other exception, the Crown may require royalties for the licence.

9.3 The Crown may grant a licence to the Contractor for the Contractor's use of the Crown's Background, when the Crown's Background is required to use or commercialize the Foreground. The Crown shall respond in writing to any request for such licence within a reasonable period of time after receiving the written request. If such a request is refused, the Crown's response must provide explanation for the refusal.

10. Supervision of Policy Implementation

10.1 Deputy Heads are accountable for the implementation of this policy.

10.2 Deputy Heads must ensure that adequate resources are allocated to the orientation and training of their personnel in the implementation of the policy, and to ensure that reporting responsibilities under this policy are met.

10.3 For the purpose of monitoring the application of the policy as set out in Section 11 of this Policy, the Contracting Authority should maintain a record of all Crown Procurement Contracts valued over the threshold for solicitation of bids as set out in the Government Contracts Regulations, and specify the contracts that provide for Contractor-owned Foreground, the contracts that provide for Crown-owned Foreground, and the exception(s) invoked, other than Section 6.5.

N.B.: Because Section 6.5 does not, itself, provide for Crown ownership of Foreground related to computer software and its documentation, if the Crown is to own such Foreground by invoking an exception set out in Sections 6.1, 6.2, 6.3 and 6.4, the Contracting Authority should record which of those exceptions is being invoked.

10.4 Contracting Authorities are responsible to ensure that solicitation documents and Crown Procurement Contracts are consistent with this policy. However, Responsible Departments remain responsible for decisions regarding the ownership of Foreground. The model clauses provided in Appendix A reflect the objectives and intent of the policy and could be used in Crown Procurement Contracts.

11. Evaluation and Monitoring

11.1 Industry Canada and the Treasury Board Secretariat will be responsible for monitoring the application of the policy, with a focus on cases where exceptions were invoked.

11.2 Industry Canada and the Treasury Board Secretariat will be responsible for an interdepartmental evaluation of the policy in the third year following its coming into force. Such evaluation will examine, among other things, the factors that affected the process of implementation and management of the policy and its impacts, both intended and unintended, upon the Contractors and the Crown.


Appendix A

Table of Contents for Appendix A

Notes on Context

Contractor Owns

Crown Owns

In preparing the Model Clauses, based on existing PWGSC terms, it has been necessary to rely on certain defined terms which have application in our contracts beyond the scope of the IP terms alone. We have used the defined terms Contractor, Minister, Work, Contract, Subcontract, and Canada (and their derivatives) in these Model Clauses but have not incorporated these definitions in the Model Clauses themselves, to avoid conflict with definitions of the same or similar terms that may already be in use in Departments' existing contract terms. Depending on how a department structures its contract documents, it may be necessary to specify how the definitions in the IP terms and the those in the rest of the contract apply. PWGSC's definitions of these terms are included below, and are drawn from its General Conditions DSS-MAS 9624.

Additionally, one must be aware that the Model Clauses do no represent complete contract terms. Thus, there are provisions in other elements of PWGSC's standard terms that are assumed to be a common element of Departments' contracting practices. These are not included as they are provisions which apply to more than just the IP terms of a contract. Among the supporting provisions that may be needed to give the Model Clauses full effect are those dealing with subcontracting, termination for default, title to the non-IP elements of the deliverables, security and protection of the work, inspection, survival. In PWGSC practice these are incorporated in General Conditions which form the backbone of the contracts the IP terms are used in.

The order of precedence of documents is an issue that must be considered carefully in integrating IP terms into existing contract documents. As the practice may vary widely in different departments, and even in differing contracting areas within a department, terms specifying precedence of documents have not been included.

DEFINITIONS (used in, but not contained in, Model Clauses)

"Canada", "Crown", "Her Majesty" or "the Government" means Her Majesty the Queen in right of Canada;

"Contract" means the written agreement between the Parties, these general conditions, any Supplemental General Conditions specified in the written agreement, and every other document specified or referred to in any of them as forming part of the Contract, all as amended by agreement of the Parties from time to time;

"Contractor" means the person or entity whose name appears on the signature page of the written agreement and who is to supply goods or services to Canada under the Contract;

"Minister" means the Minister of Public Works and Government Services and any other person duly authorized to act on behalf of that Minister;

"Subcontract" includes a Contract let by any subcontractor at any tier for the performance or supply of a part of the Work, and includes a purchase referred to in paragraph 2(a) of section 07 at any such tier, and the derivatives of the word shall be construed accordingly;

"Work" means the whole of the activities, services, materials, equipment, Software, matters and things required to be done, delivered or performed by the Contractor in accordance with the terms of the Contract.

Remarks: This set is intended for normal use where a contractor will be building on a substantial body of the contractor's background, but is not creating what amounts to a completely new product for the Crown. However, it should be noted that no description of the type of contract where this set might be expected to be used should drive the choice of terms, but rather it should be the Responsible Department's need for specific rights. An alternative, broader background licence is included in the package for use in appropriate circumstances.

Contractor to Own Intellectual Property Rights in Foreground Information

01 Interpretation
02 Disclosure of Foreground Information
03 Contractor to Own Intellectual Property Rights in Foreground Information
04 License to Intellectual Property Rights in Foreground Information
05 License to Intellectual Property Rights in Background Information
06 Right to License
07 Transfer of Intellectual Property Rights in Foreground Information
08 Sale, Assignment, Transfer or Licensing of Intellectual Property Rights in Foreground Information
09 Access to Information; Exception to Contractor Rights
10 Waiver of Moral Rights

01 Interpretation

1. In the Contract,

"Background Information" means all Technical Information that is not Foreground Information and that is proprietary to or the confidential information of the Contractor, its Subcontractors or any other supplier of the Contractor;

"Commercial Exploitation in Competition with the Contractor" does not include exploitation by Canada or by any contractor where the good or service produced through such exploitation is for end use by Canada, nor does it include dissemination or distribution by Canada to persons or to other governments at or below cost of any good or service delivered under the Contract or produced through such exploitation;

"Firmware" means any computer program stored in integrated circuits, read_only memory or other similar devices;

"Foreground Information" means any Invention first conceived, developed or reduced to practice as part of the Work under the Contract and all other Technical Information conceived, developed or produced as part of the Work under the Contract;

"Intellectual Property Right" means any intellectual property right recognized by the law, including any intellectual property right protected through legislation (such as that governing patents, copyright, industrial design, integrated circuit topography, or plant breeders' rights) or arising from protection of information as a trade secret or as confidential information;

"Invention" means any new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement in any art, process, machine, manufacture or composition of matter, whether or not patentable;

"Software" means any computer program whether in source or object code (including Firmware), any computer program documentation recorded in any form or upon any medium, and any computer database, and includes modifications to any of the foregoing;

"Technical Information" means all information of a scientific, technical, or artistic nature relating to the Work, whether oral or recorded in any form or medium and whether or not subject to copyright, including but not limited to any Inventions, designs, methods, processes, techniques, know-how, models, prototypes, patterns, samples, schematics, experimental or test data, reports, drawings, plans, specifications, photographs, collections of information, manuals and any other documents, and Software. Technical Information does not include data concerned with the administration of the Contract by Canada or the Contractor, such as internal financial or management information, unless it is a deliverable under the Contract.

02 Disclosure of Foreground Information

1. The Contractor shall promptly report and fully disclose to the Minister all Foreground Information that could be Inventions, and shall report and fully disclose to the Minister all other Foreground Information not later than the time of completion of the Work or such earlier time as the Minister or the Contract may require.

2. The Contractor shall, in each disclosure under this section, indicate the names of all Subcontractors at any tier, if any, in which Intellectual Property Rights to any Foreground Information have vested or will vest.

3. Before and after final payment to the Contractor, the Minister shall have the right to examine all records and supporting data of the Contractor which the Minister reasonably deems pertinent to the identification of Foreground Information.

03 Contractor to Own Intellectual Property Rights in Foreground Information

1. Subject to subsection 3 and section 07 (Transfer of Intellectual Property Rights in Foreground Information ), and without affecting any Intellectual Property Rights or interests therein that have come into being prior to the Contract or that relate to information or data supplied by Canada for purposes of the Contract, all Intellectual Property Rights in the Foreground Information shall immediately, as soon as they come into existence, vest in and remain the property of the Contractor.

2. Notwithstanding the Contractor's ownership of the Intellectual Property Rights in Foreground Information that is a prototype, model or custom or customized system or equipment together with associated manuals and other operating and maintenance documents and tools, Canada shall have unrestricted ownership rights in those deliverables, including the right to make them available for public use, whether for a fee or otherwise, and, except in the case of Software that is not necessary for the operation of the prototype, model or system or equipment, the right to sell them.

3. (i) Where the Work under the Contract involves the preparation of a database or other compilation using information or data supplied by Canada or personal information referred to in paragraph (ii), then the Intellectual Property Rights that shall vest under subsection 1 shall be restricted to the Intellectual Property Rights in Foreground Information that is capable of being exploited without the use of the information or data supplied by Canada or such personal information. All Intellectual Property Rights in any database or other compilation, the Foreground Information in which cannot be exploited without the use of such information, data, or personal information, shall vest in Canada. The Contractor agrees that it shall not use or disclose any such information or data or personal information for any purpose other than completing the Work under the Contract, and shall not dispose of it except by returning it to Canada. The Contractor shall comply with the General Conditions of the Contract in regard to maintaining the confidentiality of such information, data or personal information. Unless the Contract otherwise expressly provides, the Contractor shall deliver to Canada all such information, data or personal information, together with every copy, draft, working paper and note thereof that contains such information, data, or personal information, upon the completion or termination of the Contract or at such earlier time as the Minister may require.

(ii) Notwithstanding subsection 1, if the Work under the Contract involves the collection of personal information as that term is defined in the Privacy Act (R.S.C., c. P-21), then all Intellectual Property Rights in and title to that personal information shall, immediately upon the collection of it by the Contractor, vest in Canada, and the Contractor shall have no right or interest in it.

04 License to Intellectual Property Rights in Foreground Information

1. In consideration of Canada's contribution to the cost of development of the Foreground Information, the Contractor hereby grants to Canada a non-exclusive, perpetual, irrevocable, world-wide, fully-paid and royalty-free license to exercise all Intellectual Property Rights in the Foreground Information that vest in the Contractor pursuant to section 03, for any public purpose except Commercial Exploitation in Competition with the Contractor. Canada's license to the Intellectual Property Rights in the Foreground Information also includes the right to disclose the Foreground Information to other governments for information purposes only. The Intellectual Property Rights arising from any modification, improvement, development or translation of the Foreground Information that is effected by or for Canada in the exercise of this license shall vest in Canada, or in such person as Canada shall decide.

2. The Contractor acknowledges that Canada may wish to award contracts for any of the purposes contemplated in subsection 1 and that such contract awards may follow a competitive process. The Contractor agrees that Canada's license in relation to the Intellectual Property Rights in the Foreground Information that vest in the Contractor pursuant to section 03, includes the right to disclose the Foreground Information to bidders for such contracts, and to sub-license or otherwise authorize the use of that information by any contractor engaged by Canada solely for the purpose of carrying out such a contract. Canada shall require the bidder or the contractor not to use or disclose any Foreground Information except as may be necessary to bid for or to carry out that contract.

3. For greater certainty and without limiting the generality of subsections 1 and 2, Canada's right to modify, improve, translate, reproduce or further develop any Foreground Information pursuant to subsections 1 and 2:

(a) applies to Foreground Information that is Software, notwithstanding any terms to the contrary delivered by the Contractor with any deliverable, including the wording on any shrink-wrapped license attached to any deliverable; and

(b) includes the right to reproduce and use Foreground Information that is Software, or any modified or improved or translated or further developed form of it, on any and all computer systems owned, leased or operated by Canada anywhere in the world.

4. Notwithstanding subsections 1,2, and 3, if any Foreground Information arises solely from correction by the Contractor of errors in Background Information that is Software, or from minor modifications made by the Contractor to such Software, then the license set out in subsections 1, 2 and 3 shall not apply to that Foreground Information and, unless otherwise agreed, the license that applies to such Background Information shall apply to that Foreground Information.

5. Where the Intellectual Property Rights in any Foreground Information are or will be owned by a Subcontractor at any tier, the Contractor shall either obtain a license from that Subcontractor that permits compliance with subsections 1, 2 and 3 or arrange for the Subcontractor to convey directly to Canada the same rights by execution of the form provided for that purpose by the Minister, in which case the Contractor shall deliver that form to the Minister, duly completed and executed by the Subcontractor, no later than the time of disclosure to Canada of that Foreground Information.

6. If the Contractor wishes to make use of any Canada-owned information that was supplied for purposes of the Contract, for the commercial exploitation or further development of any of the Foreground Information, then the Contractor may make a written request for a license to exercise the required Intellectual Property Rights in that Canada-owned information, to the minister for whose department or agency the Work is being or was carried out. The Contractor shall give that minister an explanation as to why such a license is required. That minister shall respond in writing to the request within a reasonable period of time. If the request is refused, the response shall provide an explanation for the refusal. Should that minister agree to grant such a license, it shall be on terms and conditions to be negotiated between the Contractor and that minister. It is understood that those terms may include payment of compensation to Canada.

7. The Contractor may apply to the minister for whose department or agency the Work is being or was carried out for a license to commercially exploit a translation of the Foreground Information which is effected by or for Canada, subject to the same restrictions and obligations as apply under the Contract to commercial exploitation of the Foreground Information that was translated. Any such license shall be on terms and conditions to be negotiated between the Contractor and that minister. It is understood that those terms may include payment of compensation to Canada.

05 License to Intellectual Property Rights in Background Information

1. Without restricting the scope of any licence to exercise the Intellectual Property Rights in the Background Information that Canada may otherwise hold, the Contractor hereby grants to Canada a non-exclusive, perpetual, irrevocable, world-wide, fully-paid and royalty-free license to exercise such of the Intellectual Property Rights in any Background Information incorporated into the Work or necessary for the performance of the Work as may be required for the following purposes:

(a) for the use, operation, maintenance, repair or overhaul of the Work;

(b) in the manufacturing of spare parts for maintenance, repair or overhaul of any custom part of the Work by Canada if those parts are not reasonably available to enable timely maintenance, repair or overhaul;

(c) for disclosure to any contractor engaged by Canada (or bidder for such a contract) to be used solely for a purpose set out in paragraph (a) or (b), but only if the Contractor is unable or unwilling to carry out the maintenance, repair or overhaul or provide the spare parts on reasonable commercial terms and within reasonable delivery times;

and the Contractor agrees to make any such Background Information (including, in the case of Software, source code) promptly available to Canada for any such purpose.

2. Without restricting the scope of any licence to exercise the Intellectual Property Rights in the Background Information that Canada may otherwise hold, the Contractor hereby further grants to Canada a non-exclusive, perpetual, irrevocable, world-wide, fully-paid and royalty-free license to exercise such of the Intellectual Property Rights in the Background Information incorporated into the Work or necessary for the performance of the Work as are necessary in order for Canada to modify, improve or further develop the Foreground Information. Canada's rights under this subsection 2 shall not include the right to reproduce the whole or part of any deliverable under the Contract that does not incorporate Foreground Information, save that Canada may reproduce any drawings, plans, designs, or other Background Information that are subject to copyright or industrial design protection, for purposes of modification, improvement or further development of the Foreground Information by or for Canada. The Contractor agrees to make any such Background Information (including, in the case of Software, source code) promptly available to Canada for any such purpose.

3. Notwithstanding subsections 1 and 2, the license set out therein shall not apply to any Software that is subject to detailed license conditions that are set out elsewhere in the Contract.

4. The Contractor acknowledges that, subject to paragraph (c) of subsection 1, Canada may wish to award contracts for any of the purposes contemplated in subsections 1 and 2 and that such contract awards may follow a competitive process. The Contractor agrees that Canada's license in relation to the Intellectual Property Rights in Background Information includes the right to disclose the Background Information to bidders for such contracts, and to sub-license or otherwise authorize the use of that information by any contractor engaged by Canada solely for the purpose of carrying out such a contract. Canada shall require bidders and the contractor not to use or disclose any Background Information except as may be necessary to bid for or to carry out that contract.

5. Where the Intellectual Property Rights in any Background Information are owned by a Subcontractor at any tier, the Contractor shall either obtain a license from that Subcontractor that permits compliance with subsections 1 and 2 or arrange for the Subcontractor to convey directly to Canada the same rights by execution of the form provided for that purpose by the Minister, in which case the Contractor shall deliver that form to the Minister, duly completed and executed by the Subcontractor, no later than the time of disclosure to Canada of that Background Information.

06 Right to License

The Contractor represents and warrants that the Contractor has, or the Contractor undertakes to obtain, the right to grant to Canada the license to exercise the Intellectual Property Rights in the Foreground Information and the Background Information as required by the Contract.

07 Transfer of Intellectual Property Rights in Foreground Information

1. Until the Contractor completes the Work and discloses all of the Foreground Information in accordance with section 02 (Disclosure of Foreground Information), the Contractor shall not, without the prior written permission of the Minister, sell, assign or otherwise transfer title to the Intellectual Property Rights in any Foreground Information, or license or otherwise authorize the use of the Intellectual Property Rights in any of the Foreground Information by any person.

2. If Canada terminates the Contract in whole or in part for default, or if the Contractor fails to disclose any Foreground Information in accordance with section 02, the Minister may, by notice given not later than 90 days from the date of termination or from the date Canada learns of the failure to disclose, as the case may be, require the Contractor to convey to Canada all of the Intellectual Property Rights in the Foreground Information or, in the case of a notice based on failure to disclose, all of the Intellectual Property Rights in the Foreground Information not disclosed. In the case of either notice, the rights to be conveyed shall include the Intellectual Property Rights in any Foreground Information that have vested or are to vest in a Subcontractor at any tier. In the case of Intellectual Property Rights in Foreground Information which have been sold or assigned to a party other than a Subcontractor at any tier, the Contractor shall not be obligated to convey rights to Canada in accordance with this subsection, but shall pay to Canada on demand an amount equal to the consideration which the Contractor received from the sale or assignment of the Intellectual Property Rights in that Foreground Information or, in the case of a sale or assignment that was not at arm's length, the fair market value of the Intellectual Property Rights in that Foreground Information, in each case including the value of future royalties or license fees.

3. In the event of the issuance by the Minister of a notice under subsection 2, the Contractor shall, at its own expense and without delay, execute such conveyances or other documents relating to title to the Intellectual Property Rights as the minister for whose department or agency the Work is being or was carried out may require, and the Contractor shall, at Canada's expense, afford that minister all reasonable assistance in the preparation of applications and in the prosecution of any applications for, or any registration of, any Intellectual Property Right in any jurisdiction, including without limitation the assistance of the inventor in the case of Inventions.

08 Sale, Assignment, Transfer or Licensing of Intellectual Property Rights in Foreground Information

1. In any sale, assignment, transfer or license of Intellectual Property Rights in Foreground Information by the Contractor except a sale or license for end use of a product based on Foreground Information, the Contractor shall impose on the other party all of its obligations to Canada in relation to the Intellectual Property Rights in the Foreground Information and any restrictions set out in the Contract on the use or disposition of the Intellectual Property Rights in the Foreground Information (and, if applicable, the Foreground Information), including the obligation to impose the same obligations and restrictions on any subsequent transferee, assignee or licensee.

2. The Contractor shall promptly notify Canada of the name, address and other pertinent information in regard to any transferee, assignee or licensee referred to in subsection 1, and shall ensure that such party is required to do the same with regard to any subsequent transferee, assignee or licensee.

3. The Contractor shall not charge or permit any person to charge a royalty or other fee to Canada in respect of the Intellectual Property Rights in any Foreground Information for purposes of a contract or other arrangement with Canada. Where the contract or other arrangement is for a product based on Foreground Information or on any modification or improvement thereof, the Contractor shall grant to Canada a reasonable credit against its commercial price for that product to take into account Canada's financial contribution toward the development of the product, and in the case of a product owned by a transferee, assignee or licensee of the Intellectual Property Rights in any Foreground Information, the Contractor shall ensure that such party is required to do the same.

09 Access to Information; Exception to Contractor Rights

1. Subject to the Access to Information Act, R.S.C., c. A-1 and to any right of Canada under the Contract, Canada shall not release or disclose outside the Government of Canada any information delivered to Canada under the Contract that is confidential information or a trade secret of the Contractor or a Subcontractor.

