Below is a list of common sections included in Collaborative Research Agreements. These sections are linked to the below sample agreement for you to explore.
CONFIDENTIAL TREATMENT REQUESTED UNDER RULE 24(b)(2) OF THE SECURITIES AND EXCHANGE ACT OF 1934. CONFIDENTIAL TREATMENT IS REQUESTED AND IS NOTED WITH “[CONFIDENTIAL TREATMENT REQUESTED].” AN UNREDACTED VERSION OF THIS DOCUMENT HAS BEEN PREVIOUSLY FILED WITH THE SECURITIES AND EXCHANGE COMMISSION.
| 1.3 | “Intellectual Property” |
means all of the following and as they exist in all jurisdictions throughout the world:
1.3.1 patents, patent applications and inventions, designs and improvements described and claimed therein, patentable inventions and other patent rights (including any divisions, continuations, continuations-in-part, substitutions, or reissues thereof, whether or not patents are issued on any such applications and whether or not any such applications are modified, withdrawn, or resubmitted);
1.3.2 trademarks, service marks, trade dress, trade names, brand names, designs, logos, or corporate names, whether registered or unregistered, and all registrations and applications for registration thereof; and
1.3.3 copyrights, including all renewals and extensions thereof, copyright registrations and applications for registration thereof.
CONFIDENTIAL TREATMENT REQUESTED
| 1.4 | “Background Intellectual Property” | Intellectual Property previously developed and owned or exclusively licensed to the respective parties which is required for carrying out the responsibilities in the Research Project pursuant to Clauses 4.2 and 4.3 and Schedule 2; |
| 1.5 | “Know-how” | All technical information in the Field created during research carried out by The University under the direction of Prof. Laurence Patterson in the possession of The University relating directly to the inventions claimed in The Patents; |
| 1.6 | “The Patents” | [CONFIDENTIAL TREATMENT REQUESTED] |
| 1.7 | “Patent A” | [CONFIDENTIAL TREATMENT REQUESTED] |
| 1.8 | “Patent B” | [CONFIDENTIAL TREATMENT REQUESTED] |
| 1.9 | “Payment Schedule” | The payments due to be paid by Somanta to The University for research conducted under the agreed Project Plan and set out in Schedule 1 and Clause 3.1. |
| 1.10 | “Project Intellectual Property” | All Intellectual Property arising out of the Research Project within the Project Plan including, without limitation, the Project Information; |
| 1.11 | “Project Information” | all discoveries, inventions, whether patentable or not, results, data, analyses, designs, formulae, processes, specifications, reports, methods, Know-how, trade secrets, drawings or other information arising out of the Research Project; |
| 1.12 | “Project Plan” | the timetable, research and development objectives, deliverables and plan of work for the Research Project agreed by The University and Somanta, and set out in Schedule 2 as may be amended from time to time; |
| 1.13 | “University’s Project Responsibilities” | the work to be carried out by The University under the Research Project as described in Schedule 2 as may be amended from time to time; |
CONFIDENTIAL TREATMENT REQUESTED
| 1.14 | “University’s Project Scientists” | including Prof. Laurence Patterson and his research team (employed by The University) and any replacements thereof; |
| 1.15 | “University’s Project Team” | The University’s Project Scientists and any other individuals involved in the Research Project by The University; |
| 1.16 | “Field” | Area of scientific research undertaken by the University Project Team to complete the Research Project; |
| 1.17 | “The Research Project” | The research undertaken as described in the Project Plan and performed by The University’s Project Team; |
| 1.18 | “The Research Team” | The team involved in the delivery of the research collaboration including the University’s Project Team and those individuals involved in the research either directly or indirectly at Somanta; |
CONFIDENTIAL TREATMENT REQUESTED
| 2.1 | The University shall carry out its Project Responsibilities with reasonable skill and care, and in accordance with the timetable and scope set out specifically in the Project Plan (Schedule 2) in connection to The Patents which is the condition precedent of the Research Project. |
| 2.2 | At the end of each three month period, The University shall notify Somanta with a progress report on the Research Project setting out the following:- |
| 2.2.1 | the work which The University has carried out on the Research Project during the previous three months; |
| 2.2.2 | any data and/or results obtained during the previous three months; |
| 2.2.3 | the work that The University intends to carry out during the next three months; and |
| 2.2.4 | details of any inventions made in the course of carrying out the Research Project as described in the Project Plan. |
| 2.3 | Within 14 days of the end of each calendar quarter the parties shall meet to discuss progress on the Research Project in general and in particular The University’s latest progress report submitted under Clause 2.2. The University shall procure that the Project Scientists shall attend such meetings together with such other members of the University’s Project Team as Somanta may reasonably request. This meeting should occur at a destination and time previously agreed by both parties and at Somanta’s expense. |
The University shall use The University’s Project Scientists to carry out and/or supervise The University’s Project Responsibilities. If, due to circumstances beyond the reasonable control of The University, it is necessary to replace any of the University’s Project Scientists then the parties shall promptly meet to discuss potential
CONFIDENTIAL TREATMENT REQUESTED
replacements of equivalent qualification and experience in the Field. The University shall not replace any of The University’s Project Scientists on the Research Project without the prior written approval of Somanta.
