The following is a working draft of sample language to use in an RFO.
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Royalties and Patent Fees: Offeror shall pay all license fees and royalties and assume all costs incident to the use or possession in the performance of the Work or the incorporation in the Work of any Intellectual Property.
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Third Party Intellectual Property: Wherever the Contract Documents require that any Intellectual Property which is proprietary to any third party be furnished to the (Agency Name), Offeror shall obtain and furnish with such Intellectual Property the following: (i) documentation on the use of such Intellectual Property, (ii) a perpetual, irrevocable license (which may be nontransferable, nonexclusive, or both) to reproduce, publish, otherwise use, or modify such Intellectual Property and associated user documentation, and (iii) a perpetual, irrevocable license (which may be nontransferable, nonexclusive, or both) to authorize others to reproduce, publish, otherwise use, or modify such Intellectual Property for (Agency Name) purposes.
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Disclosure of Intellectual Property Produced During The Work: Offeror shall promptly notify (Agency Name) of all Intellectual Property which Offeror or Offeror's employees, subcontractors, or subcontractor's employees may produce, either solely or jointly with others, during the course of the Work. In addition, Offeror shall promptly notify (Agency Name) of all Intellectual Property to which Offeror may acquire rights in connection with the performance of the Work. Such notice shall contain sufficient technical detail to convey a clear understanding of the Intellectual Property, and shall identify any publication, sale, public use, or impending publication. Promptly upon request, Offeror shall supply such additional information as (Agency Name) may request.
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Work for Hire; Transfer and Assignment of Rights: With respect to Intellectual Property produced by Offeror or Offeror's employees, subcontractors, or subcontractor's employees during the course of performing the Work other than the Intellectual Property specifically exempted in the Supplementary Conditions, Offeror agrees that such Intellectual Property has been commissioned and is produced as work made for hire and (Agency Name) is the sole owner of all Intellectual Property Rights inherent in such Intellectual Property, and to the extend that such Intellectual Property is not produced as work for hire, Offeror hereby assigns to (Agency Name) all Intellectual Property Rights to such Intellectual Property and all reversions of such Intellectual Property Rights. Offer agrees to assign to (Agency Name) any reversions of such Intellectual Property Rights it may acquire, and to execute any applications, assignments, or other instruments which (Agency Name) may deem necessary in order to enable (Agency Name) to apply for and obtain such Intellectual Property Rights (e.g. copyrights, patents or other proprietary rights in the United States and foreign countries), and to assist (Agency Name) in the process of pursuing such intellectual Property Rights. The parties hereto agree that the Intellectual Property and all Intellectual Property Rights thereto are being sold in their entirety to (Agency Name) for whatever use it desires, and nothing contained herein shall be deemed to constitute a mere license or franchise in the (Agency Name). Offeror agrees to take all necessary action to protect the confidential and proprietary information included in the Intellectual Property, including appropriate instructions and agreements with its employees, agents, and subcontractors.
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If Offeror fails to protect any Intellectual Property Rights in the Intellectual Property produced in the course of performing the Work but exempted from this paragraph, called Work for Hire, Transfer and Assignment of Rights, by the Supplementary Conditions, (Agency Name) shall have full authority to protect, assume and retain all Intellectual Property Rights in any and all such Intellectual Property.
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Offeror's Use of Intellectual Property Restricted: Offeror agrees that Offeror, its agents, and its employees shall not in any manner use, sell, distribute, disclose or otherwise communicate any portion of Intellectual Property owned by or licensed to (Agency Name), except in the course of performing the Work, unless Offeror has independent Intellectual Property Rights to such Intellectual Property.
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Grant of License: With respect to such Intellectual Property as is (i) incorporated into the Work (unless other than Intellectual Property for which (Agency Name) already possesses equal or greater Intellectual Property Rights by virtue of this Agreement or otherwise), (ii)produced by Offeror or Offeror's employees, subcontractors, or subcontractor's employees during the course of performing the Work and specifically exempted from the paragraph called Work for Hire; Transfer and Assignment of Rights in these General Conditions by the Supplementary Conditions, or (iii) specifically identified in the Supplementary Conditions as Intellectual Property to which Intellectual Property Rights are granted by these General Conditions, Offeror hereby grants to (Agency Name) (iv) a nonexclusive, perpetual, irrevocable, enterprise-wide license to reproduce, publish, or otherwise use such Intellectual Property and associated user documentation, and (v) a nonexclusive, perpetual, irrevocable, enterprise-wide license to authorize others to reproduce, publish, or otherwise use such Intellectual Property for (Agency Name)'s purpose.
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Modification; Derivative Works: (Agency Name) shall have the right, in its own discretion, to independently modify any Intellectual Property to which license is granted herein for (Agency Name)'s own purposes and use, through the services of its own employees or independent offerors. (Agency Name) shall own all Intellectual Property Rights to such modifications. Contractor shall not incorporate any such modifications into its Intellectual Property for distribution to third parties unless it first obtains a license from (Agency Name).
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Laws and Regulations Relating to Intellectual Property: Offeror shall comply with all Laws and Regulations relating to Intellectual Property. Offeror represents and warrants to (Agency Name) that Offeror will not infringe any Intellectual Property right of any third party. Offeror further represents and warrants to (Agency Name) that in the course of performing the Work it will not use or possess any Intellectual Property owned by a third party without paying any required royalty or patent fees.
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Indemnification-Intellectual Property: To the fullest extent permitted by Laws and Regulations, Offeror shall indemnify and hold harmless (Agency Name), and its officers, directors, employees and agent, as more fully specified in these General Conditions in that paragraph called Offeror's Indemnification of (Agency Name), from and against all fines, penalties, claims, damages, losses, demands, judgments, settlements, punitive damages, costs of suit, attorneys' fees and delays to other offerors, whether arising in tort or otherwise, and whether the parties are individually or jointly responsible from any damages, that arise out of, result from or relate to any infringement of property, contractual, or employment rights or Intellectual Property Rights incident to the use in the performance of the Work or resulting from the incorporation in the Work of any Intellectual Property. Offeror agrees that it will make no settlement which prevents (Agency Name) from continuing use of the Intellectual Property without (Agency Name)'s prior written approval. In all events, (Agency Name) shall have the right to participate in the defense of any such suits or proceeding through counsel of its own choosing.
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Permits and Licenses: Unless otherwise provided in the Supplementary Conditions, Offeror shall obtain and pay for all necessary permits and licenses. Offeror shall pay all governmental charges and inspection fees necessary for the prosecution of the Work, which are applicable at the time of opening of Offers, or, if there no Offers, on the Effective Date of the Agreement.
