|
Cooperative Research Agreement
Format for Written Cooperative Agreement
1. Applicability of this Agreement
2. Background Intellectual Property
3. Project Intellectual Property
4. Follow-on Research or Development
5. Confidentiality/Publication
6. Liability
7. Termination
Model Agreement
Small Business Technology Transfer (STTR) Program Allocation Of Rights In Intellectual
Property And Rights To Carry Out Follow-On Research, Development, Or Commercialization
This Agreement
between _____________________________, a small business concern organized as
a______________________under the laws of _________________ and having a principal
place of business at__________________________________________________
_________________________________, ("SBC") and ________________________________________,
a research institution having a principal place of business at ________________________________________,
("RI") is entered into for the purpose of allocating between the parties
certain rights relating to an STTR project to be carried out by SBC and RI (hereinafter
referred to as the "PARTIES") under an STTR funding agreement that
may be awarded by the National Science Foundation (NSF) to SBC to fund a proposal
entitled "___________________________________________________
"submitted, or to be submitted, to NSF by SBC on or about _______________, 200__.
1. Applicability of this Agreement
(a) This
Agreement shall be applicable only to matters relating to the STTR project referred
to in the preamble above.
(b) If a funding agreement for an STTR project is awarded to an SBC based upon the STTR
proposal referred to in the preamble above, SBC will promptly provide a copy
of such funding agreement to RI, and SBC will make a subaward to RI in accordance
with the funding agreement, the proposal, and this Agreement. If the terms of
such funding agreement appear to be inconsistent with the provisions of this
Agreement, the Parties will attempt in good faith to resolve any such inconsistencies.
However, if such resolution is not achieved within a reasonable period, SBC
shall not be obligated to award nor RI to accept the subaward. If a subaward
is made by SBC and accepted by RI, this Agreement shall not be applicable to
contradict the terms of such subaward or of the funding agreement
awarded by NSF to SBC except on the grounds of fraud, misrepresentation, or
mistake, but shall be considered to resolve ambiguities in the terms of the
subaward.
(c) The provisions of this Agreement shall apply to any and all consultants, subcontractors, independent
contractors, or other individuals employed by SBC or RI for the purposes of
this STTR project.
2. Background Intellectual Property
(a) "Background Intellectual Property" means property and the legal right therein of either
or both parties developed before or independent of this Agreement including
inventions, patent applications, patents, copyrights, trademarks, mask works,
trade secrets and any information embodying proprietary data such as technical
data and computer software.
(b) This Agreement shall not be construed as implying that either party hereto shall
have the right to use Background Intellectual Property of the other in connection
with this STTR project except as otherwise provided hereunder.
(1) The following Background Intellectual Property of SBC may be used nonexclusively and, except
as noted, without compensation by RI in connection with research or development
activities for this STTR project (if "none" so state):____________________________________________:
(2) The following Background Intellectual Property of RI may be used nonexclusively and, except
as noted, without compensation by SBC in connection with research or development
activities for this STTR project (if "none" so state): ___________________________________________:
(3) The following Background Intellectual Property of RI may be used by SBC nonexclusively in
connection with commercialization of the results of this STTR project, to the
extent that such use is reasonably necessary for practical, efficient and competitive
commercialization of such results but not for commercialization independent
of the commercialization of such results upon the condition that SBC pay to
RI, in addition to any other royalty including any royalty specified in the
following list, a royalty of __% of net sales or leases made by or under the
authority of SBC of any product or service that embodies, or the manufacture
or normal use of which entails the use of, all or any part of such Background
Intellectual Property (if "none" so state): __________________________________________________.
3. Project Intellectual Property
(a) "Project Intellectual Property" means the legal rights relating to inventions (including
Subject Inventions as defined in 37 CFR § 401), patent applications,
patents, copyrights, trademarks, mask works, trade secrets and any other legally
protectable information, including computer software, first made or generated
during the performance of this STTR Agreement.
(b) Except as otherwise provided herein, ownership of Project Intellectual Property shall
vest in the party whose personnel conceived the subject matter or first actually
reduced the subject matter to practice, and such party may perfect legal protection
therein in its own name and at its own expense. Jointly made or generated Project
Intellectual Property shall be jointly owned by the Parties unless otherwise
agreed in writing. The SBC shall have the first option to perfect the rights
in jointly made or generated Project Intellectual Property unless otherwise
agreed in writing.
(1) The ownership, including rights to any revenues and profits, resulting from any product, process,
or other innovation or invention based on the cooperative shall be allocated
between the SBC and the RI as follows:
SBC Percent: ________ RI Percent:__________
(2) Expenses and other liabilities associated with the development and marketing of any product,
process, or other innovation or invention shall be allocated as follows: the
SBC will be responsible for ___ percent and the RI will be responsible for ___
percent.
(c) The Parties agree to disclose to each other, in writing, each and every Subject Invention,
which may be patentable or otherwise protectable under the United States patent
laws in Title 35, United States Code. The Parties acknowledge that they will
disclose Subject Inventions to each other and the awarding agency within ______
months after their respective inventor(s) first disclose the invention in writing
to the person(s) responsible for patent matters of the disclosing Party. All
written disclosures of such inventions shall contain sufficient detail of the
invention, identification of any statutory bars, and shall be marked confidential,
in accordance with 35 U.S.C. §205.
(d) Each
party hereto may use Project Intellectual Property of the other nonexclusively
and without compensation in connection with research or development activities
for this STTR project, including inclusion in STTR project reports to the NSF
and proposals to the NSF for continued funding of this STTR project through
additional phases.
(e) In addition to the Government's rights under the Patent Rights clause of 37 CFR §
401.14, the Parties agree that the Government shall have an irrevocable, royalty
free, nonexclusive license for any governmental purpose in any Project Intellectual
Property.
(f) SBC will have an option to commercialize the Project Intellectual Property of RI, subject
to any rights of the Government therein, as follows:
(1) Where Project Intellectual Property of RI is a potentially patentable invention, SBC
will have an exclusive option for a license to such invention, for an initial
option period of __ months after such invention has been reported to SBC. SBC
may, at its election and subject to the patent expense reimbursement provisions
of this section, extend such option for an additional __ months by giving written
notice of such election to RI prior to the expiration of the initial option
period. During the period of such option following notice by SBC of election
to extend, RI will pursue and maintain any patent protection for the invention
requested in writing by SBC and, except with the written consent of SBC or upon
the failure of SBC to reimburse patenting expenses as required under this section,
will not voluntarily discontinue the pursuit and maintenance of any United States
patent protection for the invention initiated by RI or of any patent protection
requested by SBC. For any invention for which SBC gives notice of its election
to extend the option, SBC will, within ___ days after invoice, reimburse RI
for the expenses incurred by RI prior to expiration or termination of the option
period in pursuing and maintaining (i) any United States patent protection initiated
by RI and (ii) any patent protection requested by SBC. SBC may terminate such
option at will by giving written notice to RI, in which case further accrual
of reimbursable patenting expenses hereunder, other than prior commitments not
practically revocable, will cease upon RI's receipt of such notice. At any time
prior to the expiration or termination of an option, SBC may exercise such option
by giving written notice to RI, whereupon the parties will promptly and in good
faith enter into negotiations for a license under RI's patent rights in the
invention for SBC to make, use and/or sell products and/or services that embody,
or the development, manufacture and/or use of which involves employment of,
the invention. The terms of such license will include: (i) payment of reasonable
royalties to RI on sales of products or services which embody, or the development,
manufacture or use of which involves employment of, the invention; (ii) reimbursement
by SBC of expenses incurred by RI in seeking and maintaining patent protection
for the invention in countries covered by the license (which reimbursement,
as well as any such patent expenses incurred directly by SBC with RI's authorization,
insofar as deriving from RI's interest in such invention, may be offset in full
against up to of accrued royalties in excess of any minimum royalties due RI);
and, in the case of an exclusive license, (iii) reasonable commercialization
milestones and/or minimum royalties.
