Technology Innovation:

Model Agreements

Sample Cooperative Research Agreement

between a Research Organization and a Corporation

By: Dr. Frederic Erbisch, Director (Retired), Office of Intellectual Property, Michigan State University, United Stated, e-mail : erbisch@juno.com

This Agreement is entered into by _____________________ a research organization established under _____________ laws (hereinafter INSTITUTE), having its principle office at _____________________________________________________; and

_______________________________________ a ________________ organized under the laws of ___________________________ (hereinafter COOPERATOR I), having its principle office at ___________________; and ___________________________________ a ____________________ organized under the laws of ___________________________ (hereinafter COLLABORATOR II), having its principle office at ______________________________________.

 

Witnesseth that:

WHEREAS, researchers at INSTITUTE, COLLABORATOR I and COLLABORATOR II are collaborating and continue to collaborate on research pertaining to _______________ and,

WHEREAS, certain intellectual property including patents and patent applications and plant varieties may be derived from this collaborative research effort; and,

WHEREAS, the researchers agreed at the onset of the that the Joint Project (as defined in Article I) would be a joint effort and that the intellectual property or any other benefits that might be derived from the collaboration would be commonly owned by the researchers and their respective institutions; and,

WHEREAS, INSTITUTE, COLLABORATOR I and COLLABORATOR II wish to provide for the handling and division of the patenting costs and the monies received from any option to license or license under said patent rights,

NOW THEREFORE, in consideration of the mutual benefits to be derived hereunder, the Parties agree as follows:

Article I – Definitions

1.1    ”Intellectual Property” shall mean patents, copyrights, trademarks, plant variety certification and any other forms of intellectual property protectable under the country's law.

1.2     ”Joint Ownership” shall mean two or more of the Parties have employees that are co-inventors to Intellectual Property.

1.3   ”Joint Project” shall mean a collaborative research program between Parties involving researchers __________________, ___________________, ______________________, and ______________________ and such other researchers who may participate in this project titled________________________________ _________________________________________________________.

1.4      “Party” shall mean INSTITUTE, COLLABORATOR I  and COLLABORATOR II individually or collectively they shall be referred to as “Parties”.

Article II – Proprietary Rights

2.1      Title to Intellectual Property will be with the originating Party unless there is Joint Ownership

2.2      Handling of Intellectual Property

 

2.2.1   INSTITUTE will be responsible for the patenting and licensing of Intellectual Property with Joint Ownership.  There will be joint assignment to Intellectual Property with Joint Ownership to the contributing Parties.

2.2.2   Intellectual Property made solely by one Party will owned and controlled by that Party.  Controlled means said Party will be in control of all decisions concerning patenting and licensing, and said Party will retain all royalties resulting from the licensing.

2.2.3.1     In all instances, counsel chosen to prosecute patent application, after or plant variety certification shall be made aware of the nature of the Joint Project and shall be charged with determining inventorship in accordance with law soliciting facts, if any, from each Party.

2.3        Licensing and Use

2.3.1     Licensing of jointly developed invention shall only be by mutual agreement of PartiesINSTITUTE shall take the lead in identifying potential licensees and negotiating license agreement(s)  following consultations with the other two Parties.

2.3.2   Inventions developed by individual Parties under the Joint Project shall be available to the other two institutions through a non-exclusive, royalty-free license to use such inventions for internal, non-commercial purposes.

2.4     Other institutions or parties may be added to the Joint Project via a subcontract or some other mechanism for the purpose of facilitating the research.  INSTITUTE, COLLABORATOR I, and COLLABORATOR II will remain the primary Parties for the determination of patenting and Intellectual Property ownership and the other institutions which may be added to the Joint Project shall be secondary in the decision-making process pertaining to proprietary rights.

Article III – Protection Expenses

 

3.1     National and foreign patent applications and plant variety certification applications for Joint Ownership shall be filed, prosecuted and enforced as mutually agreed upon between the Parties and enforced as mutually agreed upon between the Parties, and the Parties will share the expenses thereof a provided in Article III 3.2 hereof.

3.2     Unless agreed otherwise, all legal costs and fees incurred after the Effective Date of this Agreement will be shared equally by the institutions contributing to an invention of new plant variety, except that if any Party objects to the filing or continued prosecution of an application or enforcement of a patent or certificate in a particular country (or countries), the other Party (Parties) may proceed at its (their) own expense.  If any Party (Parties) proceeds on its (their) own, the Party declining to proceed shall have no rights or interest in any patent or plant variety certification rights for said country (countries) in which it declines to proceed.

Article IV – Income Distribution

For Joint Ownership Intellectual Property the Parties agree to share equally all income received from licensing and commercialization of the Intellectual Property or any other technology that might result from the present and future collaboration on the Joint Project.  In the event gross royalties do not cover the accrued legal costs expended by any Party with respect to jointly developed Intellectual Property, no Party shall be held responsible for reimbursing the other Party (Parties).

Article V – Assignability

None of the Parties shall assign or transfer any of the rights under this Agreement without the prior written approval of the other Parties which such approval shall not be unreasonably withheld.

Article VI – Future Issues

6.1     If any disagreements arise, the Parties will use best efforts to negotiate to resolve all differences.  The collaboration of Parties and their researchers is paramount.

6.2     This Agreement shall terminate with the expiration of the last to expire patents and/or plant variety certifications developed under this Joint Project, or on abandonment of all patent or plant variety applications developed under this Joint Project, provided such abandonment is by mutual consent.

6.3      This Agreement may be amended by mutual agreement of the Parties.  Such amendments shall not be binding unless they are in writing and signed by authorized representatives of each Party

Article VII – Miscellaneous

7.1     This construction, validity, performance and effect of this entire Agreement shall be governed by the laws of ________________.

7.2     This Agreement sets forth the entire agreement and understanding between the Parties as to the subject matter thereof and merges al prior discussions between them.

7.3     If any provision of this Agreement shall be held to be invalid, such invalidity shall not affect any other provisions of this Agreement, but the remainder hereof shall be effective as though such invalid provisions had not been contained herein.

7.4     Each Party shall require all of its researchers conducting research under the Joint Project to assign their rights to Intellectual Property conceived during the term of the Joint Project to the appropriate Party.

7.5     The researchers of each Party shall continue to be employees of that Party and shall not be considered to be employees of any other Party

7.6     This Agreement may be executed in any number of counterparts, any one of which shall be deemed to be the original without the production of the others.

 

In witness whereof, the Parties hereto have caused the Agreement to be executed in triplicate by their duly authorized representatives.

 

The Effective Date of this Agreement is _____________________, 20 ___.

 

 

INSTITUTE                                                      COLLABORATOR I

 

By: _______________________________       By: ___________________________

 

Name: _____________________________      Name: _________________________

 

Title: ______________________________      Title: __________________________

 

COLLABORATOR II

 

By: ________________________________

 

Name: _____________________________

Title: ______________________________

 

 

 

 

  

 

 

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