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 ______________________________________.
WHEREAS, researchers at
INSTITUTE, COLLABORATOR I and COLLABORATOR II are
collaborating and continue to collaborate on research pertaining to
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,
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
Property” shall mean patents, copyrights, trademarks, plant variety
certification and any other forms of intellectual property protectable under the
”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
“Party” shall mean INSTITUTE, COLLABORATOR I and
COLLABORATOR II individually or collectively they shall be referred to as “Parties”.
II – Proprietary Rights
Title to Intellectual Property will be with the originating Party unless
there is Joint Ownership
of Intellectual Property
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.
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.
Licensing and Use
of jointly developed invention shall only be by mutual agreement of Parties.
INSTITUTE shall take the lead in identifying potential licensees and
negotiating license agreement(s) following consultations with the other
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
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
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.
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
IV – Income Distribution
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).
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.
VI – Future Issues
any disagreements arise, the Parties will use best efforts to negotiate
to resolve all differences. The collaboration of Parties and their
researchers is paramount.
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
VII – Miscellaneous
This construction, validity, performance and effect of this entire Agreement
shall be governed by the laws of ________________.
This Agreement sets forth the entire agreement and understanding between the
Parties as to the subject matter thereof and merges al prior discussions
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
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.
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
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 ___.