(2) Where Project Intellectual Property of RI is other than a potentially patentable invention,
SBC will have an exclusive option for a license, for an option period extending
until months following completion of RI's performance of that phase of this
STTR project in which such Project Intellectual Property of RI was developed
by RI. SBC may exercise such option by giving written notice to RI, whereupon
the parties will promptly and in good faith enter into negotiations for a license
under RI's interest in the subject matter for SBC to make, use and/or sell products
or services which embody, or the development, manufacture and/or use of which
involve employment of, such Project Intellectual Property of RI. The terms of
such license will include: (i) payment of reasonable royalties to RI on sales
of products or services that embody, or the development, manufacture or use
of which involves employment of, the Project Intellectual Property of RI and,
in the case of an exclusive license, (ii) reasonable commercialization milestones
and/or minimum royalties.
(3) Where more than one royalty might otherwise be due in respect of any unit of product
or service under a license pursuant to this Agreement, the parties shall in
good faith negotiate to ameliorate any effect thereof that would threaten the
commercial viability of the affected products or services by providing in such
license(s) for a reasonable discount or cap on total royalties due in respect
of any such unit.
4. Follow-on Research or Development
All follow-on
work, including any licenses, contracts, subcontracts, sublicenses or arrangements
of any type, shall contain appropriate provisions to implement the Project Intellectual
Property rights provisions of this agreement and insure that the Parties and
the Government obtain and retain such rights granted herein in all future resulting
research, development, or commercialization work.
5. Confidentiality/Publication
(a) Background
Intellectual Property and Project Intellectual Property of a party, as well
as other proprietary or confidential information of a party, disclosed by that
party to the other in connection with this STTR project shall be received and
held in confidence by the receiving party and, except with the consent of the
disclosing party or as permitted under this Agreement, neither used by the receiving
party nor disclosed by the receiving party to others, provided that the receiving
party has notice that such information is regarded by the disclosing party as
proprietary or confidential. However, these confidentiality obligations shall
not apply to use or disclosure by the receiving party after such information
is or becomes known to the public without breach of this provision or is or
becomes known to the receiving party from a source reasonably believed to be
independent of the disclosing party or is developed by or for the receiving
party independently of its disclosure by the disclosing party.
(b) Subject
to the terms of paragraph (a) above, either party may publish its results from
this STTR project. However, the publishing party will negotiate the right of
refusal with the other party with respect to a proposed publication, as well
as a day period in which to review proposed publications and submit comments,
which will be given full consideration before publication. Furthermore, upon
request of the reviewing party, publication will be deferred for up to additional
days for preparation and filing of a patent application which the reviewing
party has the right to file or to have filed at its request by the publishing
party.
6. Liability
(a) Each
party disclaims all warranties running to the other or through the other to
third parties, whether express or implied, including without limitation warranties
of merchantability, fitness for a particular purpose, and freedom from infringement,
as to any information, result, design, prototype, product or process deriving
directly or indirectly and in whole or part from such party in connection with
this STTR project.
(b) SBC will
indemnify and hold harmless RI with regard to any claims arising in connection
with commercialization of the results of this STTR project by or under the authority
of SBC. The PARTIES will indemnify and hold harmless the Government with regard to
any claims arising in connection with commercialization of the results of this
STTR project.
7. Termination
(a) This agreement may be terminated by either Party upon ___ days written notice to
the other Party. This agreement may also be terminated by either Party in the
event of the failure of the other Party to comply with the terms of this agreement.
(b) In the event of termination by either Party, each Party shall be responsible for its
share of the costs incurred through the effective date of termination, as well
as its share of the costs incurred after the effective date of termination,
and which are related to the termination. The confidentiality, use, and/or non-disclosure
obligations of this agreement shall survive any termination of this agreement.
AGREED TO AND ACCEPTED
Small Business Concern
By: ________________________________________________
Date: _____________
Print name: _________________________________________
Title: ______________________________________________
Research Institution
By: ________________________________________________
Date: ____________
Print name: _________________________________________
Title: ______________________________________________
|
