MANAGEMENT OF INTELLECTUAL PROPERTY IN INDOUK R&D COLLABORATIONS
TOOLKIT TO SUPPORT EFFECTIVE MANAGEMENT OF IP
CREATED UNDER PROJECT IMPLEMENTED BY THE UK INTELLECTUAL
PROPERTY OFFICE, SUPPORTED BY THE FOREIGN COMMONWEALTH
OFFICE’S PROSPERITY FUND
Intellectual Property Office is an operating name of the Patent Office
INDEX
1. Introduction and checklist
2. Model Agreement 1A- situation where Indian academic institute retains IP and
grants a licence to a British business
3. Model Agreement 1B- situation where a British academic institute retains IP and
grants a licence to an Indian business
4. Model Agreement 2A- situation where British sponsor owns IP
5. Model Agreement 2B- situation where Indian sponsor owns IP
6. Guidance notes for Model Agreement 1A
7. Guidance notes for Model Agreement 1B
8. Guidance notes for Model Agreement 2A
9. Guidance notes for Model Agreement 2B
INDO-UK RESEARCH COLLABORATION TOOLKIT
INTRODUCTION AND CHECKLIST
BRIEF BACKGROUND
As part of developing UK India collaboration on intellectual property, the UK Intellectual
Property Office, working with Indian partners, has developed an optional “Toolkit” which
we hope IP practitioners in the UK and India may find useful as part of a practical
framework to support the management of intellectual property in academic and industry
cross-border research and development, hence facilitating increased levels of productive
research collaborations between the two countries.
The Toolkit provides basic guidance and model agreements to help organisations in the
UK and India understand how they can effectively and quickly answer IP management
questions like: who owns the IP resulting from the research? Is it being licensed or
assigned? If licensed, is it an exclusive licence? How will disputes be resolved? etc.
The Toolkit is presented here as a practical tool which practitioners may wish to use. Its
development draws on lessons from model agreements in the UK and advice from Indian
experts.
The toolkit is not intended to replace existing models which may be working
well among institutions in the two countries, nor is it presented as a definitive statement
of views by all those of who have contributed views during its development. We
nevertheless hope it will act as a signpost and support for people operating in this area.
We also hope that particularly with the increasing levels of industry-academia
collaboration within and between the UK and India, that an effective mechanism for
managing innovations will also make more likely that the full impacts of innovations,
commercial and otherwise, are realised.
INTRODUCTION
This Toolkit is intended to help research institutes/universities and businesses which
wish to undertake collaborative research projects with each other, especially
institutes/universities and small and medium sized enterprises (SMEs) which are
inexperienced in technology transfer and knowledge sharing and which do not have the
resources to buy-in expensive expertise.
The objectives of the Toolkit are to:

facilitate negotiations between potential collaborators;

reduce the time and effort required to secure agreement;

provide examples of good practice; and

provide a useful starting point which can be adapted where necessary – the
Toolkit cannot hope to cover every issue which will arise in every research
collaboration in a way which meets the needs and expectations of all parties.
The Toolkit consists of:
•
a checklist of the issues which need to be addressed when negotiating a research
collaboration agreement;
•
a Model Research Collaboration Agreement (Agreement 1A) under under which an
Indian Institute owns the Intellectual Property Rights in the Results of the
collaboration and grants either a non-exclusive licence or an exclusive licence to a
company (Sponsor) in the UK;
•
a Model Research Collaboration Agreement (Agreement 1B) under under which a
UK University owns the Intellectual Property Rights in the Results of the
collaboration and grants either a non-exclusive licence or an exclusive licence to a
company (Sponsor) in India;
•
a Model Research Collaboration Agreement (Agreement 2A) under under which a
UK company (Sponsor) owns the Intellectual Property Rights in the Results of the
collaboration and grants an Indian Institute a right to use those results for
academic purposes;
•
a Model Research Collaboration Agreement (Agreement 2B) under under which an
Indian company (Sponsor) owns the Intellectual Property Rights in the Results of
the collaboration and grants a University in the UK a right to use those results for
academic purposes;
•
extensive notes to each of the Model Agreements explaining the issues; and
•
a list of factors you might take into consideration when trying to decide whether
the Institute/University or the company (Sponsor) should own the Intellectual
Property Rights (IPRs) in the results of the research project. You may find it
helpful to consult this before using any of the Model Agreements.
Institutes/Universities and businesses need flexibility so that they can enter into
agreements which reflect the deal they have struck between them. Because of the need
for flexibility the Toolkit cannot, and does not want to, oblige anyone to use any model
agreement or to follow any particular guidance. If collaborators choose to use a Model
Agreement because it helps speed the process, or they find the guidance useful, the
Toolkit will have done as much as it can hope to achieve.
The wording of each of the Model Agreements is intended to be customised to meet the
actual circumstances of the project and to reflect the deal which has been negotiated.
For this reason, the Model Agreements are available as Word documents at the
“Completed Projects” weblink at
https://www.gov.uk/government/publications/intellectual-property-toolkit.
Model Agreements 1A and 2A are drafted as though they are between a research
Institute in India and a company in the UK. They have, with a few changes, been
adapted for use between a UK University and a company in India. But a UK University
may be more inclined to use the Lambert Toolkit model agreements
(http://www.ipo.gov.uk/lambert) which have been in use in the UK for several years, or
its internal precedents which incorporate similar principles, and amend those
models/agreements in order to internationalise them. The Lambert Toolkit provides 9
model agreements, intended for use between UK Universities and UK businesses.
This Indo-UK Research Collaboration Toolkit is the result of two workshops held in New
Delhi in 2012 and 2013. The participants in those workshops were:
Participants of January 2012 workshop:
1. Nancy Pignataro
UK Intellectual Property Office
2. Christine Reid
Northwood Reid
3. Catherine Brain
UK Science and Innovation Network
4. Dr A.S. Rao
IIM Ahmedabad
5. Paul Riley
Nottingham University
6. Sunita K. Sreedharan
SKS Law Associates
7. Kalpana Regulagedda
Management
National
8. Mark Runacres
Confederation of British Industries
9. Shashank Vira
British Business Group
10. Deepam Mishra
i2India
11. Sudhir K Jain
IIT Delhi
12. RK Gupta
Council for Scientific and Industrial Research
13. Padma Satish
IIT Bombay
14. Sunil Tuli
IIT Delhi
15. Jailendra Kumar
BAE Systems
16. Gajinder Pal Singh Dua
BAE Systems
17. Neeraj Gupta
FormulateIP
18. Sudhir Kochhar
Indian Council of Agricultural Research
19. Sheetal Chopra
Industry
Federation of Indian Chambers of Commerce and
20. Aravind Chinchure
Ministry of Trade and Commerce
21. Suruchi Pareek
UKIERI, British Council
22. Sachin Mhatre
Chamber of Small Industry Association
23. Dharmu Vanjani
Thane Small Scale Industry Association
24. SK Lal
DIPP, Ministry of Commerce and Industry
25. P Bhardwaj
DIPP, Ministry of Commerce and Industry
26. Ishita Agrawal
Indian Angel Network
27. Gagan Agrawal
Indian Angel Network
28. Akash Bhavsar
Skyquest Technical Group
Academy
of
Participants of February 2013 Roundtable (core group):
Project Team:
Agricultural
Research
1. Christine Reid
Northwood Reid
2. Sunita Sreedharan
SKS Law Associates
3. Anshika Jha
UK Intellectual Property Office
Indian R&D Academics:
4. Prof. Narendra Chaudhari
IIT Indore
5. Prof. A.S.Khanna
Former Deputy Director, IIT Indore
6. Prof. Mary Mathew
IISc Bangalore
7. Dr. AS Rao
Centre for Innovation and Entrepreneurship at IIT
Hyderabad (former Adviser, Department of Scientific and Industrial Research,
Govt of India)
8. Mohit Mahajan
IIT Delhi
Foundation for Innovation and Technology Transfer,
9. Prof. Sudhir K. Jain
Department of Management Studies, IIIT Delhi
10. Prof Suneet Tuli
Research and Development, IIT Delhi
11. RK Gupta
Advisor,
Scientific & Industrial Research
Innovation
Protection
Unit,
Council
of
Business reps:
12.
Gajinder Dua
BAe Systems
14.
Deepam Mishra
I2India
15.
Gagan Agrawal
Indian Angel Network
16.
Akash Bhavsar
Skyquest Tech Group
Indian government officials:
17.
Sanjeev K Varshney
Director, Department of Science & Technology
18.
T. Chandrasekhar
Director, Technology Information, Forecasting and
Assessment Council (IP & Patent maters)
UK R&D Academic:
20.