2. Notwithstanding subsection 1, nothing in these terms and conditions shall be construed as limiting Canada's right to exercise the Intellectual Property Rights in any Foreground Information or any Background Information, or to disclose any Foreground Information or any Background Information, to the extent that such information:

(a) is or becomes in the public domain, or to the extent that the Contractor does not benefit from or ceases to benefit from any intellectual property rights protection for such information under legislation or at law (other than under the terms of the Contract), for any reason including as a result of Canada's use or disclosure of deliverables under the Contract for any purpose whatever that is not expressly excluded under the Contract;

(b) is or becomes known to Canada from a source other than the Contractor, except from any source that is known to Canada to be under an obligation to the Contractor not to disclose the information;

(c) is independently developed by or for Canada; or

(d) is disclosed under compulsion of a legislative requirement or any order of a court or other tribunal having jurisdiction.

10. Waiver of Moral Rights

1. The Contractor shall obtain a written permanent waiver of moral rights (as this term is defined in the Copyright Act, R.S.C., c. C-42), in a form acceptable to the Minister, from every author that contributes to any Foreground Information which is subject to copyright protection and which is deliverable to Canada under the terms of the Contract. At the request of the Minister (be it at the completion of the Work or at any other time as the Minister may require), the Contractor shall provide the written waiver(s) of moral rights to the Minister.

2. If the Contractor is an author of the Foreground Information referred to in subsection 1, the Contractor hereby permanently waives the Contractor's moral rights in that Foreground Information.

Alternative Background Licence (Broader)

Remarks: This clause is intended for use where the contractor is engaged to, essentially, produce a new product and where the Responsible Department has determined that it wishes to have a broader licence to the contractor's background to allow for further development of that product, including, possibly, production of it for Canada's use. It should be noted, however, that no description of the type of contract where this clause might be expected to be used should drive the choice to use this clause, but rather the Responsible Department's need for specific rights.

Broader License to the Intellectual Property Rights in the Background Information (Contractor Owns)

Where the Contracting Authority is of the view that Canada requires a broader license under the Contract to use the Background Information:

A) replace Section 05, License to Intellectual Property Rights in Background Information, of the "Contractor to Own Intellectual Property Rights in Foreground Information" terms and conditions by the following:

05 License to Intellectual Property Rights in Background Information

1. Without restricting the scope of any licence to exercise the Intellectual Property Rights in the Background Information that Canada may otherwise hold, the Contractor hereby grants to Canada a non-exclusive, perpetual, irrevocable, world-wide, fully-paid and royalty-free license to exercise such of the Intellectual Property Rights in any Background Information incorporated into the Work or necessary for the performance of the Work as may be required in order for Canada to exercise its license in the Intellectual Property Rights in the Foreground Information. The Contractor agrees to make any such Background Information (including, in the case of Software, source code) promptly available to Canada for any such purpose.

2. The Contractor acknowledges that Canada may wish to award contracts for any of the purposes contemplated in subsection 1 and that such contract awards may follow a competitive process. The Contractor agrees that Canada's license in relation to the Intellectual Property Rights in Background Information includes the right to disclose the Background Information to bidders for such contracts, and to sub-license or otherwise authorize the use of that information by any contractor engaged by Canada solely for the purpose of carrying out such a contract. Canada shall require bidders and the contractor not to use or disclose any Background Information except as may be necessary to bid for or to carry out that contract.

3. Where the Intellectual Property Rights in any Background Information are owned by a Subcontractor at any tier, the Contractor shall either obtain a license from that Subcontractor that permits compliance with subsections 1 and 2 or arrange for the Subcontractor to convey directly to Canada the same rights by execution of the form provided for that purpose by the Minister, in which case the Contractor shall deliver that form to the Minister, duly completed and executed by the Subcontractor, no later than the time of disclosure to Canada of that Background Information.

4. Notwithstanding subsection 1, the license set out therein shall not apply to any Software that is subject to detailed license conditions that are set out elsewhere in the Contract.

B) replace subsection 10(1) in the "Waiver of Moral Rights" Section of the "Contractor to Own Intellectual Property Rights in Foreground Information" terms and conditions by the following:

1. The Contractor shall provide to Canada, at the completion of the Work or at such other time as the Minister may require, a written permanent waiver of moral rights (as this term is defined in the Copyright Act, R.S.C., c. C-42), in a form acceptable to the Minister, from every author that contributed to any Foreground Information which is subject to copyright protection and which is deliverable to Canada under the terms of the Contract.

Optional Clauses

These clauses are used in particular situations where needed, to modify the provisions of the Contractor Owns Set of IP terms.

Protection of Intellectual Property

Remarks: Add the following clause if the Contractor is to be required to protect its or Canada's interest in the intellectual property (usually where there is also a requirement to exploit the intellectual property in Canada).

The Contractor shall take reasonable measures to protect the Intellectual Property Rights in the Foreground Information, and in any case shall take at least the same measures as it takes in relation to other equivalent intellectual property owned by it.

Foreground Information - Confidentiality

Remarks: Add the following clause where the Contractor is to be required to keep Foreground Information confidential for a specific period of time following completion of the Contract. This clause would be suitable where Canada wishes to give the intellectual property rights to the Contractor but wishes to prevent publishing and to restrict disclosure of that information for a period of time for security or other reasons.

The Contractor, during the performance of the Contract and for a period of _____ months thereafter, shall keep confidential and shall not publish or otherwise disclose to any person any Foreground Information, except as may be necessary to carry out the Work under the Contract in which case the Contractor shall impose the same obligation of confidentiality on any person to whom the information is disclosed. The foregoing obligation does not apply to any Foreground Information where the same information is publicly available from a source other than Canada.

License to Canada's Information

Remarks: Add the following clause where the Crown is willing to give the Contractor access to information over and above any Canada owned Technical Information disclosed to the Contractor for purposes of carrying out the Contract. Where appropriate, replace "certain information" by a list of specific items.

If commercial exploitation or further development of the Foreground Information, the Intellectual Property Rights in which vest in the Contractor pursuant to section 03, reasonably requires the use of certain Canada-owned information other than that supplied to the Contractor for purposes of the Contract, Canada may provide the Contractor with a license for that purpose, on terms and conditions to be negotiated between the Contractor and the minister for whose department or agency the Work is being or was carried out and which terms and conditions may include the payment of compensation. The Contractor must set out its request for such a license in writing, with an explanation as to why the license is required. The minister for whose department or agency the work is being or was carried out shall respond in writing to the request within a reasonable period of time. If the Contractor's request is refused, the said minister's reply shall provide an explanation for the refusal.

