1. Introduction
This Intellectual Property Rights Policy (the “IPR Policy”) of nexo A.I.S.B.L. (“nexo” or the “Organisation”). applies to Members and their Related Parties and parties that are not Members and their Related Parties but that agree to be bound by this IPR Policy (collectively, including the Members and such non-Members, “Participants”). For clarity, Members shall take all necessary steps to ensure that all of their Related Parties are contractually bound by this IPR Policy and shall be liable in the event of non-compliance by such Related Parties to the terms of such policy.
2. Ownership of IPR
2.1. General
2.1.1 Copyright and Database Rights, if any, in nexo Work Product shall be owned all times by nexo, without prejudice to Participants’ ownership of Copyright and Database Rights, if any, in their respective Submissions. Participants shall retain ownership of Copyright and Database Rights in their respective Submissions unless otherwise agreed in writing by the Participants, but the Participants agree to grant (and hereby grant) to nexo a worldwide, non-exclusive, irrevocable royalty-free and fully paid up license under their Copyrights and Database Rights with respect to such respective Submissions to publish, distribute, make available, communicate to the public, transmit, reproduce, rent, perform, create derivative works of and otherwise modify such Submissions, with the right to sublicense such rights through multiple tiers. The foregoing license is granted solely for the purpose of creating, disseminating, implementing, marketing, advertising and promoting Specifications. For clarity, nexo shall not be obliged to acknowledge in the Work Product the contribution of any of the relevant owners of Copyright and Database Rights in any Submissions.
2.1.2 nexo acknowledges and agrees that (i) each Submission may be subject to the Intellectual Property Rights of the Participant submitting such Submission, including patents and patent applications, but excluding trade secrets (except where otherwise agreed pursuant to Section 2.2 of this IPR Policy), and (ii) nexo acquires no rights with respect to any Submission apart from the rights expressly granted in this IPR Policy.
2.1.3 Each Participant represents and warrants that it has not made and will not make any Submission (or any other contribution) to nexo unless the Participant (i) owns all of the non-patent and non-utility model IPR with respect to such Submission (or other contribution) or has the right to grant licenses of such IPR to the full extent contemplated by this IPR Policy, and (ii) the Submission was not and is not made in violation of (and the exploitation of all or any portion of the Submission to the full extent contemplated by this IPR Policy would not violate) any trade secrets or any confidentiality obligations (each such Submission, a “Rightful Submission”).
2.1.4 Except as otherwise expressly provided herein, this IPR Policy does not grant to nexo or the Participants any right to use the trademarks (including any logos) of any Participant in the absence of a separate written agreement with such Participant. It is, however, acknowledged and agreed that nexo and the Participants may, without such a separate agreement, use as verbal marks (without any figurative aspects) a Participant’s name and the name of its goods and services, subject to the conditions set forth in Section 5.2.4 below.
2.2. Confidential Information
2.2.1 Members and other Participants are encouraged to participate in the activities of nexo without disclosing their trade secrets or other confidential information. Accordingly, except as provided in this section 2.1, nexo and Participants will have no confidentiality obligations with respect to any information provided to, or exchanged in connection with the activities of, nexo, including the content of any Submissions. The foregoing shall not, however, prevent or bar claims by a first Participant that another Participant provided or exchanged trade secrets or other confidential information in violation of contractual obligations entered into with the first Participant or confidentiality obligations that are provided by law or implied pursuant to applicable laws and that benefit the first Participant. From time to time, a Participant and the Organisation may agree in writing on a case-by-case basis that certain information will be considered confidential by nexo and other Participants, provided that no Participant will be subject to confidentiality obligations with respect to any such information unless the Participant has received notice of the arrangement and agreed in writing to be subject to such confidentiality agreement.
2.2.2 In the event that a Participant reasonably believes that a Submission, Specification or Draft Specification violates (or the exploitation thereof as contemplated by this IPR Policy would violate) its trade secrets or any confidentiality obligations, such Participant must notify nexo as soon as reasonably possible of such violation and shall (a) confirm that it has notified the other Participant that submitted the material in question (if known by the notifying Participant), (b) identify the material and the source of the material (if known by the notifying Participant) and (c) succinctly set out the legal basis for the claim (for example by identifying the contractual agreement that supports the claim). nexo shall reasonably promptly either (i) withdraw the offending material from the Specification or Draft Specification, or (ii) indicate to the Participant that it should seek relief before a court of competent jurisdiction and that nexo will comply with any order of such court. For clarity, nexo shall not have any liability for breach of trade secrets or confidentiality in connection with any Draft Specification or Specification prior to being notified by the Participant of its claim. Each Participant acknowledges that time is of the essence and that the failure of a Participant to notify nexo as soon as reasonably possible after it becomes aware of a violation of its trade secrets or confidentiality agreements through their incorporation in a Submission, Draft Specification or Specification may have significant adverse consequences on parties having completed an implementation or being in the process of implementing a Specification. Participants shall be deemed to have knowledge of the content of a Specification as of the date of its publication.
