INNOVATION PARTNERSH IP PROGRAMME
HEADS OF AGREEMENT DATED [●] 2016 SETTING OUT THE
PRINCIPAL IP TERMS OF THE COLLABORATION AGREEMENT TO
BE PUT IN PLACE BETWEEN THE RPO AND THE COMPANY
REGARDING [NAME OF THE PROJECT]
Introduction
The Parties intend to enter into a Collaboration Agreement for the Project (defined below) upon
Enterprise Ireland awarding funding for the performance of the Collaboration Agreement pursuant to the
terms and conditions of the Enterprise Ireland Innovation Partnership Funding Programme.
This Heads of Agreement ("HOA") is not legally binding. In this HOA the Parties set out the principal
terms and conditions that relate to intellectual property created in the course of the Project.
The Company
The RPO
The Company will be defined as [name of company] a company incorporated in
[●] under registration number [●], whose [principal place of business or registered
office] is at [];
The RPO will be defined as [name of RPO] an academic institution incorporated
under [statute in Ireland]], whose [principal address or registered office whose
[principal address or registered office] is at [●];
Parties
Parties will be defined as the Company and the RPO
Party
Party will be defined as either the Company or the RPO
Project
The Project will be defined as [description of Project]
RPO's Lead
Principal
Investigator
The lead researcher of the RPO, who will lead the Project on behalf of the RPO,
is [●].
Company's
Principal
Contact
The person within the Company, who will lead the Project on behalf of the
Company, is [●].
Reporting
Obligations
The Collaboration Agreement will record each Party's reporting obligations,
including to [●] and [●].
IP
IP will be defined as all patents, trade marks, service marks, drawings, utility
models, design rights, business ideas, concepts, inventions, discoveries,
breeders' rights, copyright (including the copyright in software in any code),
database rights, computer programs, know-how, trade secrets and other
confidential information, technology, business or trade names, goodwill and all
other rights of a similar or corresponding nature in any part of the world, whether
registered or not or capable of registration or not, and including all applications
and the right to apply for any of the foregoing rights.
Materials
Materials will be defined as any and all works of authorship and materials,
including, without limitation, data, any functional, technical and/or performance
specification, devices, machinery, samples, products, sensors and data derived
therefrom, biological materials, software programmes, any other inanimate or
animate matter, any and all reports, studies, data, diagrams, drawings, charts,
specifications, and such other materials in whatever medium (including without
limitation, written or printed, electronic or otherwise, computer discs, floppy discs,
CDs, diskettes, tapes or other formats).
RPO's
Background IP
The RPO's Background IP will be defined as any Intellectual Property or Materials
(regardless of the form or medium in which they are disclosed or stored): (i)
licensed to or owned by the RPO prior to the date of the Collaboration Agreement;
or (ii) licensed to or created by the RPO independently of performance of the
RPO’s obligations under the Collaboration Agreement.
It will be acknowledged that RPO's Background IP includes [list specific RPO
Background IP] and excludes Project IP.
There will be a clear statement that ownership of the RPO's Background IP
remains with the RPO.
Company's
Background IP
The Company's Background IP will be defined as any Intellectual Property or
Material (regardless of the form or medium in which they are disclosed or stored):
(i) licensed to or owned by the Company prior to the date of the Collaboration
Agreement; or (ii) licensed to or created by the Company independently of the
performance of the Company’s obligations under the Collaboration Agreement.
It will be acknowledged that it includes [list specific Company Background IP] and
excludes Project IP.
There will be a clear statement that ownership of the Company's Background IP
remains with the Company.
Background IP
Background IP will mean the Company's Background IP and/or the RPO's
Background IP.
Cross Licence
of Background
IP for use in
Project
Each Party will grant the other Party a non-exclusive, royalty free licence to use
the other Party's Background IP to perform its obligations in connection with the
Project.
Cross Licence
of Background
IP to
commercialise
Project IP
In the event that a Party’s Background IP is necessary to allow the other Party to
use Project IP independently of the Project then a licence or licences to
Background IP will be addressed in the Collaboration Agreement which will
provide for the granting of any such licences on fair, reasonable and nondiscriminatory terms, taking account of the contribution by each of the Parties to
the Project and the Project IP.
Project IP
Project IP shall mean any IP created by a Party, alone or jointly, whilst performing
its obligations under the Collaboration Agreement during the course of the Project,
excluding Background IP and any Non-Severable Improvement to any Significant
Background.