Commercialization in Canada

IMPORTANT NOTE: The following clause, "Commercialization in Canada", must not be used in a contract for the procurement of goods or services which is subject to the procurement disciplines of either the World Trade Organization - Agreement on Government Procurement (WTO-AGP) or the North American Free Trade Agreement (NAFTA). It is recommended that Departments not publish or use this provision as a standard clause, and that they take appropriate measures to ensure that it is not used without specific legal advice. Any use of this provision which is not prohibited pursuant to the WTO-AGP or the NAFTA should be tailored to the specific circumstances of the situation as the clause may be difficult to enforce or may impose impractical restrictions on the Contractor's commercialization and thus may result in the Contractor failing to commercialize the IP. Furthermore, the use of the clause will require on-going monitoring by the Responsible Department.

Remarks: Use the following clause where the Contractor is to be required to exploit the intellectual property in the Foreground Information in Canada. With some deletions and minor changes, this clause can also be used to require commercial exploitation within a specified time, in Canada or elsewhere. See Legal Services about the advisability of including this clause.

1. In consideration of the Contractor receiving title to the Intellectual Property Rights in the Foreground Information, the Contractor agrees that manufacture of any product incorporating or derived from the Foreground Information will be done substantially in Canada and that the provision of any service incorporating or derived from the Foreground Information will be substantially from a base in Canada, and that such a product or such a service will be marketed and sold within _____ months after final payment under the Contract is made to the Contractor.

2. The Contractor shall have satisfied the obligation in subsection 1 in relation to any part of the Foreground Information if a product manufactured substantially in Canada or a service provided substantially from a base in Canada that incorporates or is derived from that part of the Foreground Information is being offered for general sale by the Contractor or its transferee, assignee or licensee, and at least one arm's-length sale has been made (other than a sale from a transferee, assignee or licensee to the Contractor, or vice-versa). The minister for whose department or agency the Work is being or was carried out may accept other evidence as demonstrating satisfaction of the obligation. When the obligation has been satisfied in relation to any part of the Foreground Information, the obligation shall cease to apply to that part of the Foreground Information.

3. If, ____ months before the end of the period specified in subsection 1, the obligation to market and sell a product or service as set out in that subsection has not yet been satisfied in relation to any part of the Foreground Information, the Contractor shall immediately submit to the minister for whose department or agency the Work is being or was carried out a report setting out:

(a) a description of the efforts that have been and will be made by the Contractor or its transferee, assignee or licensee to satisfy the obligation; and

(b) the reasons why the obligation has not been satisfied.

4. At the expiration of the period specified in subsection 1, if the minister for whose department or agency the Work is being or was carried out is satisfied that the Foreground Information is capable of commercial exploitation in Canada but that

(a) the Contractor (or its transferee, assignee or licensee) is incapable of achieving that; or

(b) the Contractor has not made every reasonable effort to fulfil the obligation;

then that minister may invoke either of the remedies set out in subsection 6. If that minister is satisfied that the potential value to Canada of commercial exploitation of the Foreground Information substantially in Canada so justifies, that minister may extend the time for the Contractor to fulfil the obligation by such period as that minister may decide. In any other circumstance, the obligation shall cease to apply to that part of the Foreground Information.

5. The Contractor agrees that any of the following, affecting any part of the Foreground Information, would constitute a breach of the Contractor's obligation entitling the minister to exercise, in relation to that part of the Foreground Information, the option to collect the liquidated damages provided for in the Contract for such a breach (if any), or, without prejudice to any other remedy that may be available at law or under the Contract, to exercise a remedy set out in subsection 6:

(a) the Contractor or any affiliate, subcontractor or agent of the Contractor manufactures outside Canada a product incorporating or derived from the Foreground Information without that product also being manufactured substantially in Canada, or provides from a base outside Canada a service incorporating or derived from the Foreground Information without that service also being provided substantially from a base in Canada;

(b) through the act or omission, whether direct or indirect, and whether deliberate or negligent, of the Contractor or its employee or subcontractor (including the sale or assignment of the Foreground Information or license or other authorization of the use of the Foreground Information), any person, corporation or other entity is enabled to manufacture outside Canada a product incorporating or derived from the Foreground Information without that product also being manufactured substantially in Canada, or to provide from a base outside Canada a service incorporating or derived from the Foreground Information without that service also being provided substantially from a base in Canada;

(c) the Contractor or its transferee or assignee, or a controlling interest in the Contractor or its transferee or assignee, is acquired by a person not resident in Canada or by a corporation or other entity controlled outside of Canada, and that person, corporation or other entity does not enter into an agreement with the minister for whose department or agency the Work is being or was carried out governing the use of the Foreground Information, promptly and before a breach described in paragraph (a) or (b) has occurred; or

(d) to the extent permitted by the laws of Canada or a Canadian province, the Contractor or its transferee or assignee becomes bankrupt or insolvent, makes an assignment for the benefit of creditors, or takes the benefit of any statute relating to bankrupt or insolvent debtors, or the Contractor, its transferee or assignee suffers the appointment against it of a receiver under a debt instrument or by a court, or an order is made or a resolution passed for the winding up of the Contractor, its transferee or assignee.

6. Where this subsection applies by virtue of subsection 4 or 5, the minister for whose department or agency the Work is being or was carried out may, by notice, either

(a) require the Contractor to assign or transfer to Canada at no cost the Intellectual Property Rights in the Foreground Information, or

(b) require the Contractor to provide to one or more persons, corporations or other entities specified by that minister at no cost a non-exclusive, perpetual, unconditional, irrevocable, world-wide, and royalty-free license permitting the commercial exploitation of the Intellectual Property Rights in the Foreground Information, including the right to further develop the Foreground Information and to own the Intellectual Property Rights in any such further development.

The Contractor agrees that it will promptly execute such conveyances or other documents relating to title or licensing as the said minister may require, and that it will afford that minister or a licensee, as the case may be, at that party's expense all reasonable assistance in the preparation of applications and in the prosecution of any application for registration of any Intellectual Property Rights in any jurisdiction arising out of the Foreground Information, including without limitation the assistance of the inventor in the case of Inventions.

7. In the event that a breach described in paragraph (a), (b) or (c) of subsection 5 occurs, in addition to all other remedies available to Canada at law or under the terms of the Contract, the Contractor shall upon demand account for and pay to Canada any net revenues earned by the Contractor as a result of the breach.

Liquidated Damages

Remarks: Use the following clause if the Contractor is to be liable for liquidated damages in the event that the Intellectual Property Rights in Foreground Information are exploited outside of Canada. If there will be more than one item of Foreground Information with separate commercial potential, separate damages should be specified for each. See Legal Services regarding the evaluation of the amount of damages to be inserted.

1. The Contractor agrees that Canada would suffer actual damages as a result of a breach, described in paragraph 5(a), (b) or (c) of the clause Commercialization in Canada, of the obligation set out in subsection 1 of that clause, and that such damages are likely to be extremely difficult to quantify. In the event that such a breach occurs, the Contractor agrees to pay to Canada liquidated damages in the amount of $_____. Canada and the Contractor agree that the foregoing amount is their best pre-estimate of the amount of damages that Canada would suffer, and that it is not intended to be, nor is it to be construed as, a penalty.

