Confidential Information and Intellectual Property Agreement
Between
______________________ Ltd., a limited liability company duly constituted, formed and registered under the Laws
of Malta with Company Registration Number _________, and having its registered address at
____________________, Malta, represented herein by ______________, duly authorised for this purpose.
______________________ Ltd., a limited liability company duly constituted, formed and registered under the Laws
of Malta with Company Registration Number ________, and having its registered address at
___________________, Malta, represented herein by _____________, duly authorised for this purpose.
And
UNIVERSITY OF MALTA (UOM) of Msida, MSD 2080, Malta, represented herein by the Rector, Professor Juanito
Camilleri and _______________ from the Faculty of ______________, duly authorised for this purpose.
Hereinafter and for the purposes of this Agreement the organisations will be individually referred to as a ‘Party’
and all of them together and jointly, as ‘Parties’.
WHEREAS the Parties have jointly undertaken to carry out the Project financed by a Grant awarded by the Malta
Council for Science & Technology, and in terms of the Original Agreement
WHEREAS the Parties are aware and acknowledge that during the course of the Project and thereafter they will be
exposed to each other’s know-how, trade names, trademarks, trade secrets, trade technology and other
proprietary information
WHEREAS as a result of the above the Parties desire to enter into this Agreement as a document labelled
“Appendix _” to the Original Agreement, with respect to the protection of intellectual property rights and
disclosure of certain proprietary, secret or confidential information to regulate the rights of the Parties in this
respect and to prevent the unauthorized disclosure of secret or confidential information and wish to define their
rights and obligations with respect to such intellectual property and secret or confidential information
Now therefore the Parties agree to be bound by the following terms and conditions:
1.
The following expressions shall have the following meanings:
1.1
Background Intellectual Property shall mean Intellectual Property that either was in existence before the
commencement of this Agreement or is created outside the scope of this Agreement.
1.2
Confidential Information shall mean all information of a confidential nature, recorded, preserved or
disclosed in whatever manner, by a party or its employees, officers, representatives or advisers to the
other party and that party's employees, officers, representatives or advisers after the date of this
agreement, including but not limited to:
(a) the terms of this agreement;
(b) any information that would be regarded as confidential by a reasonable business person
relating to:

the business, affairs, customers, clients, suppliers, plans, intentions, or market
opportunities of the disclosing party; and
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
the operations, processes, product or service information, know-how, designs, trade
secrets or software of the disclosing party;
(c) any information or analysis derived from Confidential Information.
1.3
Intellectual Property shall mean all forms of legally recognized intellectual property (of any form,
including but not limited to written, oral, electric, digital or otherwise) that shall include but shall not be
limited to the following:
(a) Trade secrets, industrial or commercial process, know-how, knowledge, inventions,
discoveries, techniques, processes, methods, formulae, ideas, technical data and
specifications, testing methods, research and development activities future products;
contracts, product plans, sales and marketing plans, business plans;
(b) All information not generally known to the public, regarding the Parties, and their
businesses, regardless of whether such information is in written, oral, electronic, digital or
other form and regardless of whether such information originates from the Parties or any of
their agents, if any
(c) All Patents and Designs registered or registrable under the Patents and Designs Act 2000
(Chapter 417 of the Laws of Malta);
(d) All copyright, neighbouring rights, and sui generis rights conceived or developed and
protected under the Copyright Act 2000 (Chapter 415 of the Laws of Malta);
(e) All Intellectual Property Rights registered or registrable under the Intellectual Property
Rights (Cross-Border Measures) Act (Chapter 414 of the Laws of Malta);
(f) Trademarks registered or registrable under the Trademarks Act 2000 (Chapter 416 of the
Laws of Malta);
(g) And means and includes any new forms of intellectual property that may be added to the
above categories during the time this Agreement is in effect; but does not include any moral
right.
1.4
1.5
Intellectual Property Dispute shall mean any and all controversies, disputes or claims arising out of, in
connection with, or in relation to the interpretation, performance, non-performance, validity or breach of
this Agreement or otherwise arising out of, or in any way related to this Agreement or the Intellectual
Property, including, without limitation, any and all claims whether arising in contract or otherwise.
Joint Intellectual Property shall mean any intellectual property discovered, generated or developed
during the course of the Project.