2.3. Role of Contractors and Other Persons
In the event that any activities of nexo are carried out by persons (whether individuals, corporations, or other entities) other than the Members, a written agreement may be necessary to clarify the ownership and licenses with respect to any contributions or work product developed or provided by such persons, including related IPR. In principle, nexo should be the owner of any IPR that has been generated by persons who have been engaged by or on behalf of nexo as contractors. On a case-by-case basis or otherwise, nexo may authorize such persons to retain ownership of their IPR, but, in principle, such persons should grant rights with respect to their contributions or work product (including without limitation to any of their background IPR that is incorporated into deliverables) provided to nexo consistent with the terms of this IPR Policy that apply to Submissions.
3. Controlled Necessary Claims
3.1 Participant Obligations Regarding Controlled Necessary Claims
3.1.1 In order to reduce the possibility of adopting a Specification that, if implemented, would infringe any Participant Controlled Necessary Claims, Participants are subject to the rules set forth in this IPR Policy, including this Section 3. The obligation to make an election pursuant to this Section 3 shall apply to patent or utility model applications as well as issued patents and utility models, and any election under this Section 3 shall (unless otherwise expressly specified in the election) apply to patents and utility models issuing on patent and utility model applications for which the election has been made, as well as any reissues, divisionals, continuations and continuations-in-part to the extent (i) they claim priority from such patent or utility model applications and (ii) they also include Controlled Necessary Claims pertaining to the Specification.
3.1.2 Notwithstanding anything to the contrary contained in this Section 3, a Participant may include in its licensing agreement a term providing that the license with respect to a Specification may be suspended with respect to the licensee if the licensee or any of its Related Parties initiates a Patent Legal Action against the Participant or any of its Related Parties (or their suppliers or customers with respect to products or services of the Participant or its Related Parties) based on a product or service implementing such Specification (unless such Patent Legal Action by the licensee or any of its Related Parties is in response to a Patent Legal Action initiated by the Participant or any of its Related Parties).
3.2 Election by Participants
3.2.1 Every (x) Participant shall elect one of the following during the Document Review Period for the respective Draft Specification, (y) new Member shall elect, for each then-existing Specification and for each Draft Specification that is in the Document Review Period, one of the following no later than six (6) weeks after membership in nexo commences, and (z) new non-Member Participant shall elect, for each then-existing Specification and for each Draft Specification that is in the Document Review Period, one of the following no later than six (6) weeks after the non-Member Participant agrees to become bound by this IPR Policy:
i. FRAND License. Agree that, if the Draft Specification is finally approved by nexo and becomes an adopted Specification (or is already a Specification), it and each of its Related Parties will license all of its Controlled Necessary Claims with respect to such Specification, on an irrevocable and non-exclusive basis on FRAND terms, including the right to charge a royalty or other compensation, to all Participants implementing such Specification and their Contractors (as defined in section 4.2.1) solely for the purpose of making, using, importing, selling, offering to sell and otherwise providing products and services that are fully compliant with such Specification, subject to Reciprocity; or
ii. Withholding of License as to Necessary Claims. Identify any patents or patent applications having its Controlled Necessary Claims with respect to the Draft Specification (or Specification) and the portion or aspect of such Draft Specification (or Specification) that would be infringed, and indicate that no guarantee of a FRAND license is being provided (or that such license will in fact be denied in some or all cases) as to such Controlled Necessary Claims. In the case of Necessary Claims under non-public patent applications, the disclosure of such claims need not be in such detail as would disclose any trade secrets or other confidential information.
Additional conditions:
(1) Subject to condition (2) below, a Participant may elect one option above with respect to one or some Controlled Necessary Claims and another option with respect to other Controlled Necessary Claims.
(2) In connection with option (ii) above, a Participant may not withhold a commitment to a FRAND license to Controlled Necessary Claims with respect to a Draft Specification (or Specification) that becomes a Draft Specification (or became a Specification) by reason of the incorporation into such Draft Specification (or Specification) of a Submission by such Participant or any of its Related Parties (including any employee, contractor or other representative acting on behalf of the Participant or any of its Related Parties), if such Draft Specification (or Specification) is based substantially on the Submission of such Participant or Related Party and there are no material modifications or additions to such Submission (as incorporated into the Draft Specification (or Specification)) from the form in which it was submitted by such Participant or Related Party.
(3) nexo shall make it known that it is the responsibility of the Participant or its Contractors (as defined in section 4.2.1) to seek a FRAND license from the patent holder.
3.2.2 An election under this Section 3.2 shall be made pursuant to a written declaration, which must be in the form specified by nexo to the extent nexo specifies such a form.
3.2.3 If, after making the election set forth in Section 3.2 with respect to a Specification, a Participant or any of its Related Parties acquires ownership or control (which may occur as a result, for example, of a merger and acquisition transaction or of the new filing of a patent application) of patents, utility models, patent applications or utility model applications with Controlled Necessary Claims (or a Participant acquires or otherwise becomes a Related Party of an entity that owns or controls patents or patent applications with Controlled Necessary Claims) with respect to such Specification, the Participant will have ninety (90) days (from the closing of the acquisition or the event that results in the owning or controlling entity becoming a Related Party or from the filing of the new patent application) to make the election set forth in Section 3.2 with respect to such Controlled Necessary Claims. If the election is not timely made, the Participant shall be deemed to have elected the option set forth in Section 3.2.1(i) with respect to such Controlled Necessary Claims. Except with respect to such newly owned or controlled patents, utility models, utility model applications or patent applications, if a Participant has made or is deemed to have made the election set forth in Section 3.2.1(i) with respect to a Specification, and such Participant or any of its Related Parties later generates any Controlled Necessary Claims with respect to such Specification, such Participant will also be deemed to have made the same election with respect to such later-generated Controlled Necessary Claims.
3.3 Failure to Make Licensing Elections
3.3.1 In the event that a Participant fails to timely return a signed and completed election form with respect to a Draft Specification that becomes an adopted Specification (or is already a Specification) as required by Section 3.2.1, such Participant hereby automatically grants a royalty-free, fully paid up, irrevocable (except as provided in Section 7 of this IPR Policy), non-exclusive, worldwide license of its Controlled Necessary Claims to all other Participants solely for the purpose of making, using, importing, selling, offering to sell and otherwise providing products and services that are fully compliant with the Specification (“Royalty-Free License”).
3.3.2 A Participant that has granted a Royalty-Free License pursuant to Section 3.3.1 may terminate such license as to a Participant if such licensee Participant or any of its Related Entities initiates a Patent Legal Action against the granting Participant or any of its Related Parties (or their suppliers or customers with respect to products or services of the granting Participant or their Related Parties) based on features of a product or service that are detailed in a Specification (unless such Patent Legal Action by the licensee Participant or any of its Related Parties is in response to a Patent Legal Action initiated by the granting Participant or any of its Related Parties).
3.4 Effect of Infringement Claim
In the event that a Participant or a Related Party of a Participant brings an infringement action against any other Participant with respect to a Controlled Necessary Claim after such Participant has elected or is deemed to have elected to license its Controlled Necessary Claims with respect to a Specification as described in Section 3.2.1(i), nexo shall have no obligation to intervene, but such other Participant shall be entitled to assert the right to a license, on the terms and subject to the conditions set forth in Section 3.2.1(i), as an intended third party beneficiary.
3.5 Refusals to License
3.5.1 In the event that any Participant identifies any Controlled Necessary Claims under Section 3.2.1(ii), whether before or after the related Draft Specification or Specification is finally approved by nexo, diligent efforts shall be made by the working group responsible for the Draft Specification or Specification to seek a technically feasible alternative that would not result in or reduce the likelihood of infringement of the Controlled Necessary Claims in question or nexo may seek alternative means of resolution, consulting appropriate experts if and to the extent prudent in the reasonable judgment of nexo.
3.5.2 The fact that a Member elects to identify Controlled Necessary Claims under Section 3.2.1(ii) shall not have any adverse effect on such Member’s standing as a member of nexo.
3.6 Survival of Obligations
3.6.1. After a Member’s membership terminates (whether because the Member withdraws, is terminated by nexo or otherwise) or a non-Member’s status as a Participant terminates (for example, because its agreement with nexo terminates), the Participant will no longer be obligated to make or be deemed to make an election under Section 3.2 with respect to Draft Specifications that become Draft Specifications after the date of termination (except to the extent, in the case of a non-Member Participant, the Participant’s agreement with nexo provides otherwise). However, if termination is effective during a Document Review Period for a Draft Specification, the Participant shall remain bound under this IPR Policy with respect to such Draft Specification as if its membership or (in the case of a non-Member Participant) status as a Participant had continued during such period.
3.6.2. All commitments (including commitments to license and related obligations) made or deemed to be made by any Participant under Section 3.2 and Section 3.3 of this IPR Policy (“Commitments”) (i) are irrevocable (unless otherwise explicitly set forth in this IPR Policy), and (ii) shall survive any termination or expiration of membership or status as a Participant. The Commitments apply not only to the Specification with respect to which such Commitments were originally made or deemed to have been made, but also to any and all future versions and/or amendments to such Specification adopted by nexo. Nonetheless, (x) to the extent any such future version and/or amendment modifies or adds to the Specification with respect to which a Commitment was previously made or deemed to have been made, such Commitment shall apply only to those Necessary Claims for which such Commitment was previously made or deemed to have been made and not to other claims that become Necessarily Infringed only because of the modification or addition to such Specification; and (y) the former Participant shall have no obligation to grant licenses to entities that become Participants after it ceases to be a Participant. Subject to the foregoing, any Commitments with respect to a Specification shall also survive dissolution of nexo.
3.6.3 Notwithstanding Section 3.6.2, if (i) a Participant is acquired by an unaffiliated third party that then controls such Participant (where control means ownership or control, directly or indirectly, of (a) shares or other interests representing more than 50% of the voting power or similar rights with respect to the election of directors or persons performing similar functions; or (b) a right by any other means to elect or appoint directors or persons performing similar functions, or persons who collectively can exercise such control) and (ii) the Participant withdraws as a Member (or its membership is otherwise terminated), and all of the Participant’s rights as a Participant are terminated, within thirty (30) days after the closing of the acquisition (or, in the case of a non-Member Participant, the Participant elects during such thirty (30) day period to terminate its agreement with nexo, including all of its rights as a Participant, in accordance with the terms of such agreement), the Commitments of the Participant will not apply to claims under patents and patent applications of the third party and its other Related Parties (i.e., other than the Participant and the entities that were already its Related Parties before the acquisition), unless such claims were or would have been Controlled Necessary Claims of the Participant in the absence of the acquisition. In addition, if an entity ceases to be a Related Party of a Participant, (y) the rights of such entity (as beneficiary or licensee) under this IPR Policy shall terminate, except to the extent otherwise provided in a license agreement with other Participants, and (z) the Commitments of the Participant will not apply to claims under patents and patent applications of such entity (as obligor or licensor) that are generated or acquired by the entity after the entity ceases to be a Related Party (unless the claims issue or derive priority from patents or patent applications previously owned or controlled by the Participant or its Related Parties).
3.6.4 Also, notwithstanding Section 3.6.2, if there is a material change in this IPR Policy and a Participant withdraws as a Member (or its membership is otherwise terminated) within thirty (30) days after the effective date of the material change (or, in the case of a non-Member Participant, the Participant elects during such thirty (30) day period to terminate its agreement with nexo in accordance with its terms), the Commitments of the Participant will continue to be governed by the version of this IPR Policy in effect before such change, and the Participant will not be subject to such material change.
3.7 Withdrawal of Specifications
In the event that any Specification is withdrawn by nexo, (i) the obligation of Participants to offer licenses as to Controlled Necessary Claims with respect to such Specification in accordance with this IPR Policy, and any Royalty-Free Licenses granted pursuant to Section 3.3,shall remain in effect, but (ii) nexo’s Board of Directors may, at its option, decide to release Participants from any further obligation to offer such licenses and to terminate such Royalty-Free Licenses, with such licensing obligations or Royalty-Free Licenses to terminate on a date and in a manner to be reasonably determined by nexo’s Board of Directors. For avoidance of doubt, withdrawal of a Specification shall not affect any already-existing license agreement between Participants unless otherwise agreed to by the Participants that are parties to such license agreement.
3.8 Patent Searches
In no event shall nexo or any Participant be obligated to conduct any patent searches, including any searches to identify Necessary Claims. nexo shall not be required at any time to determine if, or provide its opinion as to whether, a claim under a patent, utility model and/or patent application or utility model application would be Necessarily Infringed by the implementation of a Specification.
3.9 Transfers of Necessary Claims
3.9.1 Each Participant agrees that it will not transfer, and represents and warrants that it has not transferred, any patents, utility models, patent applications or utility model applications having Controlled Necessary Claims for the purpose of circumventing such Participant’s obligations under this IPR Policy.
3.9.2 No Participant shall transfer, or permit the transfer of, any patent, utility model, patent application or utility model application having Controlled Necessary Claims, except to a successor that agrees in writing to (i) be bound by all Commitments previously made or licenses previously granted by the direct or indirect transferors under this IPR Policy with respect to such patent, utility model, patent application or utility model application, and (ii) include the obligations set forth in this Section 3.9 in any document of transfer relating to such patent, utility model, patent application or utility model application in the event that the successor later transfers, or permits the transfer of, the same. These obligations are intended to be binding on successors-in-interest regardless of whether such provisions are actually included in the relevant transfer documents. For purposes of this Section 3.9, “transfer” of a patent, utility model, patent application or utility model application includes an assignment, exclusive license or other arrangement that conveys rights to enforce such patent, utility model, patent application or utility model application.
4. Licensing, Exploitation and Implementation of nexo Intellectual Property
4.1. Decisions on Licensing, Exploitation and Implementation
nexo may determine in its discretion, from time to time, the rules pursuant to which the IPR owned or controlled by nexo or the Specifications may be licensed to, and exploited and implemented by Participants or other parties. Parties wishing to receive a license, or exploit or implement IPR owned or controlled by nexo or the Specifications and shall adhere to the terms of this IPR Policy.
4.2. IPR-Related Contracts
4.2.1 nexo grants to all Participants (in the case of Related Parties, so long as they remain a Related Party) for the term of their adherence to this IPR Policy a worldwide, non-exclusive, revocable, fully paid up and royalty-free license to reproduce and use the Specifications in connection with their business and that of their Related Parties for purposes of implementing the Specifications in goods and services (including goods and services provided to third parties) that are fully compliant with the Specifications. Participants may have such license with respect to the Specifications exercised for and on behalf of them by contract manufacturers, service providers, contractors, and consultants (collectively, “Contractors”). Participants shall (i) ensure that their Related Parties reproduce and use the Specifications only in conformity with this IPR Policy and (ii) be liable for the conduct of their Related Parties and Contractors, including any acts or omissions of their Related Parties and Contractors. Participants are granted a worldwide, non-exclusive, revocable, fully paid and royalty-free license to reproduce and modify the Specifications and Draft Specifications for purposes of making Submissions to working groups of nexo.