2. Canada shall have the right to hold back, drawback, deduct or set off, from and against any monies owing at any time by Canada to the Contractor, any liquidated damages owing and unpaid under subsection 1.

3. Nothing in this clause is to be interpreted as limiting the rights and remedies which Canada or the Minister may otherwise be entitled to under the Contract or at law.

Canada to Own Intellectual Property Rights in Foreground Information

Remarks: This set of terms is for use where the Crown has decided to own the intellectual property and invoked an appropriate exception. The Background licence is the same as that for the Contractor Owns Set. An alternative Clause is provided below for the more restricted case of the Crown invoking only exception 6.5 to own copyright. An alternative, broader Background licence is also provided for use in appropriate cases.

Canada to Own Intellectual Property Rights in Foreground Information

01 Interpretation
02 Disclosure of Foreground Information
03 Canada to Own Intellectual Property Rights in Foreground Information
04 License to Intellectual Property Rights in Background Information
05 Right to License
06 Access to Information; Exception to Contractor Rights
07 Waiver of Moral Rights

01 Interpretation

1. In the Contract,

"Background Information" means all Technical Information that is not Foreground Information and that is proprietary to or the confidential information of the Contractor, its Subcontractors or any other supplier of the Contractor;

"Firmware" means any computer program stored in integrated circuits, read-only memory or other similar devices;

"Foreground Information" means any Invention first conceived, developed or reduced to practice as part of the Work under the Contract and all other Technical Information conceived, developed or produced as part of the Work under the Contract;

"Intellectual Property Right" means any intellectual property right recognized by the law, including any intellectual property right protected through legislation (such as that governing patents, copyright, industrial design, integrated circuit topography, or plant breeders' rights) or arising from protection of information as a trade secret or as confidential information;

"Invention" means any new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement in any art, process, machine, manufacture or composition of matter, whether or not patentable;

"Software" means any computer program whether in source or object code (including Firmware), any computer program documentation recorded in any form or medium, and any computer database, and includes modifications to any of the foregoing;

"Technical Information" means all information of a scientific, technical or artistic nature relating to the Work, whether oral or recorded in any form or medium and whether or not subject to copyright, including but not limited to any Inventions, designs, methods, processes, techniques, know-how, models, prototypes, patterns, samples, schematics, experimental or test data, reports, drawings, plans, specifications, photographs, collections of information, manuals and any other documents, and Software. Technical Information does not include data concerned with the administration of the Contract by Canada or the Contractor, such as internal financial or management information, unless it is a deliverable under the Contract.

02 Disclosure of Foreground Information

1. The Contractor shall promptly report and fully disclose to the Minister all Foreground Information that could be Inventions, and shall report and fully disclose to the Minister all other Foreground Information not later than the time of completion of the Work or at such earlier time as the Minister or the Contract may require.

2. Before and after final payment to the Contractor, the Minister shall have the right to examine all records and supporting data of the Contractor which the Minister reasonably deems pertinent to the identification of Foreground Information.

03 Canada to Own Intellectual Property Rights in Foreground Information

1. Without affecting any Intellectual Property Rights or interests therein that have come into being prior to the Contract, all Intellectual Property Rights in the Foreground Information shall immediately, as soon as they come into existence, vest in and remain the property of Canada. The Contractor shall have no right in or to any such Intellectual Property Rights in the Foreground Information except any right that may be granted in writing by Canada.

2. The Contractor shall incorporate the copyright symbol and either of the following copyright notices, as appropriate, into all Foreground Information that is subject to copyright, regardless of the form in or medium upon which it is recorded:

(c) HER MAJESTY THE QUEEN IN RIGHT OF CANADA (year)

or

(c) SA MAJESTÉ LA REINE DU CHEF DU CANADA (année)

3. (i) For greater certainty, the Contractor agrees that where the Work under the Contract involves the preparation of a database or other compilation using information or data supplied by Canada or personal information referred to in paragraph (ii), then the Contractor shall not use or disclose any such information or data or personal information for any purpose other than completing the Work under the Contract. The Contractor shall not dispose of such information or data or personal information except by returning it to Canada. The Contractor shall comply with the General Conditions of the Contract in regard to maintaining the confidentiality of such information, data, or personal information. Unless the Contract otherwise expressly provides, the Contractor shall deliver to Canada all such information, data, or personal information, together with every copy, draft, working paper and note thereof that contains such information, data, or personal information upon completion or termination of the Contract or at such earlier time as the Minister may require.

(ii) For greater certainty and without limiting sub-section 03(1), if the Work under the Contract involves the collection of personal information as that term is defined in the Privacy Act (R.S.C., c. P-21), then all Intellectual Property Rights in and title to that personal information shall, immediately upon the collection of it by the Contractor, vest in Canada, and the Contractor shall have no right or interest in it.

4. The Contractor shall execute such conveyances or other documents relating to the Intellectual Property Rights in the Foreground Information as the minister for whose department or agency the Work is being or was carried out may require, and the Contractor shall, at Canada's expense, afford that minister all reasonable assistance in the preparation of applications and in the prosecution of any applications for registration of any Intellectual Property Right in any jurisdiction, including without limitation the assistance of the inventor in the case of Inventions.

04 License to Intellectual Property Rights in Background Information

1. Without restricting the scope of any licence to exercise the Intellectual Property Rights in the Background Information that Canada may otherwise hold, the Contractor hereby grants to Canada a non-exclusive, perpetual, irrevocable, world-wide, fully-paid and royalty-free license to exercise such of the Intellectual Property Rights in any Background Information incorporated into the Work or necessary for the performance of the Work as may be required for the following purposes:

(a)   for the use, operation, maintenance, repair or overhaul of the Work;

(b)   in the manufacturing of spare parts for maintenance, repair or overhaul of any custom part of the Work by Canada if those parts are not reasonably available to enable timely maintenance, repair or overhaul;

(c)   for disclosure to any contractor engaged by Canada (or bidder for such a contract) to be used solely for a purpose set out in paragraph (a) or (b), but only if the Contractor is unable or unwilling to carry out the maintenance, repair or overhaul or provide the spare parts on reasonable commercial terms and within reasonable delivery times;

and the Contractor agrees to make any such Background Information (including, in the case of Software, source code) promptly available to Canada for any such purpose.

2. Without restricting the scope of any licence to exercise the Intellectual Property Rights in the Background Information that Canada may otherwise hold, the Contractor hereby further grants to Canada a non-exclusive, perpetual, irrevocable, world-wide, fully-paid and royalty-free license to exercise such of the Intellectual Property Rights in the Background Information incorporated into the Work or necessary for the performance of the Work as are necessary in order for Canada to modify, improve or further develop the Foreground Information. Canada's rights under this subsection 2 shall not include the right to reproduce the whole or part of any deliverable under the Contract that does not incorporate Foreground Information, save that Canada may reproduce any drawings, plans, designs, or other Background Information that are subject to copyright or industrial design protection, for purposes of modification, improvement or further development of the Foreground Information by or for Canada. The Contractor agrees to make any such Background Information (including, in the case of Software, source code) promptly available to Canada for any such purpose.

