Subject to Contract / Contract Denied
Dated _____________________________________20[●]
(1) [Full legal name of the RPO]
and
(2) [Full legal name of the Company]
MODEL NON-BINDING TERM SHEET FOR COLLABORATIVE
RESEARCH AGREEMENT
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Subject to Contract / Contract Denied
NON-BINDING TERM SHEET FOR COLLABORATIVE RESEARCH
AGREEMENT
This Non-Binding Term Sheet dated _____________________________ 20[●] is between:
(1)
[●] (the “RPO”), [an academic institution [incorporated or established] under [statute or charter in
Ireland],] whose [principal address or registered office] is at [●]; and
(2)
[●] (the “Company”), [a company incorporated in [] under registration number [],] whose
[principal place of business or registered office] is at [].
The RPO and the Company together shall be referred to as the “Parties”, and individually shall be
referred to as a “Party”.
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Purpose
The Parties intend to discuss the possibility of entering into a Collaborative Research Agreement (the
“Collaborative Research Agreement”). The purpose of this Term Sheet is to summarise the main
commercial terms that relate to intellectual property (“IP”) created in the course of programme of work
envisaged under the Collaborative Research Agreement. The Parties intend to negotiate and execute
the Collaborative Research Agreement within []days of signature of this Term Sheet (the “Period”).
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IP provisions envisaged for the Collaborative Research Agreement
The Parties intend that the Collaborative Research Agreement will contain terms based on the following
principles:
Programme
[Insert description of the programme of work to be undertaken/the
Programme].
RPO's Principal
The lead researcher of the RPO, who will lead the Programme on behalf
Investigator
of the RPO, is [●].
Company's Principal
The person within the Company, who will lead the Programme on behalf
Contact
of the Company, is [●].
Reporting
The Collaborative Research Agreement will record each Party's reporting
Obligations
obligations.
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
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Subject to Contract / Contract Denied
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).
Foreground IP
Foreground IP shall mean any IP created by a Party, alone or jointly,
whilst performing its obligations under the Collaborative Research
Agreement during the course of the Programme, excluding Background
IP and any Non-Severable Improvement to any Significant Background.
RPO's Background
The RPO's Background IP will be defined as any Intellectual Property or
IP
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
Collaborative Research Agreement; or (ii) licensed to or created by the
RPO independently of performance of the RPO’s obligations under the
Collaborative Research Agreement.
It will be acknowledged that RPO's Background IP includes [list specific
RPO Background IP] and excludes Foreground IP.
There will be a clear statement that ownership of the RPO's Background
IP remains with the RPO.
Company's
The Company's Background IP will be defined as any Intellectual
Background IP
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 Collaborative Research Agreement; or (ii) licensed to or
created by the Company independently of the performance of the
Company’s obligations under the Collaborative Research Agreement.
It will be acknowledged that it includes [list specific Company
Background IP] and excludes Foreground 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.
Non-Severable
IP will constitute a "Non-Severable Improvement" where, at a minimum,
Improvement
the IP in question: (i) was created using Significant Background used in
the Programme; and (ii) cannot be used without infringing the Significant
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Subject to Contract / Contract Denied
Background. In general, none of the following will constitute a "NonSeverable Improvement": data, know-how, research tools or other
broadly enabling technologies.
Significant
The Company's Background IP used in the Programme will constitute
Background
"Significant Background" where: (i) it is the subject of a granted patent;
and/or (ii) the Programme substantially relies on this Company's
Background IP and without it the Programme would be difficult or
impossible to carry out. For the avoidance of doubt, the following will not
constitute "Significant Background": data, know-how.
Licence to
The Collaborative Research Agreement shall contain an agreed time-
Foreground IP
limited option for the Company to negotiate a grant of a licence from the
RPO to use Foreground IP, having regard to the indicative conditions
below.
Indicative
Any licence to the Company of Foreground IP from the RPO shall be on
Conditions for
fair commercial terms, subject overall to State Aid, technology transfer and
Licence to the
other legal or government policy considerations, and shall include the
Company to use the
following key terms and conditions:
Foreground IP
Type of licence
Exclusive/Non-Exclusive/Sole
Field of Use
[●]
Exclusivity in Field of Use?
Yes/No
Territory
[●]
Exclusivity in Territory?
Yes/No
Upfront fee?
Yes/No
Milestone payment(s)?
Yes/No
Royalty payment(s)?
Yes/No
Reimbursement of IP protection
Yes/No
and
enforcement
costs
for
Foreground IP?
RPO Termination Rights (other
than
for
Company’
[●]
material
breach or insolvency)
Sub-licensing
Start date of the licence
[●]
Duration of the licence
[●]
Other Key Terms
[●]
The Company will have no right to grant sub-licences of its rights under
the IP, except with the prior written consent of the RPO.
Cross Licence of
Each Party will grant the other Party a non-exclusive, royalty free licence
Background IP for
to use the other Party's Background IP to perform its obligations in
use in Programme
connection with the Programme.
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Subject to Contract / Contract Denied
Cross Licence of
In the event that a Party’s Background IP is necessary to allow the other
Background IP to
Party to use Foreground IP independently of the Programme then a
commercialise
licence or licences to Background IP will be addressed in the Collaborative
Foreground IP
Research Agreement which will provide for the granting of any such
licences on fair, reasonable and non-discriminatory terms, taking account
of the contribution by each of the Parties to the Programme and the
Foreground IP, where the owning party is free to do so.
Reservation of RPO
The RPO shall have a perpetual royalty-free right to use the Foreground
Rights
IP for research and teaching purposes.
Publication
The RPO shall have the right to publish results from the Programme
provided the RPO complies with its confidentiality and other obligations
in the Collaborative Research Agreement. The Company shall have the
right to review RPO materials connected with the Programme prior to
publication and can reasonably object to publication, for example where
publication would disclose Confidential Information or Company
Background IP.
Commercialisation
The Company will use Diligent and Reasonable Efforts (to be defined in
the Licence Agreement) to develop and commercially exploit the IP. In
addition, the Company will submit annual statements to the RPO outlining
(amongst other things) the activities taken and planned to bring products
and/or services based on the IP to market.
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Areas still to be discussed
The Parties envisage that the Collaborative Research Agreement may also include other terms, which
may include, without limitation, [].
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Law and status of this Term Sheet
This Term Sheet is not intended to create, evidence or imply any legal relationship or contract between
the Parties. Each Party acknowledges and agrees that (a) either Party may withdraw from the
negotiation of the Collaborative Research Agreement at any time without liability, and (b) the
negotiations are being conducted on a non-exclusive basis, unless and to the extent otherwise stated
in this Term Sheet. To the extent that any legal issue arises in connection with this Term Sheet, it will
be governed and construed in accordance with the laws of the Republic of Ireland.
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Costs
Each Party shall bear its own legal and other costs in connection with the negotiation and preparation
of this Term Sheet and any subsequent agreement.
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Subject to Contract / Contract Denied
The Parties record their understanding of the above by signing below:
For and on behalf of
For and on behalf of
[Full legal name of the RPO]
[Full legal name of the Company]
________________________________
Signed
_________________________________
Signed
________________________________
Name
_________________________________
Name
________________________________
Title
_________________________________
Title
________________________________
Date
________________________________
Date
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