| 2.5 | The University shall have discretion following consultation with Somanta to replace other members of The University’s Project Team during the Research Project with replacements of appropriate qualifications, skills and experience in the Field. |
| 3.1 | In consideration of The University complying with its obligations under this Agreement, Somanta shall pay to The University the amounts set out in the Payment Schedule paid quarterly, in arrears from the Commencement Date. |
| 3.2 | All sums due under this Agreement shall be paid in [CONFIDENTIAL TREATMENT REQUESTED]. |
| 3.3 | Sums specified in this Agreement in relation to the Payment Schedule are [CONFIDENTIAL TREATMENT REQUESTED] of Value Added Tax. |
CONFIDENTIAL TREATMENT REQUESTED
| 4. | Ownership and Use of Background Information , Background Intellectual Property and the Project Intellectual Property |
| 4.1 | Each party shall make available to the other such of its Background Information as may assist the other party in carrying out its responsibilities under the Research Project provided that nothing in this Clause 4.1 shall oblige either party to act in breach of a confidentiality obligation owed to any third party. |
| 4.2 | Ownership of Background Intellectual Property shall remain vested in the party making such Background Intellectual Property available. |
| 4.3 | Each party hereby grants to the other a non-exclusive, non-transferable, non-sublicensable, royalty-free licence to make use of its Background Intellectual Property solely for the purposes of carrying out its responsibilities under the Research Project. |
Somanta shall own the entire right, title and interest in and to all Project Intellectual Property discovered, developed, or invented in the course of performing the Research Project as defined within the Project Plan or otherwise related to Alchemix or Prodrax, whether solely by a party or jointly by the parties subject to clause 4.5. The University hereby assigns to Somanta all right, title and interest, if any, The University has in any Project Intellectual Property; provided that in the event that the foregoing assignment would be void or impermissible, then The University automatically shall be deemed to have granted to Somanta the perpetual, irrevocable, fully paid-up, freely sub-licensable license to use and practice such Project Intellectual Property for any and all purposes, which license shall be exclusive to Somanta, and which license shall survive any expiration or termination of this Agreement. Notwithstanding the foregoing, Somanta hereby grants to The University a perpetual, irrevocable, royalty-free, non-sublicensable license to use and practice Project Intellectual Property solely for non-commercial research purposes. University
CONFIDENTIAL TREATMENT REQUESTED
hereby agrees that any and all University employees, students or any other persons who provide services in connection with the Research Project will have assigned any and all rights such employee, student or any other person may obtain in any technology or other information by virtue of such services to the University.
| 4.5 | Somanta shall have the exclusive right to apply for patents in respect of improvements and/or inventions made in the course of the Research Project within The Project Plan and The University shall provide Somanta with such assistance as Somanta shall from time to time request with the filing and prosecution of such patent applications, entirely at Somanta’s expense. |
| 4.6 | For the avoidance of doubt, notwithstanding Clause 4.4, The University and Somanta shall own the Intellectual Property, improvements and inventions created or arising outside The Project Plan and unrelated to either Alchemix or Prodrax jointly or solely in accordance of contribution of each party; provided, however, that University hereby grants to Somanta an option (right of first refusal) to license such Intellectual Property and improvements based on fair and reasonable commercial terms following negotiation with The University. |
| 5. | Confidential Information and Publications |