3. Notwithstanding subsections 1 and 2, the license set out therein shall not apply to any Software that is subject to detailed license conditions that are set out elsewhere in the Contract.

4. The Contractor acknowledges that, subject to paragraph (c) of subsection 1, Canada may wish to award contracts for any of the purposes contemplated in subsections 1 and 2 and that such contract awards may follow a competitive process. The Contractor agrees that Canada's license in relation to the Intellectual Property Rights in Background Information includes the right to disclose the Background Information to bidders for such contracts, and to sub-license or otherwise authorize the use of that information by any contractor engaged by Canada solely for the purpose of carrying out such a contract. Canada shall require bidders and the contractor not to use or disclose any Background Information except as may be necessary to bid for or to carry out that contract.

5. Where the Intellectual Property Rights in any Background Information are owned by a Subcontractor at any tier, the Contractor shall either obtain a license from that Subcontractor that permits compliance with subsections 1 and 2 or arrange for the Subcontractor to convey directly to Canada the same rights by execution of the form provided for that purpose by the Minister, in which case the Contractor shall deliver that form to the Minister, duly completed and executed by the Subcontractor, no later than the time of disclosure to Canada of that Background Information.

05 Right to License

The Contractor represents and warrants that the Contractor has, or the Contractor undertakes to obtain, the right to grant to Canada the license to exercise the Intellectual Property Rights in the Background Information as required by the Contract.

06 Access to Information; Exception to Contractor Rights

1. Subject to the Access to Information Act, R.S.C., c. A-1 and to any right of Canada under the Contract, Canada shall not release or disclose outside the Government of Canada any Background Information delivered to Canada under the Contract that is confidential information or a trade secret of the Contractor or a Subcontractor.

2. Nothing in these terms and conditions shall be construed as limiting Canada's right to exercise the Intellectual Property Rights in any Background Information, or to disclose any Background Information, to the extent that such information:

(a) is or becomes in the public domain, or to the extent that the Contractor does not benefit from or ceases to benefit from any intellectual property rights protection for such information under legislation or at law (other than under the terms of the Contract), for any reason including as a result of Canada's use or disclosure of deliverables under the Contract for any purpose whatever that is not expressly excluded under the Contract;

(b) is or becomes known to Canada from a source other than the Contractor, except from any source that is known to Canada to be under an obligation to the Contractor not to disclose the information;

(c) is independently developed by or for Canada; or

(d) is disclosed under compulsion of a legislative requirement or any order of a court or other tribunal having jurisdiction.

07 Waiver of Moral Rights

1. The Contractor shall provide to Canada, at the completion of the Work or at such other time as the Minister may require, a written permanent waiver of moral rights (as that term is defined in the Copyright Act, R.S.C., c. C-42), in a form acceptable to the Minister, from every author that contributed to any Foreground Information which is subject to copyright protection and which is deliverable to Canada under the terms of the Contract.

2. If the Contractor is an author of the Foreground Information referred to in subsection 1, the Contractor hereby permanently waives the Contractor's moral rights in that Foreground Information.

Copyright (Re: 6.5)

Remarks: This clause is for use where a department has invoked exception 6.5, and will leave the ownership of other IP up to the underlying law (i.e. the person who creates it will own it). It is an alternative to the main Crown Owns set.

Copyright

1. In this section,

"Material" means anything that is created or developed by the Contractor as part of the Work under the Contract, and in which copyright subsists, but does not include computer programs and related software documentation.

"Moral Rights" has the same meaning as in the Copyright Act, R.S.C. 1985, c. C-42.

2. Copyright in the Material shall vest in Canada and the Contractor shall incorporate in all Material the copyright symbol and either of the following notices, as appropriate:

(c) HER MAJESTY THE QUEEN IN RIGHT OF Canada (year)

or

(c) SA MAJESTÉ LA REINE DU CHEF DU CANADA (année)

3. At the completion of the Contract, or at such other time as the Contract or the Minister may require, the Contractor shall fully and promptly disclose to the Minister all Material created or developed under the Contract.

4. Where copyright in any Material vests in Canada under the Contract, the Contractor shall execute such conveyances and other documents relating to title or copyright as the Minister may require.

5. The Contractor shall not use, copy, divulge or publish any Material except as is necessary to perform the Contract.

6. At the request of the Minister, the Contractor shall provide to Canada, at the completion of the Work or at such other time as the Minister may require, a written permanent waiver of Moral Rights, in a form acceptable to the Minister, from every author that contributed to the Material.

7. If the Contractor is an author of the Material, the Contractor hereby permanently waives the Contractor's Moral Rights in respect of the Material.

Basis for Canada's Ownership of Intellectual Property (Re: 7.1)

Remarks: This clause is to be used in all bid solicitations in which the client department has determined that Canada will own any intellectual property arising from the work under the contract. The contracting officer will insert the name of the client department or agency and one of the following grounds for Canada ownership, as supplied by the client department or agency:

(a) national security;

(b) statutes, regulations or prior obligations of Canada to a third party or parties preclude Contractor ownership of the Intellectual Property Rights in Foreground Information;

(c) the Contractor has declared in writing that the Contractor is not interested in owning the Intellectual Property Rights in Foreground Information;

(d) the main purpose of the Contract, or of the deliverables contracted for, is to generate knowledge and information for public dissemination;

(e) the main purpose of the Contract, or of the deliverables contracted for, is to augment an existing body of Canada's background information rights as a prerequisite to their planned transfer to the private sector, through licensing or assignment of ownership to another person, for the purposes of commercial exploitation;

(f) the main purpose of the Contract, or of the deliverables contracted for, is to deliver a component or subsystem that will be incorporated into a complete system at a later date , as a prerequisite to the planned transfer of the complete system to the private sector, through licensing or assignment of ownership, for purposes of commercial exploitation;

(g) the Crown has opted to own the Intellectual Property Rights in Foreground Information which consists of material subject to copyright except computer software or any documentation pertaining to such software.

Basis for Canada's Ownership of Intellectual Property

The _____ has determined that any intellectual property arising from the performance of the Work under the Contract will vest in Canada, on the following grounds: _____.

Alternative Background Licence (Broader)

Remarks: This clause is intended for use where the contractor is engaged to, essentially, produce a new product and where the Responsible Department has determined that it wishes to have a broader licence to the contractor's background to allow for further development of that product, including, possibly, production of it for Canada's use. It should be noted, however, that no description of the type of contract where this clause might be expected to be used should drive the choice to use this clause, but rather the Responsible Department's need for specific rights.