1.6
Moral Right has the meaning ascribed to it in the Copyright Act 2000 (Chapter 415 of the Laws of Malta).
1.7
Original Agreement means the agreement entered into on __________________ and numbered Contract
Number: R&I-2012____________, whereby the Malta Council for Science & Technology and the Parties
carrying out the Project laid out their respective rights and obligations in connection with the Grant and
the Project, and in relation to such Original Agreement, this Agreement forms an integral part.
1.8
Third Party means any natural or legal person other than the Parties and any persons who are not
deemed to be employees and directors of either of the Parties.
All capitalized terms not otherwise defined in this Agreement shall have the meaning attributed to them
in the Original Agreement.
The headings contained in this Agreement are for reference purposes only and shall not affect the
meaning or interpretation of this Agreement.
1.9
1.10
2.
2.1.
Access Rights and Confidentiality
Each Party hereby grants to each of the other Parties a non-exclusive, royalty-free licence to the relevant
part or parts of its Background Intellectual Property, and to its Confidential Information, for the sole
purpose of carrying out their duties for the successful completion of the Project in terms of the Original
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2.2.
2.3.
2.4.
3.
3.1.
3.2.
3.3.
3.4.
Agreement. A list of Background Intellectual Property claimed by the Company/University/Parties1 is
being attached to this agreement in Annex xxx.
It is hereby agreed that, in the eventuality that a Party either withdraws from the Original Agreement
before the conclusion of the Project or for any other reason is no longer a party to the Original
Agreement, such Party shall continue to grant access rights in terms of Clause 2.1 above.
No Party can disclose, divulge or make known to any Third Party Confidential Information, except as may
be required by law or by a court of law or any other adjudicating authority, or by prior written consent of
all the other Parties.
The Parties acknowledge and agree that without prejudice to Clause 3 below, the obligations arising from
Clause 2.3 of this Agreement shall subsist and survive the termination of this Agreement and the
termination of the Original Agreement, regardless of the reasons or methods of termination.
Ownership
The Parties hereby acknowledge that any Background Intellectual Property of a Party shall remain the
exclusive property of that Party.
The Parties hereby agree that where during the course of carrying out the Project, Intellectual Property is
discovered, generated or developed, the Parties shall jointly and equally own such Intellectual Property 2
which may include but is not limited to all rights, title and interest in and to any and all such Intellectual
Property.
Should a Party wish to acquire from the relevant owner/s rights relative to such Joint Intellectual
Property, such Party shall have a right of first option to acquire such Intellectual Property before any Third
Party. Should such Party express in writing its intention of exercising such option, the consideration for
acquiring such Joint Intellectual Property shall first be established by agreement in writing between the
relevant Parties, and if no such agreement is reached by an independent expert appointed and approved
by the relevant Parties.
It is hereby agreed that, in the case of Joint Intellectual Property:
3.4.1.
A Party may not exploit such Joint Intellectual Property without first notifying all the other
Parties, and acquiring the written consent of the Party or Parties who jointly own such Joint
Intellectual Property.
3.4.2.
One of the Parties who jointly own such Intellectual Property shall be appointed and entrusted
with the filing, protection and maintenance of the Joint Intellectual Property, in the names of
the Parties who contributed and generated the creation of such Joint Intellectual Property.
Provided that each Party hereto shall reasonably cooperate with respect to any filings
governmental or otherwise or other actions reasonably necessary to maintain, enforce and/or
record the rights to the Joint Intellectual Property in question covered by this Agreement.
3.4.3.
3.5.
4.
The cost of protecting such Joint Intellectual Property shall, unless agreed otherwise in writing,
be borne equally2 between the Parties who own such Joint Intellectual Property, provided that
the contribution for the protection of Intellectual Property, referred to in Section 4.2 of
Appendix 2 of the Original Agreement, is deducted from the total shared cost.
Should one of the Parties who own Joint Intellectual Property not wish to pursue protection of such Joint
Intellectual Property, notification in writing to that effect is to be given by such Party to the remaining said
Parties, in which case the remaining said Parties shall be free to pursue protection of such Intellectual
Property at their own expense; provided that the benefits of such protection shall be agreed to as
between all the Parties who own such Joint Intellectual Property.
Publication of Research
1
Delete as necessary if Company, University or both will list Background IP. If none will list Background IP delete whole
sentence.