Ewan Chirnside
Andrews, Scotland
Knowledge Transfer Centre, The University of St
UK Government representatives
21. Mark Sinclair
Head, Science and Innovation Network India
22. Nafees Meah
Director, Research Councils UK India
23. Aarti Kapoor
Prosperity Fund, Foreign Commonwealth Office
24. Catherine Brain
Science & Innovation Network
25. Leena Arora
Science & Innovation Network
Before looking at whether any of the Model Agreements forms a good basis for recording
the agreement between the two collaborators, it is important that the parties have
agreed the basic terms on which they will work together. That is the purpose of the
Checklist. Using that will help both parties to focus on what they want out of the
collaboration and to identify any major issues early in your negotiations so that you can
discuss them internally and with your collaborators before drafting an agreement, to
ensure that you have similar expectations for the proposed project.
Each of the parties might try answering the questions in the checklist as a preliminary
internal exercise, and then compare their answers with the other party. In that way they
should be able to identify what the issues which need to be negotiated and resolved.
Always consider asking the other party to enter into a non-disclosure agreement (NDA)
before disclosing information. This is especially important where a patentable invention
is to be discussed. Premature disclosure may prevent the invention being patented. A
non-disclosure agreement will be crucial where the only means of protecting the
intellectual property is by keeping it confidential (as with unpatentable know-how and
trade secrets).
You can find some guidance on NDAs at: http://www.ipo.gov.uk/nda.pdf.
DISCLAIMER
The contents of this Toolkit are not intended to be, and should not be taken as being,
legal advice. The law often changes and it varies from jurisdiction to jurisdiction; the
information in this Toolkit is generic in nature and specific legal advice should be taken
before acting on any of it.
COPYRIGHT
Anyone may copy, adapt and re-use the Model Agreements and the Checklist in this
Toolkit free of charge.
THE CHECKLIST
This checklist contains the most common issues which you will need to address when
preparing to negotiate a Research Collaboration Agreement.
N.B. This document is not binding on either party.
SUBJECT
INFORMATION NEEDED/ISSUES (for discussion
internally and with the other party)
The Parties
Name and address of the Institute/University:
Contact details for the Institute/University
Name:
Address:
Fax Number:
Name, company number and registered office of the
Sponsor:
Contact details for the Sponsor
Name:
Address:
Fax Number:
The Project
Name of the Project:
Scope and aims of the Project:
What is the start date (Commencement Date) of the
Project?
What is the end date of the Project?
If work on the project starts before the Research
Collaboration Agreement is signed, is the Agreement
to have retrospective effect?
What human resources will the Institute/University
provide?
Who are the people who are key to the Project (from
the Institute/University)?
Name of the Principal Investigator:
ANSWERS/NOTES/COMMENTS
What
other
resources
(equipment,
facilities,
premises) will the Institute/University provide?
Is the Institute’s/University’s contribution to be
limited to what the funding provided by the Sponsor
and any public funding covers?
What human resources will the Sponsor provide?
Who are the people who are key to the Project (from
the Sponsor)?
Will there be a Sponsor’s Supervisor? If yes, name of
the Sponsor’s Supervisor:
What
other
resources
(equipment,
premises) will the Sponsor provide?
facilities,
If any equipment is provided on loan, which party is
responsible for keeping it in good condition,
maintaining and insuring it?
Who will direct and supervise the Project?
Who will be responsible
management including:
for
overall
project
a) the provision of information and reports to any
External Funder; and
b) claiming any External Funding?
How often will project meetings be held?
Where will project meetings be held?
Who will attend project meetings?
Is there is a complete description of each party’s
tasks and a timetable for the Project?
Has this been checked with the researchers and
agreed with the other party?
Where will the Project be carried out (the Location)?
What regulatory and ethical licences, consents
and approvals are necessary for the Project?
Which party will be responsible for obtaining
each of those licences, consents and approvals?
How often will reports be provided
Institute/University to the Sponsor?
by
the
The Financial
Contribution
What level of financial contribution is payable by the
Sponsor?
In what currency is the financial contribution to be
paid?
Is the financial contribution a fixed amount or does it
depend on amount spent by the Institute/University,
staff costs etc.?
What external expenditure will the Sponsor reimburse
to the Institute/University?
Is the Sponsor covering only the costs of the project
or is a profit element also payable?
What is to happen if there are cost overruns or
timetable overruns?
Will the Sponsor cover increases in salaries and other
costs?
Will there be one or more lump sum payments?
If yes, how much will be paid and when?
Will there be on-going payments or royalties?
If yes, how are they to be calculated, e.g.:
a)
by reference to use of or the number of items
manufactured or sold?
b)
at a percentage of monies received?
c)
a pre-determined periodic payment?
Under what circumstances (if any) and by how much
may these on-going payments or royalties be
increased? For instance, will they be indexed-linked?
When will these on-going payments and royalties
start?
How frequently will they be calculated and paid?
Are there any minimum payments? If yes, what are
they?
Will the Sponsor have to meet any sales or other
targets?
How will any targets be reviewed, and how often?
Will the Institute/University have the right to audit
the Sponsor’s books and records?
When
will
invoices
Institute/University?
be
rendered
by
the
How much time after receipt of an invoice is allowed
for payment?
At what rate will interest be paid on late payments?
Is the Institute/University to own all equipment
purchased or constructed by it, or for it, using the
Financial Contribution or any External Funding?
External
Funding
Is the Project supported by any external funding (i.e.
not provided by the Sponsor)?
Does any Government or any other funder have any
rights in the Results?
Are there any conditions attaching to any external
funding which need to be taken into account when
negotiating
the
terms
of
the
Collaboration
Agreement?
Does the Institute/University need to impose any
external funder’s conditions on the Sponsor?
Background
What Background will the Sponsor provide?
Is that Background owned by the Sponsor absolutely?
If the IPRs in the Sponsor’s Background are jointly
owned by the Sponsor and another person, does the
Sponsor have the right to license those IPRs to the
Institute?
Is all of the Sponsor's Background confidential?
Is some of the Sponsor's Background confidential?
If yes, what is confidential?
May the Institute’s/University’s staff and students
publish any of the Sponsor's Background? (See
Academic Publication below.)
What Background
provide?
will
the
Institute/University
Is that Background owned by the Institute/University
absolutely?
If the IPRs in the Sponsor’s Background are jointly
owned by the Sponsor and another person, does the
Sponsor have the right to license those IPRs to the
Institute/University?
Will the Project need to use any Background which is
owned be neither the Institute/University nor the
Sponsor, i.e. by a third party?
If yes:
a) who is responsible for acquiring the right to use
that Background for the purposes of the Project?
b) who will pay any third party licence or other fees?
Will it be necessary to acquire the right to use any
Background owned by a third party for the purposes
of exploiting the Results?
If yes:
a) who is responsible for acquiring the right to use
that Background?
b) who will pay any third party licence or other fees?
Are there any conditions which apply to the use of
any of the Background and which must be observed:
The Results
a)
when carrying out the Project; or
b)
when using the Results?
What sort of Result is it anticipated will come out of
the Project?
Which party will initially own the IPRs in the Results?
(In deciding this, you may find it useful to consider
the factors listed at the end of this Checklist.)
Is joint ownership an acceptable solution for both the
Institute/University and the Sponsor and will each
party have all the rights which it needs as a joint
owner to further its objectives? (You may find it
useful to read the notes on clause 4 of the Model
Agreements.)
If the Institute/University owns the IPRs in the
Results, will it grant the Sponsor:
a) a non-exclusive licence (the Institute/University
may use those IPRs and grant other licences);
b) an exclusive licence (the Institute/University may
not commercialise those IPRs); or
c) a sole licence (the Institute/University may
commercialise those IPRs but will not grant any
licence to anyone else to do so)?
Will that licence be restricted to:
a) a specific field?
b) a specific territory?
Will that licence be:
a) perpetual (for the life of the IPRs)?
b) for a fixed period (and if yes, for what period)?
c) terminable for breach of contract or on the
insolvency of the Sponsor?
d) terminable by
circumstances?
either
party
in
any
other
What is to happen on the termination/expiry of the
licence?
May the Sponsor grant sub-licences to others?
May the Sponsor transfer (assign) the licence freely
or is it personal to the Sponsor and not assignable
except with the Institute’s/University’s permission?
Which party will be responsible for registering any
IPRs in the Results, or renewing any existing
registration?
Which party will bear the costs of registering any
IPRs in the Results, or renewing any existing
registration?
Which party is to be responsible for pursuing any
infringers of the IPRs in the Results?
Which party will bear the costs of pursuing any
infringers of the IPRs in the Results?
How will any damages or licence fees received in
respect of any infringement of the IPRs in the Results
be split between the parties?
Have the parties agreed a patenting strategy? If yes,
where is this documented?
Will the Sponsor contribute to costs incurred by the
Institute/University in patenting at the Sponsor's
request?
If the Sponsor owns any IPRs in the Results or has
exclusive rights to those IPRs, what rights will the
Institute/University have to use those IPRs for:
a) carrying out the Project?
b) academic research/teaching; or
c) other purposes?
If the Institute/University may use the Results for
research does that include including research projects
which are sponsored by a third party?
Confidential
Information
Is confidential information to be kept confidential
indefinitely or for a finite period after the end of the
Project?
If for a finite period, what is that period?
Is the Institute subject to the Indian Right to
Information Act/Is the University subject to the UK
Freedom of Information Act (or its equivalent in
Scotland)?
If yes, what information does the Sponsor want to
prevent being disclosed under that Act?
What steps are to be taken to that end?
Is the Sponsor subject to the Indian Right to
Information Act or the UK Freedom of Information
Act (or its equivalent in Scotland)?
If yes, what information does the Institute/University
want to prevent being disclosed under that Act?
What steps are to be taken to that end?
Academic
Publication
Is academic use/publication of:
a)
the Results
b)
the Sponsor's Background
permitted in principle, subject to safeguards? (See,
for example, clause 5 of the Model Agreements.)
Liability
Will either party give any warranty to the effect that
any IPRs which it contributes or creates will not
infringe third party rights?
Are there any laws, regulations or other controls
which restrict or prohibit the export of the Results?
Is the Institute/University
warranty to that effect?
prepared
to
give
a
Will either party give the other any indemnity against
the infringement of third party IPRs?
Will the Sponsor indemnify the Institute/University
against any third party claims arising from use of the
Results/the Institute’s/University’s Background?
Is there any financial cap on liability?
If yes, what is that cap?
Is that cap to apply to liability under an indemnity?
Is liability for the following to be excluded:
a) indirect damages or losses?
b) loss of profits, loss of revenue, loss of data, loss of
contracts or opportunity (whether direct or
indirect)?
Is that exclusion to apply to liability under an
indemnity?
Are the caps and exclusions of liability to apply to
liability for:
a) deliberate breach of contract?
b) a breach of confidence?
If the Institute/University assigns any IPRs to the
Sponsor will the Institute/University give a warranty
of full title guarantee or other limited warranty? (See
clause 7.10 of Model Agreements 2A and 2B and the
accompanying note.)
Termination
May the other party terminate the Research
Collaboration
Agreement
if
force
majeure
circumstances prevent the other performing?
If one party is in breach of contract how long an
opportunity to remedy that breach will it have before
the other is allowed to terminate the Research
Collaboration Agreement?
May either party terminate if a member of the other's
key personnel leave/are unable to continue and the
replacement is not satisfactory?
Are any provisions of the Research Collaboration
Agreement to continue after termination?
Will the Sponsor pay the Institute/University for all
work done prior to termination?
Will the Institute/University refund to the Sponsor
any unused portion of payments in advance?
Governing
Law
and
Jurisdiction
Which system of law is to govern the interpretation of
the Research Collaboration Agreement:
a) the laws of India? (Specify which state)
b) the laws of England and Wales?
c) other? (Specify which)
(You may find the notes to clauses 11.11 and 11.12
of the Model Agreements useful.)
In what forum are disputes (which
resolved amicably) to be resolved:
cannot
be
a) the courts in India?
b) the courts in England?
c) other courts? (Specify which courts)
d) arbitration? (Specify where and the arbitration
rules to be adopted)
(You may find the notes to clauses 11.11 and 11.12
of the Model Agreements useful.)
SOME FACTORS TO TAKE INTO ACCOUNT WHEN DECIDING WHETHER THE
INSTITUTE/UNIVERSITY OR THE SPONSOR SHOULD OWN THE IPRs IN THE
RESULTS AND THE EXPLOITATION RIGHTS
The decision as to which party owns the IPRs in the Results and/or has the right to
exploit them will depend on a number of factors including: the parties’ respective
contributions in terms of intellectual effort, Background, money, materials, facilities and
human resources, their ability to exploit the Results, any conditions imposed in relation
to any External Funding, the Sponsor’s need to own assets against which it may be able
to raise investment and even the tax reliefs available to the Sponsor (which are too
complex a subject for this Toolkit).
The following factors indicate the sort of issues which a person practised in negotiating
research collaborations will often take into account. They are not exhaustive, and there
may be other factors which influence your decision.
The following questions assume that:

the Institute/University and the Sponsor wish to collaborate on the Project;

the Institute/University and the Sponsor can agree on the description of the
Project (Schedule 2 of the Model Agreements); and

the Institute/University can cost the Project and the Institute/University and the
Sponsor can agree on a budget and the Sponsor's financial contribution (Schedule
1 of the Model Agreements).
Answering the following questions may not provide a definitive way forward. If the
circumstances for which you are trying to find an appropriate form of agreement are
'mixed' (e.g. the academic and commercial drivers are of equal importance), you may
need to answer a more open-ended set of questions to help you make a decision – see
Part 4.
Part 1
1.
Has the Project been commissioned by the Sponsor?
2.
Is the Project critical to the Sponsor's technology strategy?
3.
Is ownership of the IPRs in the Results important for the purpose of the Sponsor
attracting investment or eventually being able to sell its business?
4.
Does the Project rely substantially on the Sponsor's materials or existing IPRs
(Background)?
5.
Would the Project be difficult or impossible to carry out without privileged access
to the Sponsor's materials or Background?
6.
Is the focus of the Project the testing or analysis of the Sponsor's materials, or
research based around the Sponsor's materials or Background?
7.
Has the Sponsor taken the lead in designing the work-plan for the Project?
8.
Is the Sponsor setting deliverables and/or milestones for the Project?
9.
Can the Project be ring-fenced from the Principal Investigator’s (PI) other
research activities?
10.
Is the Sponsor's ownership of the IPRs in the Results irrelevant to the PI’s future
research (i.e. there will be no knock-on effect on the PI's other research or
related IPRs)?
11.
Is the Sponsor paying the costs of the Project plus a profit element?
Mostly yes answers to the questions in this section support the argument that the IPRs
in the Results should belong to the Sponsor and that Research Collaboration Model
Agreement 2A or 2B is probably more suitable.
Part 2
1.
Has the Project been designed primarily to address academic interests?
2.
Has the Institute/University taken the lead in designing the work-plan?
3.
Does the Project represent an integral part of the PI’s overall long-term research
activities?
4.
Is the Project being funded principally through other support, e.g. other public
sector/third party funding?
5.
Does the Project rely substantially on the Institute’s/University’s materials or
Background?
6.
Can the Project be carried out without privileged access to the Sponsor’s
materials or Background?
7.
Are all the individuals working on the Project employees or students of the
Institute/University?
8.
Is it unlikely that exploitable Results or patentable inventions will arise from the
Project?
9.
Are the Results of the Project likely
Institute/University than to the Sponsor?
10.
Is the Institute’s/University’s ownership of the IPRs in the Results irrelevant to
the Sponsor's future research (i.e. there will be no knock-on effect on the
Sponsor's other research or related IP rights)?
to
be
of
more
interest
to
the
Mostly yes answers to the questions in this section support the argument that the IPRs
in the Results should belong to the Institute/University and that Research Collaboration
Model Agreement 1A or 1B is probably more suitable and that a non-exclusive licence
should be granted to the Sponsor.
Part 3
If it seems that the Institute/University should own the IPRs in the Results, but the
Sponsor is not satisfied with a non-exclusive licence, try asking the following questions
to determine whether an exclusive licence (perhaps restricted to certain fields or
territories) is the answer:
1.
Will an exclusive licence provide an effective means through which the Sponsor
can exploit the Results?
2.
Are there likely to be applications/fields of use, markets/territories in which the
Sponsor is unable to exploit, or is uninterested in exploiting, the IPRs in the
Results?
3.
Does the Project represent an integral part of the PI’s overall research activities,
and will the IPRs in the Results therefore be of significance to his or her long-term
plans?
4.
Is the Project based more on the Institute’s/University’s materials or Background
than on the Sponsor's materials and Background?
5.
Does the Institute/University have the budget and expertise to manage the IPRs
in the Results?
6.
Is it important to the Sponsor (for tax or other reasons) that it has exclusive
rights?
Part 4
The following are more open-ended questions which may give you a feel for the ‘right’
answer.
1.
Whose idea was the Project?
2.
What is the purpose of the Project?
3.
Why does the Sponsor wish to fund the Project?
4.
Why does the Institute/University wish to carry out the Project?
5.
What are the relative contributions of the parties in cash and in kind?
6.
Is the Sponsor making an offer which the Institute/University simply cannot
afford to refuse?
Dated _________________________201[ ]
(1) [INSERT NAME OF INDIAN INSTITUTE]
(2) [INSERT NAME OF UK SPONSOR COMPANY]
DRAFT
RESEARCH COLLABORATION AGREEMENT
MODEL 1A
(The Indian Institute owns IPR in the Results and grants the UK Sponsor either a non-exclusive licence OR an exclusive
licence.)i
Intellectual Property Office is an operating name of the Patent Office
THIS AGREEMENT dated ………………………………………….. 201[?] is made BETWEENii:
(1)
[INSERT NAME OF INDIAN INSTITUTE], a not-for-profit educational institution, having
corporate powers and incorporated under the laws of India, whose administrative offices are
at [insert address] (the Institute); and
(2)
[INSERT NAME OF UK COMPANY] [LIMITED], a company registered in [England] under
numberiii [insert company number], whose registered office is at [insert address of registered
office] (the Sponsor)
1.
DEFINITIONS AND INTERPRETATION
1.1
In this Agreement the following expressions have the meaning set opposite:
Academic Publicationiv
the publication of an abstract, article or paper in a
journal or an electronic repository, or its presentation
at a conference or seminar; and in clauses 5 and 6 to
Publish and Publication are to be construed as
references to Academic Publication;
this Agreementv
this document, including its Schedules, as amended
from time to time in accordance with clause 11.9;
Backgroundvi
information, techniques, Know-how, software
and materials (regardless of the form or medium
in which they are disclosed or stored) which are
provided by one party to the other for use in the
Project (whether before or after the date of this
Agreement), except any Result;
a Business Dayvii
Monday to Friday (inclusive) except public holidays in
[insert country];
the Commencement Date
[insert the date on which the Project started or is to
start];
Confidential Informationviii
each party's confidential information is: any
Background disclosed by that party to the other for use
in the Project [and identified as confidential before or
at the time of disclosure]; and any Results in which that
party owns the Intellectual Property;
External Fundingix
any funding or assistance provided for the Project, or
to any party for use in the Project by any third party,
including any state or public body;
the Fieldx
[insert business area];
the Financial Contribution
the financial contribution to be provided by the
Sponsor set out in Schedule 1;
the
Good
Management
Data
the practices and procedures set out in Schedule 3;
Practicesxi
Intellectual Property Rightsxii
patents, trade marks, service marks, registered
designs, copyrights, database rights, design rights,
confidential information, applications for any of the
above, and any similar right recognised from time to
time in any jurisdiction, together with all rights of
action in relation to the infringement of any of the
above;
the Key Personnelxiii
the Principal Investigator and any other key personnel
identified in Schedule 2;
Know-how
unpatented technical information (including
information relating to inventions, discoveries,
concepts, methodologies, models, research,
development and testing procedures, the results of
experiments, tests and trials, manufacturing processes,
techniques and specifications, quality control data,
analyses, reports and submissions) which is not in the
public domain;
1.2
the Location
the location(s) at which the Project will be carried out
as set out in Schedule 2;
the Principal Investigator
[insert name] or his or her successor appointed under
clause 9.2;
the Projectxiv
the programme of work described in Schedule 2, as
amended from time to time in accordance with clause
11.9;
the Project Period
the period described in clause 2.1;
the Results
all information, Know-how, results, inventions,
software and other Intellectual Property identified or
first reduced to practice or writing in the course of the
Project;
[the Sponsor’s Supervisor
[insert name] or his or her successor appointed under
clause 9.2;]xv and
the Territoryxvi
[worldwide] OR [insert geographical area].
A reference to a company in this Agreement includes any company, corporation
or other body corporate, wherever and however incorporated or established, and
a reference in this Agreement to a person includes a natural person, a corporate
or unincorporated body (whether or not having separate legal personality) and
that person's personal representatives, successors and permitted assigns.
1.3
Unless the context otherwise requires, words in the singular in this Agreement include the
plural and words in the plural include the singular.
1.4
Unless the context otherwise requires, a reference in this Agreement to one gender includes
a reference to the other genders.
1.5
A reference in this Agreement to a statute or statutory provision is a reference to it as
amended, extended or re-enacted from time to time and includes all subordinate legislation
made from time to time under that statute or statutory provision.
1.6
A reference in this Agreement to writing or written includes faxes but not e-mail.
1.7
Any obligation on a party in this Agreement not to do something includes an obligation not
to allow that thing to be done.
1.8
Any reference in this Agreement to an English or Indian legal term for any action, remedy,
method of judicial proceeding, legal document, legal status, court, official or any legal
concept or thing will, in respect of any other jurisdiction, be deemed to include a reference
to that which most nearly approximates to the English or Indian (as the case may be) legal
term in that jurisdiction.
1.9
Any words in this Agreement following the expressions including, include, in
particular, or any similar expression, are merely illustrative and do not limit the
sense of the words, description, definition, phrase or expression preceding those
expressions.
1.10
The rule known as the ejusdem generis rule does not apply to this Agreement.
Accordingly general words introduced by the word other will not be given a
restrictive meaning because they are preceded by words indicating a particular
class of acts, matters or things.
1.11
Time will [not]xvii be of the essence for all times, dates and periods specified in this
Agreement.
1.12
All references in this Agreement to clauses and Schedules are, respectively to clauses of, and
Schedules to, this Agreement.
2.
THE PROJECT
2.1
The Project [will begin on]OR[began on]xviii the Commencement Date and will continue until
[insert date] or until any later date agreed in writing between the parties, or until this
Agreement is terminated in accordance with clause 8 or 9. If this Agreement is entered into
after the Commencement Date, it will apply retrospectively to work carried out in relation to
the Project on or after the Commencement Date.
2.2
[The Institute]OR[Each of the parties]xix will carry out the tasks allotted to it in
Schedule 2 with reasonable skill and care, and will provide the human resources,
materials, facilities and equipment that are designated as its responsibility in
Schedule 2. [The Project will be carried on under the direction and supervision of
the Principal Investigator]OR[the Sponsor's Supervisor]. The Project will be
carried out at the Location.
2.3
Each of the parties will use all reasonable endeavours to obtain all regulatory and
ethical licences, consents and approvals necessary to allow it to carry out the
tasks allotted to it in Schedule 2.xx
2.4
Each of the parties will ensure that its employees and students (if any) involved
in the Project: observe the conditions attaching to any regulatory and ethical
licences, consents and approvals; keep complete and accurate records of all
research, development and other work carried out in connection with the Project
and of all Results and observations, signed by the people who obtained each
Result or made those observations, and countersigned by an employee of that
party who is not a member of the research team but who understands the work;
and comply with the Good Data Management Practices.
2.5
Although [the Institute]OR[each of the parties] will use reasonable endeavours to
carry out the Project in accordance with Schedule 2, [the Institute does not
undertake]OR[neither party undertakes] that any research will lead to any
particular result, nor does it guarantee a successful outcome to the Project. xxi
2.6
The Institute will provide the Sponsor with [monthly]OR[quarterly]OR[annual]
reports summarising the progress of the Project and a copy of all of the
Results.xxii
2.7
Each of the parties warrants to the other that it has full power and authority under its
constitution, and has taken all necessary actions and obtained all authorisations, licences,
consents and approvals required under its constitution or by law, to allow it to enter into
this Agreement and perform its obligations under it.
3.
FINANCIAL CONTRIBUTION AND EXTERNAL FUNDING
3.1
The Institute will keep complete and accurate accounts of its expenditure on the
Project. The Sponsor will pay the Financial Contribution to the Institute in
accordance with Schedule 1 within [30]OR[60] days after receipt by the Sponsor
of [monthly]OR[quarterly] invoices. Where the Financial Contribution is being
claimed against costs and expenses incurred by the Institute, each invoice must
be accompanied by a statement certified by an authorised officer of the
Institute.xxiii
3.2
All amounts payable to the Institute under this Agreement will be paid in [in
pounds sterling]OR[Indian rupees] and are exclusive of any value added, sales,
service or similar tax which the Sponsor will pay at the rate from time to time
prescribed by law.xxiv
3.3
If the Sponsor fails to make any payment due to the Institute under this
Agreement, without prejudice to any other right or remedy available to the
Institute, the Institute may charge interest (both before and after any
judgement) on the amount outstanding, on a daily basis at the rate of [eight]xxv
per cent per annum. That interest will be calculated from the date or last date for
payment to the actual date of payment, both dates inclusive, and will be
compounded [quarterly]. The Sponsor will pay that interest to the Institute on
demand.
3.4
[Except as set out in Schedule 2,] the Institute will own all equipment purchased
or constructed by it, or for it, using the Financial Contribution or any External
Funding.
3.5
If the Project receives any External Funding [each of the parties]OR[the
Institute] will comply with the terms of that External Fundingxxvi.
4.
USE AND EXPLOITATION OF INTELLECTUAL PROPERTY RIGHTSxxvii
4.1
This Agreement does not affect the ownership of any Intellectual Property Rights
in any Background or in any other technology, design, work, invention, software,
data, technique, Know-how, or materials which are not Results. The Intellectual
Property Rights in any Background will remain the property of the party which
contributes them to the Project (or its licensors). xxviii No licence to use any
Intellectual Property Rights is granted or implied by this Agreement except the
rights expressly granted in this Agreement.
4.2
Each Party grants the other party a royalty-free, non-exclusive licence to use its
Background for the purpose of carrying out the Project, but for no other
purposexxix. Neither party may grant any sub-licence to use the other party's
Background.
4.3
The Institute will own the Intellectual Property Rights in the Results and may take such steps
as it may decide from time to time, and at its own expense, to registerxxx and maintain any
protection for those Intellectual Property Rights, including filing and prosecuting patent
applications for any of the Resultsxxxi.
4.4
Where any third party such as a student or contractor is involved in the Project, the Institute
or the party engaging that contractor (as the case may be) will ensure that that student and
that contractor assigns any Intellectual Property Rights which they may have in the Results in
order to be able to give effect to the provisions of this clause 4xxxii. The Sponsor will ensure
that its employees involved in the creation of the Results give the Institute such assistance as
the Institute may reasonably request in connection with the registration and protection of
the Intellectual Property Rights in the Results, including filing and prosecuting patent
applications for any Result, and taking any action in respect of any alleged or actual
infringement of those Intellectual Property Rights.
4.5
[The Institute]OR[Each of the parties] will notify the [Sponsor]OR[other] promptly after
identifying any Result that [the Institute]OR[it] believes is patentable, and will supply the
[Sponsor]OR[other] with copies of that Result. The Institute will notify other Results to the
Sponsor in the reports provided under clause 2.4.xxxiii
4.6
The Institute grants to the Sponsorxxxiv [a royalty-free], [non-]exclusive
indefinitexxxv, [fully paid-up licence] (with the right to sub-license) to use the
Intellectual Property in any of the Results for any purpose within the Field in the
Territory.xxxvi xxxvii
[4.7
Subject to clause 4.8, the Institute will not itself use or commercialise the
Intellectual Property Rights in the Results in the Field in the Territory and will not
grant any third party the right to do so.]xxxviii
4.[7][8] For the avoidance of doubt, the Institute and each employee and student of the Institute will
have the irrevocable, royalty-free right to use the Results for the purposes of academic
teaching and academic research [, including research projects which are sponsored by any
third party]. The rights in this clause are subject to the rules on Academic Publication in
clause 5.
5.
ACADEMIC USE AND PUBLICATIONxxxix
5.1
Any employee or student of the Institute (whether or not involved in the Project)
may, provided details of the intention to publish have been given to the Sponsor
and no Confidentiality Notice under clause 5.2 has been given:
5.1.1
discuss work undertaken as part of the Project in Institute seminars, tutorials and
lectures; and
5.1.2
Publish any Background of the Sponsor (unless it is the Sponsor’s Confidential
Information) or any of the Results.
5.2
The Institute will submit to the Sponsor, in writing, details of any Results and any
of the Sponsor's Background which any employee or student of the Institute
intends to Publish, at least [30]OR[60] days before the date of the proposed
submission for Publication. The Sponsor may, by giving written notice to the
Institute (a Confidentiality Notice): require the Institute to delay the proposed
Publication for a maximum of [insert number] month(s) after receipt of the
Confidentiality Notice if, in the Sponsor's reasonable opinion, that delay is
necessary in order to seek patent or similar protection for any of the Sponsor's
Background or any Results which are to be Published; or prevent the Publication
of any of the Sponsor's Background which is Confidential Information. The
Sponsor must give that Confidentiality Notice within [15]OR[30] days after the
Sponsor receives details of the proposed Publication. If the Institute does not
receive a Confidentiality Notice within that period, its employee or student may
proceed with the proposed Publication, provided that, whether or not it a
Confidentiality Notice has been given, any of the Sponsor's Background which is
Confidential Information may not be published.
6.
CONFIDENTIALITY
6.1
Subject to clause 5, neither party will[, either during the Project Period or for
[3][5][7][10] years] after the end of the Project Period,]xl disclose to any third
party, nor use for any purpose except carrying out the Project, any of the other
party's Confidential Information.
6.2
Neither party will be in breach of any obligation to keep any Background, Results
or other information confidential or not to disclose it to any other party to the
extent that itxli:
6.2.1 is known to the party making the disclosure before its receipt from the
other party, and not already subject to any obligation of confidentiality to
the other party;
6.2.2 is or becomes publicly known without any breach of this Agreement or any
other undertaking to keep it confidential;
6.2.3 has been obtained by the party making the disclosure from a third party in
circumstances where the party making the disclosure has no reason to
believe that there has been a breach of an obligation of confidentiality
owed to the other party;
6.2.4
has been independently developed by the party making the disclosure;
6.2.5
is disclosed pursuant to the requirement of any law or regulationxlii and the party
required to make that disclosure has informed the other, within a reasonable time
after being required to make the disclosure, of the requirement to make the
disclosure and the information required to be disclosed; or
6.2.6 is approved for release in writing by an authorised representative of the
other party.
6.3
The Institute will not be in breach of any obligation to keep any of the Sponsor's Background
which is not Confidential Information, or any Results owned by or licensed to the Sponsor, or
other information, confidential or not to disclose them to any third party, by Publishing any
of the same if the Institute has followed the procedure in clause 5.2 and has received no
Confidentiality Notice within the period stated in that clause.
6.4
Neither the Institute nor the Sponsor will use the other’s name or logo in any
press release or product advertising, or for any other promotional purpose,
without first obtaining the other's written consent[; except that the Institute may
identify the sums received from the Sponsor in the Institute’s Annual Report and
similar publications].
7.
LIMITATION OF LIABILITY
7.1
The Institute warrants that there are, at the date of this Agreement, no laws,
regulations or other controls which restrict or prohibit the export of the Results to
the Sponsor.xliii
7.2
Each of the parties warrants to the other that, to the best of its knowledge and
belief (having made reasonable enquiry of those of its employees involved in the
Project or likely to have relevant knowledge[, and in the case of the Institute any
student involved in the Project], but not having made any search of any public
register) any advice or information given by it or any of its employees [or
students] who work on the Project, or the content or use of any Results,
Background or materials, works or information provided in connection with the
Project, will not constitute or result in any infringement of third-party rights.
OR
Neither of the parties makes any representation or gives any warranty to the
other that any advice or information given by it or any of its employees [or
students] who work on the Project, or the content or use of any Results,
Background or materials, works or information provided in connection with the
Project, will not constitute or result in any infringement of third-party rights.xliv
7.2
7.3
Except under the limited warranty in clause[s] 7.1 [and 7.2] and the indemnities
in clauses 7.4 and clause 7.5, and subject to clause 7.8, neither party accepts
any liability or responsibility for any use which may be made by the other party of
any Results, nor for any reliance which may be placed by that other party on any
Results, nor for advice or information given in connection with any Results. xlv
7.4
The Sponsor will indemnify the Institute, [the Principal Investigator] and every
[other] employee [and student] of the Institute (the Indemnified Parties), and
keep them fully and effectively indemnified, against each and every claim made
against any of the Indemnified Parties as a result of the Sponsor's use of any of
the Results or any materials, works or information received from them pursuant
to the terms of this Agreement, provided that the Indemnified Party must:
7.4.1
promptly notify the Sponsor of details of the claim;
7.4.2
not make any admission in relation to the claim;
7.4.3
allow the Sponsor to have the conduct of the defence or settlement of the claim;
7.4.4
give the Sponsor all reasonable assistance (at the Sponsor’s expense) in dealing with
the claim; and
7.4.5
take reasonable steps to mitigate its or his losses.
The indemnity in this clause 7.4 will not apply to the extent that the claim arises as a result
of the Indemnified Party's negligence, its breach of clause 6, its deliberate breach of this
Agreement or its knowing infringement of any third party’s Intellectual Property.xlvi
7.5
Each of the parties (the Indemnifying Party) will indemnify the other party,
and keep the other party fully and effectively indemnified, against each and every
claim made against the other party to the effect that or as a result of any
invention, material, work or information (including any Results or Background)
supplied by the Indemnifying Party pursuant to the terms of this Agreement is an
infringement of the Intellectual Property Rights of any third party, provided that
the other must:
7.5.1
promptly notify the Indemnifying Party of details of the claim;
7.5.2
not make any admission in relation to the claim;
7.5.3
allow the Indemnifying Party to have the conduct of the defence or settlement of
the claim; and
7.5.4
give the Indemnifying Party all reasonable assistance (at the Indemnifying Party’s
expense) in dealing with the claim.
The indemnity in this clause 7.5 will not apply to the extent that the claim arises as a result
of the other party’s negligence, its breach of clause 6 or its deliberate breach of this
Agreement.
7.6
Subject to clause 7.8, and except under the indemnities in clause 7.4 and clause
7.5, the liability of either party to the other for any breach of this Agreement, any
negligence or arising in any other way out of the subject matter of this
Agreement, the Project and the Results, will not extend to any indirect damages
or losses, or to any loss of profits, loss of revenue, loss of data, loss of contracts
or opportunity (in each case whether direct or indirect), even if the party bringing
the claim has advised the other of the possibility of those losses, or if they were
within the other party's contemplation.xlvii
7.7
Subject to clause 7.8, [and except under the indemnity in clause 7.4 and the
indemnity in clause 7.5,] the aggregate liability of each party to the other for all
and any breaches of this Agreement, any negligence or arising in any other way
out of the subject matter of this Agreement, the Project and the Results, will not
exceed in total [the monies actually paid by the Sponsor under this
Agreement].xlviii
7.8
Nothing in this Agreement limits or excludes either party’s liability for:
7.8.1 death or personal injury caused by negligence;
7.8.2 any fraud or for any sort of liability which, by law, cannot be limited or
excluded; or
7.8.3
7.9
any loss or damage caused by a deliberate breach of this Agreement or a breach of
clause 6 (Confidentiality).
The express undertakings and warranties given by the parties in this Agreement
are in lieu of all other warranties, conditions, terms, undertakings and obligations,
whether express or implied by statute, common law, custom, trade usage, course
of dealing or in any other way.
permitted by law.xlix
8.
All of these are excluded to the fullest extent
FORCE MAJEURE
If the performance by either party of any of its obligations under this Agreement (except a payment
obligation) is delayed or prevented by circumstances beyond its reasonable control, that party will
not be in breach of this Agreement because of that delay in performance. However, if the delay in
performance is more than [3]OR[6] months, the other party may terminate this Agreement with
immediate effect by giving written notice.
9.
TERMINATION
9.1
Either party may terminate this Agreement with immediate effect by giving notice
to the other party if:
9.1.1
the other party is in breach of any provision of this Agreement and (if it is capable of
remedy) the breach has not been remedied within [30]OR[60]OR[90] days after
receipt of written notice specifying the breach and requiring its remedy; or
9.1.2 the other party becomes insolvent, or if an order is made or a resolution is
passed for its winding up (except voluntarily for the purpose of solvent
amalgamation or reconstruction), or if an administrator, administrative
receiver or receiver is appointed over the whole or any part of the other
party's assets, or if the other party makes any arrangement with its
creditors.l
[9.2
Each of the parties will notify the other promptly if at any time any of the Key
Personnel appointed by that party is unable or unwilling to continue to be
involved in the Project. Within [3]OR[6] months after the date of that notice, the
party who originally appointed that member of the Key Personnel will nominate a
successor. The other party will not unreasonably refuse to accept the nominated
successor, but if the successor is not acceptable to the other party on reasonable
grounds, or if the appointor cannot find a successor, either party may terminate
this Agreement by giving the other not less than [3] months' notice.]li
9.3
Clauses 1, 4 (except clauses 4.6 [and 4.7] if the Institute terminates this Agreement under
clause 9.1), 5, 6, 7, 8, 9.3, 9.4, 10 and 11 will survive the expiry of the Project Period or the
termination of this Agreement for any reason and will continue in full force and effect
indefinitely.lii
9.4
On the termination of this Agreement, the Sponsor will pay the Institute for all
work done prior to termination. If the Sponsor has paid any of the Financial
Contribution in advance and the whole of that contribution has not, by the end of
the Project Period or the termination of this Agreement, been used by the
Institute for the purposes for which that Financial Contribution was provided, the
Institute will return to the Sponsor the unused portion of that contribution.
10.
ANTI-BRIBERYliii
10.1
The Institute will:
10.1.1 comply with all applicable laws, statutes, regulations and codes relating to antibribery and anti-corruption including the UK Bribery Act 2010 and the Indian
Prevention of Corruption Act 1988;
10.1.2 not engage in any activity, practice or conduct which would constitute an offence
under sections 1, 2 or 6 of the UK Bribery Act 2010 if such activity, practice or
conduct had been carried out in the UK or contravene section 2 or sections 7 to 16 of
the Indian Prevention of Corruption Act 1988 if such activity, practice or conduct had
been carried out in India;
10.1.3 comply with the Sponsor’s policies relating to Anti-bribery and Anti-corruption
provided by the Sponsor to the Institute from time to time;
10.1.4 have and maintain in place throughout the term of this Agreement its own policies
and procedures, including adequate procedures under the UK Bribery Act 2010 and
the Indian Prevention of Corruption Act 1988 and any other applicable law, to
ensure compliance with clauses 10.1.1, 10.1.2 and 10.1.3 and will enforce them
where appropriate;
10.1.5 promptly report to the Sponsor any request or demand for any undue financial or
other advantage of any kind received by the Institute in connection with the
performance of this agreement; and
10.1.6 within six months after the date of this Agreement, and annually afterwards, certify
to the Sponsor in writing signed by an officer of the Institute, compliance with this
clause 10 by the Institute and by all persons associated with the Institute. The
Institute will provide such supporting evidence of compliance as the Sponsor may
reasonably request.
10.2
The Institute will ensure that any person associated with the Institute who is performing
services or providing goods in connection with this Agreement does so only on the basis of a
written contract which imposes on and secures from that person terms equivalent to those
imposed on the Institute in this clause 10. The Institute will be responsible for the
observance and performance by those persons of those equivalent terms, and will be
directly liable to the Sponsor for any breach by those persons of any of those terms.
10.3
Breach of this clause 10 will be deemed a breach which is not capable of remedy for the
purposes of clause 9.1.1.
10.4
For the purpose of this clause 10, the meaning of adequate procedures and whether a
person is associated with another person will be determined in accordance with section 7(2)
of the UK Bribery Act 2010 (and any guidance issued under section 9 of that Act), sections
6(5) and 6(6) of that Act and section 8 of that Act respectively and the corresponding
sections under the Indian Prevention of Corruption Act 1988. For the purposes of this clause
10, a person associated with the Institute includes, but is not limited to, any employee,
officer, student and subcontractor of the Institute.
11.
GENERAL
11.1
Noticesliv: Any notice to be given under this Agreement must be in English and in writing,
may be delivered to the other party or parties by any of the methods set out in the left hand
column below, and will be deemed to be received on the corresponding day set out in the
right hand column:
Method of service
Deemed day of receipt
By hand or courier
the day of delivery
By pre-paid airmail first class post
the fifth Business Day after posting
By recorded delivery post
the third Business Day after posting
By fax (provided the sender’s fax
machine confirms complete and errorfree transmission of that notice to the
correct fax number)
the next Business Day after sending or, if sent
before 16.00 (sender’s local time) on the
Business Day it was sent
The parties' respective representatives for the receipt of notices are, until
changed by notice given in accordance with this clause 11.1, as follows:
For the Institute:
For the Sponsor:
Name:
Name:
Address:
Address:
Fax number:
Fax number:
11.2
Headings: The headings in this Agreement are for ease of reference only; they do not affect
its construction or interpretation.
11.3
Assignmentlv: Neither party may assign or transfer this Agreement as a whole, or any of its
rights or obligations under it, without first obtaining the written consent of the other party.
That consent may not be unreasonably withheld or delayed.
11.4
Illegal/unenforceable provisions: If the whole or any part of any provision of this
Agreement is void or unenforceable in any jurisdiction, the other provisions of this
Agreement, and the rest of the void or unenforceable provision, will continue in force in that
jurisdiction, and the validity and enforceability of that provision in any other jurisdiction will
not be affected.
11.5
Waiver of rights: If a party fails to enforce, or delays in enforcing, an obligation of the other
party, or fails to exercise, or delays in exercising, a right under this Agreement, that failure or
delay will not affect its right to enforce that obligation or constitute a waiver of that right.
Any waiver of any provision of this Agreement will not, unless expressly stated to the
contrary, constitute a waiver of that provision on a future occasion.
11.6
No agency: Nothing in this Agreement creates, implies or evidences any partnership or joint
venture between the parties, or the relationship between them of principal and agent.
Neither party has any authority to make any representation or commitment, or to incur any
liability, on behalf of the other.
11.7
Entire Agreementlvi: This Agreement constitutes the entire agreement between the parties
relating to its subject matter. Each party acknowledges that it has not entered into this
Agreement on the basis of any warranty, representation, statement, agreement or
undertaking except those expressly set out in this Agreement. Each party waives any claim
for breach of this Agreement, or any right to rescind this Agreement in respect of, any
representation which is not an express provision of this Agreement. However, this clause
11.7 does not exclude any liability which either party may have to the other (or any right
which either party may have to rescind this Agreement) in respect of any fraudulent
misrepresentation or fraudulent concealment prior to the execution of this Agreement.
11.8
Formalities: Each party will take any action and execute any document reasonably required
by the other party to give effect to any of its rights under this Agreement, or to enable their
registration in any relevant territory provided the requesting party pays the other party’s
reasonable expenses.
11.9
Amendments: No variation or amendment of this Agreement will be effective unless it is
made in writing and signed by each party's representative.
11.10 Third parties: No one except a party to this Agreement has any right to prevent the
amendment of this Agreement or its termination, and no one except a party to this
Agreement may enforce any benefit conferred by this Agreement, unless this Agreement
expressly provides otherwise.