Broader License to the Intellectual Property Rights in the Contractor's Background Information

Where the Contracting Authority is of the view that Canada requires a broader license under the Contract to use the Background Information replace Section 04 of the "Canada to Own Intellectual Property Rights in Foreground Information" terms and conditions, License to Intellectual Property Rights in Background Information, by the following:

04 License to Intellectual Property Rights in Background Information

1. Without restricting the scope of any licence to exercise the Intellectual Property Rights in the Background Information that Canada may otherwise hold, the Contractor hereby grants to Canada a non-exclusive, perpetual, irrevocable, world-wide, fully-paid and royalty-free license to exercise such of the Intellectual Property Rights in any Background Information incorporated into the Work or necessary for the performance of the Work as may be required in order for Canada to exercise its Intellectual Property Rights in the Foreground Information. The Contractor agrees to make any such Background Information (including, in the case of Software, source code) promptly available to Canada for any such purpose.

2. The Contractor acknowledges that Canada may wish to award contracts for any of the purposes contemplated in subsection 1 and that such contract awards may follow a competitive process. The Contractor agrees that Canada's license in relation to the Intellectual Property Rights in the Background Information includes the right to disclose the Background Information to bidders for such contracts and to sub-license or otherwise authorize the use of that information by any contractor engaged by Canada solely for the purpose of carrying out such a contract. Canada shall require bidders and the contractor not to use or disclose any Background Information except as may be necessary to bid for or to carry out that contract.

3. Where the Intellectual Property Rights in any Background Information are owned by a Subcontractor at any tier, the Contractor shall either obtain a license from that Subcontractor that permits compliance with subsections 1 and 2 or arrange for the Subcontractor to convey directly to Canada the same rights by execution of the form provided for that purpose by the Minister, in which case the Contractor shall deliver that form to the Minister, duly completed and executed by the Subcontractor, no later than the time of disclosure to Canada of that Background Information.

4. Notwithstanding subsections 1, the license set out therein shall not apply to any Software that is subject to detailed license conditions that are set out elsewhere in the Contract.

Optional Clauses

These clauses are used in particular situations where needed, to modify the provisions of the Crown Owns Set of IP terms.

License to Intellectual Property Rights in Foreground Information

Remarks: The following clauses may be used where Canada is to own the Foreground Information, if the Crown is prepared, at the time of Contract, to consider granting the Contractor a license to exercise the Intellectual Property Rights in the Foreground Information owned by Canada. Art. 8.1 of the IP Policy states that the Crown should not unreasonably refuse to grant a license to the Contractor for the Contractor's use of the Foreground Information.

Art. 8.2 of the IP Policy states that where the reason which was invoked for Canada's ownership of the Intellectual Property Rights in the Foreground Information was either:

(1) that the main purpose of the Contract, or of the deliverables contracted for, is to augment an existing body of Canada's background information rights as a prerequisite to their planned transfer to the private sector, through licensing or assignment of ownership to another person, for the purposes of commercial exploitation; or

(2) that the main purpose of the Contract, or of the deliverables contracted for, is to deliver a component or subsystem that will be incorporated into a complete system at a later date, as a prerequisite to the planned transfer of the complete system to the private sector, through licensing or assignment of ownership, for purposes of commercial exploitation,

then when Canada grants a license for the Foreground Information, the license must be royalty-free. The following clause applies in those circumstances:

1. Subject to subsection 2, if the Contractor wishes to make use of the Foreground Information for purposes of its commercial exploitation or further development, then the Contractor may make a written request for a license to the minister for whose department or agency the Work is being or was carried out. Such a request should be made within thirty (30) working days following completion of the Work. The Contractor shall give that minister an explanation as to why such a license is required. That minister shall respond in writing to any request for such a license within a reasonable period of time. If the request is refused the response shall provide an explanation for the refusal. Should the minister for whose department the work is being or was carried out agree to grant such a license, it shall be on terms and conditions to be negotiated between the Contractor and that minister.

2. Where the Work under the Contract involves the preparation of a database or other compilation using information or data supplied by Canada, or personal information (as this term is defined in the Privacy Act (R.S.C., c. P-21)) collected by the Contractor as part of the Work, then the license referred to in subsection 1 shall be restricted to the Intellectual Property Rights in Foreground Information that are capable of being exploited without the use of such information or data or personal information.

Where any other reason was invoked for Canada's ownership of the Intellectual Property Rights in the Foreground Information, the following clause may be used:

1. Subject to subsection 2, if the Contractor wishes to make use of the Foreground Information for purposes of its commercial exploitation or further development, then the Contractor may make a written request for a license to the minister for whose department or agency the Work is being or was carried out. Such a request should be made within thirty (30) working days following completion of the Work. The Contractor shall give that minister an explanation as to why such a license is required. That minister shall respond in writing to any request for such a license within a reasonable period of time. If the request is refused the response shall provide an explanation for the refusal. Should the minister for whose department the work is being or was carried out agree to grant such a license, it shall be on terms and conditions to be negotiated between the Contractor and that minister. It is understood that those terms may include payment of compensation to Canada.

2. Where the Work under the Contract involves the preparation of a database or other compilation using information or data supplied by Canada, or personal information (as this term is defined in the Privacy Act (R.S.C., c. P-21)) collected by the Contractor as part of the Work, then the license referred to in subsection 1 shall be restricted to the Intellectual Property Rights in Foreground Information that are capable of being exploited without the use of such information or data or such personal information.

No Right for Contractor to Sub-license

Remarks: The following clause may be used where Canada is to own the Intellectual Property Rights in the Foreground Information but Canada is prepared to license the Contractor to exercise same. Add the following clause if the contractor is not to be permitted to sub-license the use of the Foreground Information.

The Contractor shall not have the right to sub-license or otherwise authorize any party to exercise any of the Intellectual Property Rights in the Foreground Information.

License to Intellectual Property Rights in Canada-owned information

Remarks: Add the following clause where the client department is, at the time of the Contract, prepared to grant the Contractor access to Canada-owned information for purposes of Contractor's further development or commercial exploitation of the Foreground Information, where such development and commercial exploitation is permitted under license from Canada. Such a license to Canada-owned information would be negotiated separately between Canada and the contractor, for purposes of the commercial exploitation of the Foreground Information. If appropriate, replace "certain Technical Information" by a list of specific items the Crown may be willing to licence to the Contractor.

If the Contractor wishes to make use of certain Canada-owned information for purposes of the commercial exploitation or further development of the Foreground Information, and where Canada has granted or grants a license to the Intellectual Property Rights in the Foreground Information for such purposes, then the Contractor may make a written request for a license to exercise the required Intellectual Property Rights in such Canada-owned information, to the minister for whose department or agency the Work is being or was carried out. The Contractor shall give that minister an explanation as to why such a license is required. That minister shall respond in writing to any request for such a license within a reasonable period of time. Should the minister for whose department the work is being or was carried out agree to grant such a license, it shall be on terms and conditions to be negotiated between the Contractor and that minister. It is understood that those terms may include payment of compensation to Canada.

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