2 Note to Parties: this phrase may be changed depending on the nature of the agreement and the contribution of the Parties.
We recommend that you discuss it with the Knowledge Transfer Office before deciding on the exact terms.
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4.1.
4.2.
4.3.
5.
5.1.
6.
6.1.
7.
7.1.
7.2.
8.
8.1.
8.2.
8.3.
8.4.
The Parties shall maintain a running awareness of the state of the knowledge that is being generated and
at any time when it appears to either party that knowledge conducive to a publication has been
generated; such Party shall notify the other Party of its intention to publish such knowledge.
Furthermore, either Party shall notify the other Party of its intention to publish by means of a formal
notice in writing.
Any publication of the results achieved under this Project, included but not limited to publication by
academic dissertation in full or by abstract or by publication in learned journals, shall be made on the
agreement of the Parties. In particular, all Parties should agree on the list and order of the authors before
the submission of the publication.
Each of the other Parties shall review the notification made and within twenty (20) working days from
date of receipt shall communicate to the other Party its acceptance for the material to be published; if no
communication is received at expiration of such period the Party shall assume that there are no
objections to the publication.
Termination or Successful Completion of the Project
Clauses 3 to 4 above shall survive and continue to bind the Parties in the following circumstances:
5.1.1.
The withdrawal of a Party or Parties from the Original Agreement;
5.1.2.
An Event of Default as stipulated in the Original Agreement;
5.1.3.
Termination of the Original Agreement; or
5.1.4.
A situation where for any other reason a Party or Parties is/are no longer a Party/Parties to the
Original Agreement.
Representations and Warranties
All Parties warrant that their obligations under this Agreement shall be legal and binding and that the
performance of their obligations hereunder shall neither conflict with any of their obligations under any
other agreement nor contravene any applicable laws or regulations.
Relationship between the Parties and Breach of Contract
Nothing contained herein shall be deemed to constitute a partnership, or employer/employee
relationship.
In the event of a breach or threatened breach or intended breach of this Agreement by either Party, any
and all of the remaining Parties, in addition to any other rights and remedies available to it/them at law,
shall be entitled to file precautionary warrants or applications, enjoining and restraining such breach or
threatened breach or intended breach.
General
All notices required to be sent under this Agreement shall be in writing and shall be sent facsimile or first
class registered or recorded delivery post to the Party being served. The date of service shall be deemed
to be the day following the day on which the notice was transmitted.
This Agreement is personal to the Parties and shall not be assigned or otherwise transferred in whole or in
part by either Party without the prior written consent of the other Party/Parties.
This Agreement, the Original Agreement and its Appendixes shall constitute the entire Agreement and
understanding between the Parties with respect to the subject matter hereof and supersedes all previous
agreements, understandings and undertakings in such respect. This Agreement cannot be changed except
by written agreement between the Parties.
In the event that any of the terms, conditions or provisions hereunder shall be determined by any
competent authority to be invalid, unlawful or unenforceable to any extent, such term, condition or
provision shall to that extent be severed from the remaining terms, conditions and provisions which shall
continue to be valid to the fullest extent permitted by law. The Parties bind themselves to substitute any
terms, conditions or provisions, which may be deemed to be invalid, unlawful or unenforceable.
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8.5.
9.
9.1.
9.2.
9.3.
Failure to exercise any right contained in this Agreement shall not be a waiver of any prior or subsequent
right.
Governing Law and Jurisdiction
This Agreement shall be read and construed in terms of the law applicable in Malta.
Subject to agreement between the Parties, any dispute, including an Intellectual Property Dispute,
controversy or claim arising out of or relating to this Agreement, or the breach, termination or invalidity
thereof shall be settled by arbitration in accordance with the applicable rules in force at the date on which
such dispute, controversy or claim arises.
The number of arbitrators shall be one and shall be appointed by agreement between the Parties. Should
no agreement be reached on who shall be appointed arbitrator within a period of fifteen (15) days from
the date on which the dispute, controversy or claim arises, the arbitrator shall be appointed by the Malta
Arbitration Centre.
_________________________
_________________________
for and on behalf of
_________________________
Date: ____________________
_________________________
_________________________
Prof. Juanito Camilleri
_________________________
for and on behalf of
_________________________
University of Malta
University of Malta
Date: _____________________
Date: _____________________
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