Non-Severable
Improvement
IP will constitute a "Non-Severable Improvement" where, at a minimum, the IP in
question: (i) was created using Significant Background used in the Project; and
(ii) cannot be used without infringing the Significant Background. In general, none
of the following will constitute a "Non-Severable Improvement": data, know-how,
research tools or other broadly enabling technologies.
Significant
Background
The Company's Background IP used in the Project will constitute "Significant
Background" where: (i) it is the subject of a granted patent; and/or (ii) the Project
substantially relies on this Company's Background IP and without it the Project
would be difficult or impossible to carry out. For the avoidance of doubt, the
following will not constitute "Significant Background": data, know-how.
Ownership of
Project IP
The RPO shall own all Project IP, except to the extent that it is a Non-Severable
Improvement to the Company's Background IP, in which case the Company may
request ownership of that Non-Severable Improvement on fair value terms to be
agreed with the RPO, subject overall to State Aid, technology transfer and other
legal or government policy considerations.
Licence to
Project IP
The Collaboration Agreement shall contain an agreed time-limited option for the
Company to negotiate a grant of a licence from the RPO to use Project IP, having
regard to the indicative conditions below.
Indicative
Conditions for
Licence to the
Company to use
the Project IP
Any licence to the Company of Project IP from the RPO shall be on fair
commercial terms, subject overall to State Aid, technology transfer and other legal
or government policy considerations, and shall include the following key terms
and conditions:
Type of licence
Field of Use
Exclusivity in Field of Use?
Territory
Exclusivity in Territory?
Upfront fee?
Milestone payment(s)?
Royalty payment(s)?
Reimbursement of IP
protection
and
enforcement costs for
Project IP?
RPO Termination Rights
(other than for Company’
material
breach
or
insolvency)
Start date of the licence
Duration of the licence
Other Key Terms
Exclusive/Non-Exclusive/Sole
Yes/No
Yes/No
Yes/No
Yes/No
Yes/No
Yes/No
Reservation of
RPO Rights
The RPO shall have a perpetual royalty-free right to use the Project IP research
and teaching purposes.
Publication
The RPO shall have the right to publish results from the Project provided the RPO
complies with its confidentiality and other obligations in the Collaboration
Agreement. The Company shall have the right to review RPO materials
connected with the Project prior to publication and can reasonably object to
publication, for example where publication would disclose Confidential
Information or Company Background IP.
Warranties
Each Party shall warrant that: (i) it has full capacity and authority to enter into the
Collaboration Agreement; and (ii) no proceedings, claim or complaint has been
received by that Party from any third party or competent authority in relation to its
Background IP on the date the Collaboration Agreement is entered into.
Disclaimers
Except as expressly stated in the Collaboration Agreement, any work, material,
results, data, RPO Background IP and/or Project IP provided by the RPO to the
Company under the Collaboration Agreement will be provided on an "as is" basis,
with no guarantee, representation or warranty, express or implied including (but
not limited to) any assurance of accuracy, completeness, performance,
merchantability, fitness for a particular purpose, commercial utility or noninfringement of any third party right (including (but not limited to) any IP). The RPO
shall not be liable to the Company for any loss or liability arising in connection with
any modification or development of the Project IP and/or the Background IP by
the Company or any of its licensees.
Counterparts
This HOA may be executed in any number of counterparts (whether original or
facsimile) and upon execution and exchange of all such counterparts by the
Parties each counterpart shall be deemed to be an original of this HOA.
Variation
No variation of this HOA shall be effective unless it is in writing and signed by an
authorised representative of each of the Parties.
Governing Law
and Jurisdiction
This HOA, the negotiations between the parties in connection with the
Collaboration Agreement and all disputes and claims arising out of or in
connection with either of these agreements shall be governed by and construed
in accordance with the laws of Ireland. The parties agree that the courts of Ireland
shall have exclusive jurisdiction to settle any disputes which may arise out of or
in connection with this HOA and the Collaboration Agreement.
This HOA has been executed on the dates set out below:
Signature……………………………
[Insert name of Signatory]
Signature……………………………
[Insert name of Signatory]
an authorised signatory for
[Insert full name of the RPO]
an authorised signatory for
[Insert full name of the Company]
Date of signing:
Date of signing: