As used herein, the
following terms shall have the following meanings:
1.1 "Project" shall mean a project described in a fully
executed Project Proposal.
1.2 “Project Proposal” shall mean a research proposal which is
attached hereto and incorporated herein by reference.
1.3 "Contract Period" will be the period, beginning
_________________, 20__ through ______________, 20__, renewable in accordance
with the terms hereof, unless earlier terminated pursuant to this Agreement.
1.4 "Sponsor Intellectual Property" shall mean individually
and collectively all inventions, improvements or discoveries, whether or not
copyrightable, which are conceived or made solely by one or more
employees of Sponsor in performance of the Project during the Contract Period.
1.5 “Joint Intellectual Property" shall mean individually and
collectively all inventions, improvements and discoveries, whether or not
patentable or copyrightable, which are conceived and reduced to practice jointly
by one or more employees of each Party during the term of this Agreement.
1.6 "Recipient Intellectual Property" shall mean individually
and collectively all inventions, improvements or discoveries, whether or not
patentable or copyrightable, which are conceived or made solely by one or more
employees of Recipient in performance of the Project during the Contract Period.
ARTICLE 2 -
2.1 Recipient shall perform each Project in accordance with
the terms and conditions of this Agreement.
2.2 In the event that the applicable Project Director ceases
to direct the associated Project and a mutually acceptable substitute is not
found within 80 days of such cessation, either Recipient or Sponsor shall have
the option to terminate said Project.
ARTICLE 3 - REPORTS
3.1 Written program reports describing the results of the
applicable Project to date and information regarding the current status and
future activities to be undertaken as part of such Project shall be provided by
Recipient to Sponsor as required by the applicable Project Proposal, provided
that such reports shall in no event be delivered less frequently than quarterly.
3.2 During the term of this Agreement, representatives of
Recipient may meet with representatives of Sponsor at times and places mutually
agreed upon to discuss the progress and results as well as ongoing plans, or
changes therein, of each Project.
3.3 During the term of this Agreement, Recipient agrees to
permit representatives of Sponsor to examine at any reasonable time during
normal business hours
(i) the facilities where the Project is being conducted,
(ii) associated raw research data, and
(iii) any other relevant information (and to make copies) necessary for the
Sponsor to confirm that such Projects are being conducted in conformance with
the applicable Project Proposal and in compliance with applicable laws and
4.1 It is agreed that total costs to Sponsor for any Project
hereunder shall not exceed the sum set forth in the applicable Project Proposal.
Payment shall be made by Sponsor within thirty (30) days of receipt of monthly
invoices for actual charges incurred by the Recipient in performance of the
applicable Project provided that Recipient is not in breach of this Agreement.
4.2 Recipient shall retain title to any equipment necessary
for the conduct of a Project, purchased pursuant to a signed Project Proposal
with funds provided by Sponsor under this Agreement.
4.3 In the event of early termination of this Agreement by
Sponsor pursuant to this Agreement other than for breach of this Agreement,
Sponsor shall pay all costs accrued by Recipient as of the date of termination,
including but not limited to reasonable non-cancellable obligations incurred
prior to the effective date of termination made pursuant to a fully executed
Project Proposal. Project Proposal shall set forth a budget for travel and other
out-of-pocket expenses to be incurred pursuant to the applicable Project.
ARTICLE 5 -
Sponsor will not
use the name of Recipient, nor of any member of Recipient's Project staff, in
any publicity, marketing, advertising or news release without the prior written
approval of an authorized representative of Recipient. Recipient will not use
the name of Sponsor, nor any employee of Sponsor, in any publicity, advertising
or news release without the prior written approval of Sponsor. Nothing herein
shall restrict the Recipient's or Sponsor's right to disclose the existence of
this Agreement, the identity of the parties, and the nature and scope of the
ARTICLE 6 -
that the results of a Project achieved by Recipient may be publishable and
agrees that researchers at Recipient engaged in the Project shall be permitted
to present at symposia, national, or regional professional meetings, and to
publish in journals, or otherwise of their own choosing, methods and results of
such Project, provided, however, that Sponsor shall have been furnished copies
of any proposed publication or presentation at least one month in advance of the
submission of such proposed publication or presentation to a journal, editor, or
other third party. Sponsor shall have one month after receipt of said copies, to
object to such proposed presentation or proposed publication because there is
patentable subject matter which needs protection or there is proprietary
confidential information of Sponsor in such publication or presentation. In the
event that Sponsor makes such objection, said researcher(s) shall refrain from
making such publication or presentation for a maximum of four months from date
of receipt of such objection in order for Recipient to file patent
application(s) directed to the patentable subject matter contained in the
proposed publication or presentation. It is understood that the Sponsor may wish
to be credited in the publication or publish with the Recipient, as it is
appropriate. No such publication shall contain any confidential information of
Sponsor, or any results of any Project obtained by Sponsor other than from the
ARTICLE 7 - INTELLECTUAL
7.1 Inventorship shall be determined under _________ patent
7.2 All rights and title to Recipient Intellectual Property
created pursuant to the Project shall belong to Recipient and shall be subject
to the terms and conditions of this Agreement.
7.3 All rights and title to Joint Intellectual Property
created pursuant to a Project shall belong jointly to Sponsor and Recipient and
shall be subject to the terms and conditions of this Agreement.
7.4 Rights to inventions, improvements and discoveries,
whether or not patentable or copyrightable, relating to a Project made solely by
employees of Sponsor shall belong to Sponsor. Such inventions, improvements, and
discoveries shall not be subject to the terms and conditions of this Agreement.
7.5 Recipient will promptly notify Sponsor of any Recipient
Intellectual Property. If Sponsor directs Recipient to file a patent application
hereunder or desires to maintain its right to exercise either option (a) or (b)
of Section 8.2 below, Sponsor shall retain an independent law firm reasonably
acceptable to Recipient to promptly prepare, file and prosecute such patent
applications in Recipient's name and shall bear all costs incurred in
connection with such preparation, filing, prosecution, and maintenance of patent
application(s) for as long as Sponsor retains or exercises its option rights
under Section 8. Sponsor and Recipient shall cooperate to assure that such
application(s) will cover, to the best of Sponsor's knowledge, all items of
commercial interest and importance. While Sponsor shall be responsible for
making the day to day decisions regarding the prosecution of such patent
applications, the parties must mutually agree on all material decisions
regarding the scope and content of application(s) to be filed and prosecution
thereof. Sponsor shall promptly supply to Recipient, at Recipient’s request,
copies of all papers received and filed in connection with the prosecution
thereof in sufficient time for Recipient to comment thereon.
7.6 Each party will promptly notify the other when Joint
Intellectual Property is created. Sponsor shall have the right, at its option
and expense, and through patent attorneys or agents of its choice, to make all
decisions with respect to, and to otherwise control the preparation, filing and
prosecution (including any proceedings relating to reissues, reexaminations,
protests, interferences, and requests for patent extensions or supplementary
protection certificates) of any patent application with respect to any Joint
Intellectual Property and to maintain any patents issuing therefrom.
7.7 Sponsor shall ensure that patent attorneys or agents are
able and agree not to take any action which would discriminate in favor of
Sponsor’s interest in Recipient Intellectual Property or Joint Intellectual
Property to the detriment of Recipient’s interests in Recipient Intellectual
Property and Joint Intellectual Property in all patent decisions and actions
taken pursuant to sections 7.5 and 7.6 above. Sponsor shall not retain patent
attorneys or agents if such representatives pose a conflict of interest with
respect to the Recipient’s rights in Recipient Intellectual Property and Joint
7.8 If Sponsor elects not to exercise its option as described
in Section 8.2 below or either party decides to discontinue or refrain from
providing the financial support for the prosecution or maintenance of patents or
patent applications claiming Recipient Intellectual Property or Joint
Intellectual Property, such party shall be deemed to have irrevocably assigned
its rights in such patents and patent applications to the other party and such
other party shall be free to file or continue prosecution or maintain any such
application(s) and to maintain any protection issuing thereon in the __________
(country) and in any foreign country at such other party’s sole expense and all
rights in the applicable patent or patent applications shall be transferred to
such other party.
