Industrial Research Agreement
THIS AGREEMENT, effective this ___ day of ________, 2003,
is made by and between:
[ company name ]
[ street address ]
a [ insert state of incorporation]corporation, (hereinafter referred to as “Sponsor”)
and
[ institution name ]
[ street address ]
a
member of the Tennessee Board of Regents,
(hereinafter jointly referred to as “University”).
WITNESSETH:
WHEREAS, the research project contemplated by this
agreement is of mutual interest and benefit to Sponsor and to University, will
further the instructional and research objectives of University in a manner
consistent with its status as a non-profit, tax-exempt, public institution of
higher education, and may derive benefits for both Sponsor and University
through inventions, improvements, and/or discoveries;
NOW, THEREFORE, in consideration of the promises and
mutual covenants herein contained, the parties hereto agree to the following:
Article 1 - Definitions
As used herein, the following
terms shall have the following meanings:
1.1 “Project”
shall mean the project described in Appendix A hereof, under the direction of
Dr. [ ], as principal
investigator. The principal investigator
is responsible for directing research activity.
1.2 “Contract
Period” is _________________ until _________________.
Article 2 - Research Work
2.1. University
shall commence the performance of Project promptly after the effective date of
this Agreement, and shall use reasonable efforts to perform such Project
substantially in accordance with the terms and conditions of this
Agreement. Anything in this Agreement to
the contrary notwithstanding, Sponsor and University may at any time amend the
scope of the Project by mutual written agreement.
2.2 In the event that the principal
investigator becomes unable or unwilling to continue Project, and a mutually
acceptable substitute is not available, University and/or Sponsor shall have
the option to terminate said Project.
2.3 Sponsor understands that the University’s
primary mission is education and advancement of knowledge and the Project will
be designed to carry out this mission.
The manner of performance of the Project will be determined solely by
the Principal Investigator. The
University will perform the Project on a “best efforts” research basis only and
does not guarantee specific results. The
University specifically disclaims all warranties or representations, either
express or implied, for implied merchantability or for warranty of fitness for
a particular purpose, including, without limitation, that any product does not
infringe any patent, copyright or trademark right, as to any work performed
under this Agreement, except as expressly set forth herein.
2.4 Sponsor understands that the University
may be involved in similar research through other researchers on behalf of
itself and others. University shall be
free to continue such research provided that, during the term of this
Agreement, it is conducted separately and by different investigators from the
Project, and Sponsor shall not gain any rights via this Agreement to other
research.
Article 3 - Reports and
Conferences
3.1 Written
program reports shall be provided by University to Sponsor every three (3)
months and a final report shall be submitted by University within 60 days of
the conclusion of the Contract Period, or early termination of this Agreement.
3.2 During the
term of this Agreement, representatives of University will 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
Project to be performed hereunder.
Article 4 - Cost,
4.1 As
consideration for the University’s performance, Sponsor will pay the University
an amount equal to its expenditures and reasonable overhead in conducting the
Project. It is agreed to and understood
by the parties hereto that, pursuant to Section 2.1, total costs to Sponsor
hereunder shall not exceed the sum of
_________________________ Dollars ($ ______________). Payment shall be made by Sponsor according to
the following schedule:
[ insert payment schedule ].
4.2 In the event of early termination of this
Agreement by Sponsor for convenience, Sponsor shall pay all costs accrued by
the University as of the date of termination, including non-cancelable
obligations, which shall include all non-cancelable contracts and fellowships
or post-doctoral associates, which shall end no later than the end of the
University’s academic year following termination.
4.3 University shall retain title to all
equipment purchased and/or fabricated by it with funds provided by Sponsor
under this Agreement.
Article 5 - Publicity
Sponsor
will not use the name of University, or any employee of University, in any
publicity, advertising, or news release without the prior written approval of
an authorized representative of the University. Authorized University representatives include
but are not limited to: [insert
titles of authorized signatories…]
University will not use the name of Sponsor, or any employee of Sponsor,
in any publicity without the prior written approval of Sponsor.