For clarity and except as expressly provided herein, in order to minimize interoperability issues, Participants and their Contractors are not authorized to modify Specifications in connection with their implementations, and any rights of Participants with respect to the implementation of Specifications apply only if the implementation is fully compliant with such Specifications. Participants that wish for modifications to be made to the Specifications are encouraged to participate in the working groups of nexo in order to make and advocate for their proposals for modifications. nexo may decide to publish Specifications, subject to all working group review and approval and other reviews and approvals normally required for the publication of a Specification, incorporating the modifications proposed by Participants so that they may form part of a revised Specification, or it may choose to accept the use by all Participants of certain modifications required to meet local regulatory, commercial or technical conditions without formally including them in the Specifications, and publish such acceptance. For clarity, any modifications accepted by nexo but not formally included in a Specification are not subject to the provisions of Section 3 of this Agreement and other Participants have no obligation to grant licenses of any Intellectual Property Rights that may be necessary to implement such modifications.
In the event that Participants wish to include features that are not defined in the nexo Specifications by adding to such Specifications, this shall be permitted only to the extent these additional features do not prevent the interoperability of systems. Prior to implementing any systems including such additional features, Participants shall provide nexo with a high-level non-confidential technical summary of the additional features so that nexo may confirm that it likely will not affect interoperability. In the event that certain features are reasonably identified as preventing interoperability, Participants shall not use these additional features in an implementation of nexo Specifications. For clarity, any nexo approval on the basis that additional features will likely not affect interoperability shall not be relied upon by Participants or third parties as a representation, warranty or condition that systems implemented by the Participant will be in practice interoperable with other nexo compliant systems and any and all representations, warranties or conditions, including those that may be implied by law, are hereby disclaimed. The features Participants may add to nexo Specifications, even to the extent they are reviewed and approved by nexo, are not subject to the provisions of section 3 of this Agreement and other Participants have no obligation to grant licenses of any Intellectual Property Rights that may be necessary to implement, use or otherwise exploit such features.
The licenses in this Section 4.2 are granted on an “as is, where is” basis without any representation, warranty or condition of any kind by nexo, whether express, implied or provided by any applicable law, including without limitation any representation, warranty or condition of fitness for purpose, merchantability, and non-infringement or non-violation of third party rights. Notwithstanding the foregoing, it is acknowledged and agreed that nexo may charge a reasonable fee in order to provide access to all or part of the Specifications.
4.2.2 For clarity, this IPR Policy is not intended to terminate, revoke or modify any IPR licenses that may have been granted by nexo prior to its coming into force unless expressly specified by its terms.
5. Intellectual Property Protection
5.1. Copyright Protection
nexo shall require that the following statement (or a similar statement) is included in Copyright protected works of nexo: “© nexo A.I.S.B.L. Any and all rights are reserved by nexo A.I.S.B.L.”
5.2. Trademark and Similar Protections
5.2.1 nexo Trademarks
The word mark “nexo,” the nexo logo, and other trademarks (registered or unregistered) originating with nexo are owned by nexo.
5.2.2 Registered Names and Signs, Trade Names
“nexo A.I.S.B.L.” and its abbreviation “nexo” are trade names of nexo. They are protected as trade names (“nom commercial”/“handelsnaam”) and, in countries where this is available, may also be protected as non-registered trademarks.
5.2.3 Logo on nexo Work Product
nexo Work Product shall feature the nexo logo, as shown below or as may be modified from time to time by nexo. The nexologo shall be used in compliance with the nexo trademark guidelines, as published from time to time by nexo.
(high quality logo available here)
5.2.4 Participants’ Trademarks
Trademarks are not included in any Participant’s licensing obligations, and no Participant will have any obligation, under this IPR Policy or otherwise in connection with nexo, to grant any rights with respect to its trademarks, except those rights expressly stated in this IPR Policy. Except as otherwise expressly permitted in this IPR Policy, neither nexo nor the Participants will display or use, or authorize any third party to display or use, any trademark of a Participant without the prior written consent of such Participant. Nonetheless, without such prior written consent, (i) to the extent a Participant’s word mark designating its business, goods or service is included in any Submission of such Participant, nexo may reproduce such verbal marks as part of the content of such Submission, and (ii) nexo may use the word mark of a Participant to refer narratively and accurately to such Participant or its goods or services (such as to identify the Participant as the source of a Submission), in each case (whether (i) or (ii)), solely for purposes that are internal to the Organisation (such as circulating a Submission only for consideration by Participants). Participants acknowledge that in certain circumstances it may be preferable to refer to their Trademarks in a Draft Specification or Specification in order to give clear indications in the context of an implementation. In such circumstances nexo must contact the Participant and obtain its written consent prior to including such Trademarks in a Draft Specification or Specification.
To the extent that a Participant notices that nexo Work Product uses a trademark in a manner or for a purpose that violates this IPR Policy or applicable law, it may notify nexo of the issue in writing. If reasonably promptly after receipt of such a notice, nexo ceases or remedies the use, and requires that Participants cease or remedies the use, nexo shall have no monetary liability for such use.
6. Infringement
6.1. Third Party Claims
If there is a claim that any nexo Work Product, or product or service based on any nexo Work Product, infringes any IPR or trademark rights of third parties, nexo may, at its sole discretion:
(i) Procure the right to continue offering, or authorizing the offering of, the affected Work Product, product or service;
(ii) Modify, replace or amend the affected Work Product so that it is no longer (or so that it is less likely to) infringe; and/or
(iii) Withdraw or limit the authorized use of the affected Work Product. nexo may endeavour to resolve any disputes in an amicable way or through arbitration or other alternative dispute resolution.
6.2. Claims Against Third Parties
The nexo Secretary General is responsible for managing the enforcement of the rights of nexo, including IPR, trademark rights, rights under contract, and any other rights.
6.3. Conduct of Legal Proceedings
In accordance with the provisions of the nexo Statutes, any legal proceedings, either as plaintiff or defendant, shall be conducted by the nexo Board of Directors represented by the Chairman of the Board of Directors or his or her designee.
7. Relationship to Other Standards Bodies
This IPR Policy (including the obligation to make an election pursuant to Section 3.2) applies to Draft Specifications and Specifications published by and in the name of nexo, and not to other draft specifications and specifications, whether or not such other draft specifications or specifications have been addressed by working groups or other technical processes of nexo or are referenced in Draft Specifications or Specifications.
8. IPR Management Structure
The nexo Secretariat is responsible for the implementation and maintenance of this IPR Policy, as well as for the monitoring of its compliance, under the authority of the nexo Board of Directors. This includes policy drafting, drafting of IPR-related contracts, follow-up regarding applicable rules and regulations, identification of training needs within nexo, and the organisation of trainings when necessary.
The nexo Secretariat acts as first point of contact for the Participants regarding any IPR matters.
9. References to Participants
nexo will not be required to identify or otherwise reference the name of any Participant that is the author of or a contributor to any portion of Work Product, unless agreed otherwise in an agreement between nexo and the Participant. In addition, nexo shall not identify or otherwise reference the name of any Participant, including a Participant that is the author of or contributor to any portion of Work Product, unless agreed in writing by the Participant.
10. Record Keeping
The nexo Secretariat will maintain a register of IPR-related contracts entered into by nexo and keep electronic copies of all such contracts.
For each of the Specifications, nexo Secretariat shall retain records of all elections received pursuant to Section 3.2 above as well as lists of Participants that have not timely returned an election form (see also Section 3.3 above).
11. Disclaimer
nexo will have no liability for any products or services that implement or are otherwise based on any Work Product. Draft Specifications, Specifications and other technical Work Product shall include a notice/disclaimer as follows (or substantially equivalent to the following): "THIS DOCUMENT IS BEING OFFERED WITHOUT ANY REPRESENTATION, WARRANTY OR CONDITION WHATSOEVER, INCLUDING THOSE THAT MAY BE IMPLIED OR PROVIDED BY LAW, AND IN PARTICULAR, ANY REPRESENTATION, WARRANTY OR CONDITION OF NON-INFRINGEMENT IS EXPRESSLY DISCLAIMED. ANY USE OF THIS DOCUMENT SHALL BE MADE ENTIRELY AT THE USER'S OWN RISK, AND NEXO SHALL NOT HAVE ANY LIABILITY TO ANY USER FOR ANY DAMAGES OF ANY NATURE WHATSOEVER, DIRECTLY OR INDIRECTLY, ARISING FROM THE USE OF THIS WORK PRODUCT.” For the avoidance of doubt, this disclaimer shall not be required to be included in any materials which are (i) non-technical in nature; or (ii) produced for marketing communication purposes.
12. Effective Date and Transition
12.1 Effective Date
This IPR Policy shall be effective beginning on date of its adoption by the nexo General Assembly (the “Effective Date”).
12.2 Existing Specifications – Existing Participants
12.2.1 Except as otherwise expressly provided herein, this IPR Policy shall not affect any rights and licenses nexo may have acquired from a Participant under the previous version of its Intellectual Property Rights Agreement to the extent such agreement is binding on and enforceable against such Participant in accordance with Belgian law (the “Previous IPR Policy”).
12.2.2 To the extent nexo may have acquired under the Previous IPR Policy Agreement ownership of IPR in material contributed by a Member, it grants such Member (and its Related Parties so long as they remain a Related Party) a worldwide, non-exclusive, irrevocable, royalty-free and paid-up license to use, publish, distribute, make available, transmit, communicate, reproduce, rent, perform, create derivative works of and otherwise modify such Submission and make derivative works thereof, with the right to sublicense such rights through multiple tiers. The foregoing is not intended to constitute a grant of rights in (a) published and adopted Specifications (each such Specification, as and in the form it was published and adopted before the Effective Date, a “Previously Adopted Specification”), or (b) published Draft Specifications for adoption by nexo (each such Draft Specification, as and in the form it was published for adoption before the Effective Date, a “Previously Proposed Specification”). The grant of licenses to Members in the Previously Adopted Specifications and Previously Proposed Specifications are governed by section 4.2 of this IPR Policy as of the Effective Date. The license grant pursuant to this section 12.2.2. is on an “as is, where is” basis without any representation, warranty or condition of any kind, whether express, implied or provided by any applicable law, including without limitation any representation, warranty or condition of fitness for purpose, merchantability and non-infringement or other violation of third party rights.
12.2.3 To the extent (i) a Submission or any portion thereof was submitted by a Participant before the Effective Date; (ii) such Submission or portion thereof has been incorporated into a Previously Adopted Specification; and (iii) Copyright and Database Rights in such Submission are not owned by nexo, such Participant agrees to grant (and hereby grants) to nexo a worldwide, non-exclusive, irrevocable royalty-free and fully paid up license under its Copyrights and Database Rights with respect to such Submission to publish, distribute, make available, transmit, communicate to the public, reproduce, perform, rent, create derivative works of and otherwise modify such Submission, with the right to sublicense such rights through multiple tiers. The foregoing license is granted solely for the purpose of creating, disseminating, implementing, marketing, advertising and promoting the Previous Specification as well as any successor Specifications.
12.2.4 To the extent any Participant has any Controlled Necessary Claims with respect to a Previously Adopted Specification, such Participant hereby automatically grants a royalty-free, fully paid up, irrevocable (except as otherwise specifically provided in this Section 12.2.4), non-exclusive, worldwide license of its Controlled Necessary Claims to all other Participants solely for the purpose of making, using, importing, selling, offering to sell and otherwise providing products and services that are fully compliant with the Previously Adopted Specification. For avoidance of doubt, in the event that a Previous Specification is revised, such that it becomes a new or successor Draft Specification, the applicable requirements of this IPR Policy, including the obligation to make the election set forth in Section 3.2 with respect to such new or successor Draft Specification, shall apply to Participants that are subject to this Section 12.2.4. For clarity, no election may be made pursuant to Section 3.2 for aspects of the Draft Specification that were previously licensed under this Section 12.2.4 and such aspects shall remain licensed in accordance with this Section 12.2.4. Notwithstanding, a Participant that has granted a royalty-free license pursuant to Section 12.2.4 may terminate such license as to a Participant if such licensee Participant or any of its Related Entities initiates a Patent Legal Action against the granting Participant or any of its Related Parties (or their suppliers or customers with respect to products or services of the granting Participant or their Related Parties) based on features of a product or service that are detailed in a Specification (unless such Patent Legal Action by the licensee Participant or any of its Related Parties is in response to a Patent Legal Action initiated by the granting Participant or any of its Related Parties).
12.2.5 Notwithstanding the other terms and conditions of this Section 12.2, the licenses set forth in Sections 12.2.3 and 12.2.4 will apply to, and become effective as to, a Previously Proposed Specification only if, when, and to extent the Previously Proposed Specification is adopted as a Specification of nexo.
12.2.6 Each Participant covenants that it will not bring any action nor threaten to bring any action against other Participants under any applicable law alleging that any part of the content of a Previously Adopted Specification violates trade secrets or other obligations of confidentiality. Notwithstanding the foregoing, each Participant shall not be restricted in bringing action against another Participant who originally made a Submission in violation of its trade secrets or in breach of confidentiality obligations. The foregoing shall not apply to new content added or proposed to be added to a Previously Adopted Specification after the Effective Date.
12.2.7 Participants acknowledge having reviewed the Previously Adopted Specifications and, notwithstanding any other provision of this IPR Policy, confirm their authorization to use any word Trademarks owned by them that are mentioned in such Previously Adopted Specifications. For clarity, this authorization shall not apply in the event that substantive modifications are being made to a Previously Adopted Specification by nexo. In the context of such modifications nexo shall seek approval from Participants who own such word Trademarks, including for existing references.
12.3 Existing Specifications - New Participants
For each Previous Specification, the following shall apply to Participants that become Participants after the Effective Date, including Members whose membership commences after the Effective Date, shall be obligated to make the election set forth in Section 3.2 for each Specification or Draft Specification that was adopted by nexo prior to the commencement date of their becoming members or non-member Participants. (“New Participants”):
12.3.1 To the extent any New Participant has any Controlled Necessary Claims with respect to a Previous Specification, such Participant hereby automatically grants a royalty-free, fully paid up, irrevocable (except as otherwise specifically provided in this Section 12.3.1), non-exclusive, worldwide license of its Controlled Necessary Claims to all other Participants solely for the purpose of making, using, importing, selling, offering to sell and otherwise providing products and services that are fully compliant with the Previous Specification.
12.3.2 For avoidance of doubt, in the event that a Previous Specification is revised, such that it becomes a new or successor Draft Specification, the applicable requirements of this IPR Policy, including the obligation to make the election set forth in Section 3.2 with respect to such new or successor Draft Specification, shall apply to all Participants, whether or not they were already Participants before the Effective Date. For clarity, no election may be made pursuant to Section 3.2 for aspects of the Draft Specification that were previously licensed under this Section 12.3 and remain licensed in accordance with Section 3.6.2.
13. Definitions
Capitalized terms used in this IPR Policy will have the meanings specified below or elsewhere in this IPR Policy.
Controlled Necessary Claims with respect to a Participant, means Necessary Claims that are owned or controlled by the Participant or any of its Related Parties, solely or jointly with any third party, to the extent the Participant or any of its Related Parties has the right to license or sublicense such Necessary Claims. Nonetheless, the Necessary Claims will not constitute Controlled Necessary Claims if the granting of the license or sublicense would require payment of a royalty or other compensation to a non-Related Party (other than current or former employees or contractors of the Participant or its Related Parties), unless the licensee of the Necessary Claims agrees to reimburse the Participant or Related Party for such payment.
Copyright with respect to a work, means the copyright (“droit d’auteur”/“auteursrecht”) and all related rights (“droits voisins”/“naburige rechten”) with respect to the work.
Database Rights means rights with respect to the protection of databases, such as those granted pursuant to the European Directive on the legal protection of databases, Directive 96/9/EC, as well as similar legislation that has been enacted or that may be enacted in the future anywhere in the world.
Document Review Period means the time period in which a Draft Specification has been posted for final comments to Members (and possibly also to non-Member Participants if such review is a public review). The Document Review Period will be determined by nexo but will be no shorter than ninety (90) days unless otherwise agreed by the affected Members.
Draft Specification means a draft version of a Specification.
FRAND means fair, reasonable and non-discriminatory. IPR (or Intellectual Property Rights) means patents and patent applications, Database Rights, Copyrights, utility models and utility model applications, and trade secrets (if any), and excludes Trademarks and similar rights with respect to source or origin.
Members means Principal Members and Associate Members of nexo, as defined in nexo Statutes. Members will also include any other category of members of nexo that may be established in the future to the extent decided by nexo’s Board of Directors.
Necessarily Infringed with respect to a claim of a patent, means unavoidable infringement of such claim by a fully compliant implementation of a Specification, there being no technically feasible non-infringing alternative way to implement the Specification without resulting in such infringement.
Necessary Claims means those claims under patents, utility models, patent applications, and utility model applications, that would be Necessarily Infringed by a fully compliant implementation of a Specification, whether an optional or mandatory portion of the Specification. Necessary Claims shall not include claims reading on (i) any enabling technologies that may be necessary to make, provide or use any product or service but are not themselves expressly set forth in the body of the Specification (including without limitation card manufacturing technology, compiler technology, basic operating system technology, and the like); (ii) references to other standards and/or specifications that may be referred to in the body of the Specifications; or (iii) claims reading on parts of the Specification that are stipulated in the Specification as informational.
Patent Legal Action means a patent or utility model infringement lawsuit; a proceeding before an administrative tribunal having authority to prevent the importation, sale or offering for sale of goods or services (including without limitation the United States International Trade Commission) on the basis of infringement of a patent or utility model; or a customs enforcement proceeding for the detention or destruction of goods based on the infringement of a patent or utility model.
Reciprocity means that a Participant’s obligation to grant licenses under its Controlled Necessary Claims with respect to a Specification shall not be effective as to any other Participant that does not make all of its Controlled Necessary Claims for the same Specification available on FRAND terms to the first mentioned Participant.
Related Party with respect to a specified entity, means any other entity that controls, is controlled by, or is under common control with the specified entity, in each case where such control results from ownership or control, directly or indirectly, of (i) shares or other interests representing more than 50% of the voting power or similar rights with respect to the election of directors or persons performing similar functions; or (ii) a right by any other means to elect or appoint directors or persons performing similar functions, or persons who collectively can exercise such control.
Specification means a technical specification that has been formally published by nexo as an adopted Specification.
Submission means an affirmative and knowing technical contribution, in written or electronic form, with the intention that such contribution may be considered for inclusion in a Specification. A Submission may occur, for example, as a result of an unsolicited offer to nexo of existing technology by a Participant; in response to a general nexo request for proposals; or by participation in a working group or other technical process of nexo.
Trademark means trademarks, service marks, business names, corporate names and trade names whether protected by registration or not, to the extent that applicable legislation grants protection in such circumstances.
Work Product (or nexo Work Product) means any publication or work product of nexo that is made available generally to Participants by nexo, such as Specifications and Draft Specifications