ARTICLE 8 - GRANT OF RIGHTS
Recipient hereby grants Sponsor a royalty-free, non-exclusive license to use
Recipient Intellectual Property within its own organization.
Recipient hereby grants to Sponsor, an exclusive option at Sponsor's sole
election, to negotiate for either (a) a non-exclusive, royalty-bearing license
to use Recipient Intellectual Property for any purpose, or (b) an exclusive
royalty-bearing license with a right to sublicense to Recipient Intellectual
Property or (c) an exclusive license to Recipient’s interest in any Joint
Intellectual Property. Terms and conditions of these licenses are to be
negotiated in good faith and agreed upon between Recipient and Sponsor. Sponsor
shall notify Recipient by written notice within 180 days of (I) receiving
Recipient’s written notice of the generation of a Recipient Intellectual
Property, or (II) in the case of Joint Intellectual Property, agreement of the
parties as to the generation of Joint Intellectual Property, whether Sponsor
elects to exercise the Option. If Sponsor either (i) elects not to exercise its
option or (ii) fails to provide written notice within such 180 day period, then
Sponsor shall automatically be deemed to have relinquished any rights it may
have to any license described in this Section. If Sponsor provides Recipient
written notice of its exercise of the Option, the parties shall exclusively
negotiate in good faith, for a period of 180 days, a license to the applicable
Recipient Intellectual Property or Joint Intellectual Property on terms
consistent with the terms of this paragraph. If, after good faith negotiations,
no agreement is reached by the parties within such 180 day period, Recipient
shall be free to enter into a license with any third party for any Recipient
Intellectual Property subject to Sponsor’s use right in Section 8.1 and to
license its rights in such Joint Intellectual Property.
In the event that Sponsor acquires an exclusive license or right under
subsections 8.2 of this Article, the Recipient will retain the right to continue
to use any Recipient Intellectual Property and Joint Intellectual Property
within the Recipient for research purposes.
ARTICLE 9 -
CONFIDENTIALITY AND PUBLICITY
9.1 During discussions leading up to this Agreement, and
during the course of performing the Project, it is anticipated that Recipient
and Sponsor will learn confidential and/or proprietary information of the other.
Parties will keep confidential, and not use, except in connection with the
performance of the sponsored research hereunder, any information which is
provided in writing and marked as confidential by either party, or if disclosed
orally, described in a writing within 30 days after disclosure, including
without limitation any information which relates to sponsored research to be
performed under this Agreement, any information which either party may acquire
with respect to the other party’s business, and any information relating to new
products, customers, pricing, know-how, processes, and practices, ("Confidential
Information.") The obligations of confidentiality and non-use of Confidential
Information shall survive the termination or expiration of this Agreement for a
period of five years, unless or until:
(a) such information shall become known to third parties or shall become
publicly known through no fault of Recipient, or
(b) such information was already in a party’s possession, as evidenced by
written documentation prior to the disclosure of such information to the
informing party, or
(c) such information shall be subsequently disclosed to either party on a
non-confidential basis by a third party who, to the best of the receiving
party’s knowledge, is not under any obligation of confidentiality.
(d) such information is specifically authorized by the informing party, in
writing, to be disclosed.
(e) such information is required to be disclosed by applicable law or order of a
court of competent jurisdiction in which case the disclosing party agrees to
notify the other party of such requirement so that party may take steps to
narrow or avoid disclosure.