Article 6 - Publications
Sponsor
recognizes that under University policy, the results of Project must be
publishable and agrees that Researchers engaged in Project shall be permitted to
present at symposia, national or regional professional meetings, and to publish
in journals, theses, dissertations, or otherwise of their own choosing, the
methods and results of Project; provided, however, that Sponsor shall have been
furnished copies of any proposed publication or presentation at least thirty
days in advance of the submission of such proposed publication or presentation
to a journal, editor, or other third party to permit Sponsor to object to such proposed presentation or proposed
publication because there is patentable subject matter or proprietary
information which needs protection.
Sponsor shall provide the University with such objection in writing
within thirty days of receiving a proposed publication or forever waive its
rights in this regard.
In the
event that Sponsor makes objection, University shall refrain from making such
publication or presentation for a maximum of three months from date of receipt
of such objection in order for patent application(s) to be filed by the
appropriate party and/or for the proprietary information to be removed or
redacted.
Article 7 - Intellectual Property
It is understood that during
the course of the Sponsored Research valuable intellectual property may be
generated by Univesity personnel alone or jointly with Sponsor personnel. The following terms concerning intellectual
property and inventions shall apply to this Agreement:
7.1 All rights and title to inventions and
intellectual property, including but not limited to US and foreign patent
applications and patents resulting therefrom, which are invented solely by
University personnel, will belong to University. All rights and title on inventions and
intellectual property, including but not limited to US and foreign patent
applications and patents resulting therefrom, which are invented jointly by
University and Sponsor personnel shall belong jointly to Sponsor and
University.
7.2 At Sponsor’s option, University and Sponsor
agree to negotiate in good faith for the transfer of rights to inventions or
other intellectual property held by the University that may have arisen from
Project. University agrees to offer
Sponsor the grant of an exclusive or non-exclusive, worldwide or
geographically-restricted, full or field-of-use license, to any inventions or
other intellectual property in exchange for mutually agreeable compensation.
7.3 Sponsor shall have three (3) months from
disclosure of any invention or discovery to notify University that it wants to
enter into such a license agreement. The
parties shall negotiate in good faith for a period not to exceed six (6) months
from Sponsor’s notification or a longer period of time if the parties mutually
agree to extend negotiations. If Sponsor
and University fail to enter into such an agreement, the rights to such
inventions or other intellectual property shall be disposed of in accordance
with University policies, with no obligation to Sponsor. Until an invention or other intellectual
property has been presented as set forth above, University shall not offer
rights to that invention or property to any third party. In the event that Sponsor elects to obtain
said license, Sponsor shall bear the expense of the prosecution of any related
patent applications, including without limitation, patentability investigation
expenses, on behalf of University and University personnel.
7.4 In the event that University declines to
file patent applications in the US or in any foreign countries on any
patentable inventions, the rights to file will, with prior agreement of all
persons who will be engaged in the Project, be transferred by University and
those persons to Sponsor, if Sponsor so requests. Under these circumstances, patent
applications filed by Sponsor will be made with the understanding that a share
in royalties equivalent to that provided to the inventor(s) under the current
University patent policy will be provided to the inventor(s) by Sponsor.
Article 8 - Term and
Termination
8.1 This agreement shall become effective
upon the date first herein above written and shall continue in effect for the
full duration of the Contract Period unless sooner terminated in accordance
with the provisions of this Article. The
parties hereto may, however, extend the term of this Agreement for additional
periods as desired under mutually agreeable terms and conditions that the parties
reduce to writing and sign.
8.2 Either party may terminate this Agreement
for convenience upon sixty (60) days prior written notice to the other, subject
to Section 4.2 hereof.
8.3 Any provisions of this Agreement which by
their nature extend beyond termination, e.g., without limitation, Articles 4-7,
10-11, shall survive such termination.
Article 9 - Independent
Contractor
In the performance of services
hereunder:
9.1 University shall be deemed to be and
shall be an independent contractor and, as such, neither University or its
employees shall be entitled to any benefits applicable to employees of Sponsor,
nor shall Sponsor or its employees be entitled to any benefits applicable to
employees of University;
9.2 Neither party is authorized or empowered
to act as agent for the other for any purpose and shall not on behalf of the
other enter into any contract, warranty, statement, commitment or
representation as to any matter. Neither
shall be bound by the acts or conduct of the other.
Article 10 - Indemnification
Sponsor
shall indemnify and hold harmless University against any and all actions,
claims, costs, or liabilities, including attorneys’ fees and court costs at
both trial and appellate levels, for any loss, damage, injury, or loss of life
caused by (a) the actions of Sponsor, its officers, servants, agents or of any
third party acting under authorization from Sponsor, or (b) for products
developed or made by or as a result of information or materials received from
the University. Article 10 shall apply
with the proviso that (a) University promptly notifies Sponsor in writing after
University receives notice of any claim, (b) Sponsor is given the opportunity,
at its option, to participate and associate with University in control,
defense, and trial of any claim and any related settlement negotiations, and
(c) University fully cooperates with Sponsor in the defense of any such
claim. The defense and indemnity
provisions of Sponsor shall survive the termination or natural expiration of
this Agreement.
Article 11 - Insurance
Sponsor shall procure and
maintain the following insurance coverage:
11.1
Workers compensation and employers liability
insurance at statutory limits for workers compensation and no less than
$1,000,000 for employers liability.
11.2
Commercial general liability insurance, including
contractual liability coverage and products and completed operations liability
coverage, and, if necessary, commercial umbrella insurance, with a limit of not
less than $1,000,000 each occurrence. If
such insurance includes a general aggregate limit, it shall apply separately to
this Project. The University shall be
included as an additional insured under the CGL policy.
Article 12 - Governing Law
This Agreement shall be
governed by and construed in accordance with the laws of the State of
Article 13 - Assignment
This
Agreement shall not be assigned by either party without the prior written consent
of the other.
Article 14 - Agreement
Modification
Any
agreement to change the terms of this Agreement in any way shall be valid only
if the change is made in writing and executed by authorized representatives of
the parties hereto.
Article 15 - Notices
Notices, invoices,
communications, and payments hereunder shall be deemed made if given by United
States registered or certified mail, postage prepaid, and addressed to the
party to receive such notice, invoice, or communication at the address given
below, or such other address as may hereafter be designated by notice in
writing:
If to Sponsor: [
insert information ]
If to University: [
insert information ]
Article 16 - Non Discrimination
The parties agree to comply with Titles VI and VII of the Civil
Rights Act of l964, Title IX of the Education Amendments of l972, Section 504
of the Rehabilitation Act of 1973, Executive Order 11,246, the Americans with
Disabilities Act of 1990 and the related regulations to each. Each party assures that it will not
discriminate against any individual including, but not limited to, employees or
applicants for employment and/or students because of race, religion, creed,
color, sex, age, disability, veteran status or national origin.
The parties also
agree to take affirmative action to ensure that applicants are employed, and
that employees are treated during their employment, without regard to their
race, religion, creed, color, sex, disability, or national origin. Such action shall include, but not be limited
to, the following: employment,
upgrading, demotion or transfer, recruitment or recruitment advertising, layoff
or termination, rates of pay or other forms of compensation, and selection
available to employees and applicants for employment.
Article 17 – Conflict of Interest
The Sponsor warrants that no part of the total
contract amount provided herein shall be paid directly or indirectly to any
officer or employee of the State of
Article 18 – Entire Agreement
This written Agreement constitutes the entire and only
agreement between the parties relating to the Project and supersedes all prior
negotiations, representations, agreements and understandings. The parties expressly disclaim reliance on
any such prior negotiations, representations, agreements or understandings.
IN WITNESS WHEREOF, the parties have caused these
presents to be executed in duplicate as of the day and year first above
written.
AGREED TO AND ACCEPTED BY:
By: _________________________ By: ___________________________
Name: ______________________ Name: _________________________
Title: ______________________ Title: __________________________
Date: ______________________ Date: __________________________