11.11 Governing Lawlvii: This Agreement and any dispute or claim arising out of or in
connection with it or its subject matter or formation (including non-contractual
disputes or claims) are governed by, and are to be construed in accordance with,
the laws of [England and Wales]OR[India].lviii lix
11.12 Jurisdictionlx: Subject to clause 11.13, any dispute which has arisen or may
arise out of or in connection with this Agreement must be referred to, and settled
by, arbitration.lxi That arbitration is to take place at [insert location] or any other
location which the parties may agree in writing. The arbitration tribunal will
consist of three arbitrators, each of the parties nominating one arbitrator, who
will then jointly nominate a third arbitrator to preside over the arbitration. The
language of the arbitration will be English and all of the arbitrators must be fluent
in English. If the place of the arbitration is outside India:
11.12.1 The decision of the tribunal will be final, binding and incontestable, and
may be enforced as a decree of a court, or used as a basis for judgment
in India or elsewhere. In this regard, the parties agree that the New York
Convention (except for Articles V(1)(e) and VI) will apply to awards made
pursuant to this Agreement. Each of the parties waives the provisions of
Articles V(1)(e) and VI, so that there will be no appeal to any court from
the decision of the arbitrators; and
11.12.2 [Nothing contained in Part I of the Indian Arbitration and Conciliation Act
1996 will apply to any arbitration (whether commenced or to be
commenced) under this Agreement.]OR[The parties agree that the
operation of Part I of the Indian Arbitration and Conciliation Act 1996 is
specifically excluded and will not apply to any arbitration (whether
commenced or to be commenced) under this Agreement, except section
9 (interim measures by court) of Part I of the Act.]
The courts and tribunals at [insert location], India, will have exclusive jurisdiction in relation
to any dispute relating to:
11.12.3 any arbitration proceedings;
11.12.4 any challenge to the validity or applicability of this clause 11.11 to any dispute; and
11.12.5 any challenge to any arbitration award and its enforcement.
OR
Subject to clause 11.13, the Courts of England and Wales will have exclusive jurisdiction to
settle any dispute or claim arising out of or in connection with this Agreement or its subject
matter or formation (including non-contractual disputes or claims) except that either party
may bring proceedings in relation to the protection of its Intellectual Property Rights or
Confidential Information in any jurisdiction. The Institute irrevocably appoints [insert name]
of [insert address in England] [insert fax number] as the Institute’s agent to receive on its
behalf in England or Wales service of any legal proceedings. That service will be deemed
completed on delivery to that agent (whether or not it is forwarded to and received by the
Institute) and will be valid until such time as the Institute has received prior written notice
from the Institute to the effect that that agent has ceased to act as its agent. If, for any
reason, that agent ceases to be able to act as agent or no longer has an address in England,
the Institute will immediately appoint a substitute agent acceptable to the Sponsor and will
provide the new agent's name, address and fax number within England to the Sponsorlxii.
11.13 Proceedings relating to IPR or Confidential Informationlxiii: Nothing in this Agreement will
prevent either party from bringing an action in any jurisdiction in order to protect its
Intellectual Property Rights or Confidential Information.
11.14 Language: This Agreement is drafted in the English language. If this Agreement is translated
into any other language, the English language text will prevail. All other documents provided
under or in connection with this Agreement must be in the English language, or
accompanied by a certified English translation. If such document is translated into any other
language, the English language text will prevail [unless such document is a constitutional,
statutory or other official document].
SIGNEDlxiv for and on behalf of the
Institute:
Name
Position
Signature
lxv
[Read and understood by the Principal
SIGNED for and on behalf of the Sponsor:
Name
Position
Signature
Read and understood by the
Investigator
Sponsor’s Supervisor
……………………………………………………………..
…………………………………………………………….
Signature
Signature
……………………………………………………………..
……………………………………………………………
Date
Date]
SCHEDULE 1
The Financial Contributionlxvi
This Schedule should set out complete details of the Financial Contribution, e.g. the types of
expenditure for which the Sponsor will reimburse the Institute (see below for an example), the
maximum amount which the Sponsor will pay, any milestones to be met and any conditions
attaching to payment.
The parties may agree that the Sponsor will cover increases in salary, pension and social security
contributions. In that case this Schedule should reflect this.
Year One
Year Two
Salary for [name of Appointee] at [x] including
pension and social security
£
£
Overheads (*% on salary)
£
£
Consumables
£
£
Equipment [itemise]
£
£
Total
£
£
All amounts in this Schedule exclude any sales, service, value added or similar tax.
The Institute's Finance Officer is: [insert details]
All payments of the Financial Contribution will be made by [bank transfer to: [insert details]]
SCHEDULE 2
The Projectlxvii
Scope of the Project
Aims of the Project
Any Key Personnel to be provided by the Institute (including the Principal Investigator)
Any Key Personnel to be provided by the Sponsor (including the Sponsor's
Supervisor (if any))
Numbers of other full and part time staff to be provided by each party
Students participating in the Project
Project Management
who is to act as overall project manager
responsibilities of project manager
project meetings (frequency, location and representation of each party)
provision of information and reports to any body providing External Funding
claiming External Funding
Facilities to be provided by each party
Equipment to be provided by each party (and whether, if provided for use by the other, it is
donated to the other or is on loan until the end of the Project).
Where the Project is to be carried out
Any Background (including materials) which the Sponsor must provide
Any Background (including materials) which the Institute must provide
Any Background (including materials) which is to be obtained by either party from a third party
Whether all Background is to be kept Confidential or which Background is to be kept confidential,
for instance:
All of the Sponsor's Background [except insert details] is Confidential Information.
OR
Background contained in documents which are marked ‘Confidential’ is Confidential Information.
Anticipated outputs or Results
Tasks to be performed by each party (with timetable of major milestones)
SCHEDULE 3
Good Data Management Practices
1.
Research data must be generated using sound scientific techniques and processes;
2.
Research data must be accurately recorded in accordance with good scientific practices by
the people conducting the research;
3.
Research data must be analysed appropriately, without bias and in accordance
with good scientific practices;
4.
Research data and the Results must be stored securely and be easily retrievable;
5.
Data trails must be kept to allow people to demonstrate easily and to reconstruct
key decisions made during the conduct of the research, presentations made about
the research and conclusions reached in respect of the research; and
6.
Each party must have the right, on not less than 30 days written notice, to visit any other
party to verify that it is complying with the above practices and procedures.
Dated _________________________201[ ]
(1) [INSERT NAME OF UK UNIVERSITY]
(2) [INSERT NAME OF INDIAN SPONSOR COMPANY]
DRAFT
RESEARCH COLLABORATION AGREEMENT
MODEL 1B
(The UK University owns the IPR in the Results and grants the Indian Sponsor either a non-exclusive licence OR an
exclusive licence.)lxviii
Intellectual Property Office is an operating name of the Patent Office
THIS AGREEMENT dated ………………………………………….. 201[?] is made BETWEENlxix:
(1)
[INSERT NAME OF UK UNIVERSITY], a not-for-profit educational institution, having
corporate powers and incorporated under the laws of [England], whose administrative
offices are at [insert address] (the University); and
(2)
[INSERT NAME OF INDIAN COMPANY] [LIMITED], a company registered in [India] with
corporate identity numberlxx [insert corporate identity number], whose registered office is at
[insert address of registered office] (the Sponsor)
1.
DEFINITIONS AND INTERPRETATION
1.1
In this Agreement the following expressions have the meaning set opposite:
Academic Publicationlxxi
the publication of an abstract, article or paper in a
journal or an electronic repository, or its presentation
at a conference or seminar; and in clauses 5 and 6 to
Publish and Publication are to be construed as
references to Academic Publication;
this Agreementlxxii
this document, including its Schedules, as amended
from time to time in accordance with clause 11.9;
Backgroundlxxiii
information, techniques, Know-how, software
and materials (regardless of the form or medium
in which they are disclosed or stored) which are
provided by one party to the other for use in the
Project (whether before or after the date of this
Agreement), except any Result;
a Business Daylxxiv
Monday to Friday (inclusive) except public holidays in
[insert country];
2
the Commencement Date
[insert the date on which the Project started or is to
start];
Confidential Informationlxxv
each party's confidential information is: any
Background disclosed by that party to the other for use
in the Project [and identified as confidential before or
at the time of disclosure]; and any Results in which that
party owns the Intellectual Property;
External Fundinglxxvi
any funding or assistance provided for the Project, or
to any party for use in the Project by any third party,
including any state or public body;
the Fieldlxxvii
[insert business area];
the Financial Contribution
the financial contribution to be provided by the
Sponsor set out in Schedule 1;
the
Good
Management
Data
the practices and procedures set out in Schedule 3;
Practiceslxxviii
Intellectual Property Rightslxxix
patents, trade marks, service marks, registered
designs, copyrights, database rights, design rights,
confidential information, applications for any of the
above, and any similar right recognised from time to
time in any jurisdiction, together with all rights of
action in relation to the infringement of any of the
above;
the Key Personnellxxx
the Principal Investigator and any other key personnel
identified in Schedule 2;
Know-how
unpatented technical information (including
information relating to inventions, discoveries,
3
concepts, methodologies, models, research,
development and testing procedures, the results of
experiments, tests and trials, manufacturing processes,
techniques and specifications, quality control data,
analyses, reports and submissions) which is not in the
public domain;
1.2
the Location
the location(s) at which the Project will be carried out
as set out in Schedule 2;
the Principal Investigator
[insert name] or his or her successor appointed under
clause 9.2;
the Projectlxxxi
the programme of work described in Schedule 2, as
amended from time to time in accordance with clause
11.9;
the Project Period
the period described in clause 2.1;
the Results
all information, Know-how, results, inventions,
software and other Intellectual Property identified or
first reduced to practice or writing in the course of the
Project;
[the Sponsor’s Supervisor
[insert name] or his or her successor appointed under
clause 9.2;]lxxxii and
the Territorylxxxiii
[worldwide] OR [insert geographical area].
A reference to a company in this Agreement includes any company, corporation
or other body corporate, wherever and however incorporated or established, and
a reference in this Agreement to a person includes a natural person, a corporate
or unincorporated body (whether or not having separate legal personality) and
that person's personal representatives, successors and permitted assigns.
4
1.3
Unless the context otherwise requires, words in the singular in this Agreement include the
plural and words in the plural include the singular.
1.4
Unless the context otherwise requires, a reference in this Agreement to one gender includes
a reference to the other genders.
1.5
A reference in this Agreement to a statute or statutory provision is a reference to it as
amended, extended or re-enacted from time to time and includes all subordinate legislation
made from time to time under that statute or statutory provision.
1.6
A reference in this Agreement to writing or written includes faxes but not e-mail.
1.7
Any obligation on a party in this Agreement not to do something includes an obligation not
to allow that thing to be done.
1.8
Any reference in this Agreement to an English or Indian legal term for any action, remedy,
method of judicial proceeding, legal document, legal status, court, official or any legal
concept or thing will, in respect of any other jurisdiction, be deemed to include a reference
to that which most nearly approximates to the English or Indian (as the case may be) legal
term in that jurisdiction.
1.9
Any words in this Agreement following the expressions including, include, in
particular, or any similar expression, are merely illustrative and do not limit the
sense of the words, description, definition, phrase or expression preceding those
expressions.
1.10
The rule known as the ejusdem generis rule does not apply to this Agreement.
Accordingly general words introduced by the word other will not be given a
restrictive meaning because they are preceded by words indicating a particular
class of acts, matters or things.
1.11
Time will [not]lxxxiv be of the essence for all times, dates and periods specified in this
Agreement.
1.12
All references in this Agreement to clauses and Schedules are, respectively to clauses of, and
Schedules to, this Agreement.
5
2.
THE PROJECT
2.1
The Project [will begin on]OR[began on]lxxxv the Commencement Date and will continue until
[insert date] or until any later date agreed in writing between the parties, or until this
Agreement is terminated in accordance with clause 8 or 9. If this Agreement is entered into
after the Commencement Date, it will apply retrospectively to work carried out in relation to
the Project on or after the Commencement Date.
2.2
[The University]OR[Each of the parties]lxxxvi will carry out the tasks allotted to it
in Schedule 2 with reasonable skill and care, and will provide the human
resources, materials, facilities and equipment that are designated as its
responsibility in Schedule 2. [The Project will be carried on under the direction
and supervision of the Principal Investigator]OR[the Sponsor's Supervisor]. The
Project will be carried out at the Location.
2.3
Each of the parties will use all reasonable endeavours to obtain all regulatory and
ethical licences, consents and approvals necessary to allow it to carry out the
tasks allotted to it in Schedule 2.lxxxvii
2.4
Each of the parties will ensure that its employees and students (if any) involved
in the Project: observe the conditions attaching to any regulatory and ethical
licences, consents and approvals; keep complete and accurate records of all
research, development and other work carried out in connection with the Project
and of all Results and observations, signed by the people who obtained each
Result or made those observations, and countersigned by an employee of that
party who is not a member of the research team but who understands the work;
and comply with the Good Data Management Practices.
2.5
Although [the University]OR[each of the parties] will use reasonable endeavours
to carry out the Project in accordance with Schedule 2, [the University does not
undertake]OR[neither party undertakes] that any research will lead to any
particular result, nor does it guarantee a successful outcome to the Project. lxxxviii
2.6
The University will provide the Sponsor with [monthly]OR[quarterly]OR[annual]
reports summarising the progress of the Project and a copy of all of the
Results.lxxxix
2.7
Each of the parties warrants to the other that it has full power and authority under its
constitution, and has taken all necessary actions and obtained all authorisations, licences,
consents and approvals required under its constitution or by law, to allow it to enter into
this Agreement and perform its obligations under it.
3.
FINANCIAL CONTRIBUTION AND EXTERNAL FUNDING
6
3.1
The University will keep complete and accurate accounts of its expenditure on the
Project. The Sponsor will pay the Financial Contribution to the University in
accordance with Schedule 1 within [30]OR[60] days after receipt by the Sponsor
of [monthly]OR[quarterly] invoices. Where the Financial Contribution is being
claimed against costs and expenses incurred by the University, each invoice must
be accompanied by a statement certified by an authorised officer of the
University.xc
3.2
All amounts payable to the University under this Agreement will be paid in [in
pounds sterling]OR[Indian rupees] and are exclusive of any value added tax or
similar tax which the Sponsor will pay at the rate from time to time prescribed by
law.xci
3.3
If the Sponsor fails to make any payment due to the University under this
Agreement, without prejudice to any other right or remedy available to the
University, the University may charge interest (both before and after any
judgement) on the amount outstanding, on a daily basis at the rate of [eight]xcii
per cent per annum. That interest will be calculated from the date or last date for
payment to the actual date of payment, both dates inclusive, and will be
compounded [quarterly]. The Sponsor will pay that interest to the University on
demand.
3.4
[Except as set out in Schedule 2,] the University will own all equipment
purchased or constructed by it, or for it, using the Financial Contribution or any
External Funding.
3.5
If the Project receives any External Funding [each of the parties]OR[the
University] will comply with the terms of that External Fundingxciii.
4.
USE AND EXPLOITATION OF INTELLECTUAL PROPERTY RIGHTSxciv
4.1
This Agreement does not affect the ownership of any Intellectual Property Rights
in any Background or in any other technology, design, work, invention, software,
data, technique, Know-how, or materials which are not Results. The Intellectual
Property Rights in any Background will remain the property of the party which
contributes them to the Project (or its licensors). xcv No licence to use any
Intellectual Property Rights is granted or implied by this Agreement except the
rights expressly granted in this Agreement.
4.2
Each Party grants the other party a royalty-free, non-exclusive licence to use its
Background for the purpose of carrying out the Project, but for no other
purposexcvi. Neither party may grant any sub-licence to use the other party's
Background.
4.3
The University will own the Intellectual Property Rights in the Results and may take such
steps as it may decide from time to time, and at its own expense, to registerxcvii and maintain
7
any protection for those Intellectual Property Rights, including filing and prosecuting patent
applications for any of the Resultsxcviii.
4.4
Where any third party such as a student or contractor is involved in the Project, the
University or the party engaging that contractor (as the case may be) will ensure that that
student and that contractor assigns any Intellectual Property Rights which they may have in
the Results in order to be able to give effect to the provisions of this clause 4xcix. The Sponsor
will ensure that its employees involved in the creation of the Results give the University such
assistance as the University may reasonably request in connection with the registration and
protection of the Intellectual Property Rights in the Results, including filing and prosecuting
patent applications for any Result, and taking any action in respect of any alleged or actual
infringement of those Intellectual Property Rights.
4.5
[The University]OR[Each of the parties] will notify the [Sponsor]OR[other] promptly after
identifying any Result that [the University]OR[it] believes is patentable, and will supply the
[Sponsor]OR[other] with copies of that Result. The University will notify other Results to the
Sponsor in the reports provided under clause 2.4.c
4.6
The University grants to the Sponsorci [a royalty-free], [non-]exclusive
indefinitecii, [fully paid-up licence] (with the right to sub-license) to use the
Intellectual Property in any of the Results for any purpose within the Field in the
Territory.ciii civ
[4.7
Subject to clause 4.8, the University will not itself use or commercialise the
Intellectual Property Rights in the Results in the Field in the Territory and will not
grant any third party the right to do so.]cv
4.[7][8] For the avoidance of doubt, the University and each employee and student of the University
will have the irrevocable, royalty-free right to use the Results for the purposes of academic
teaching and academic research [, including research projects which are sponsored by any
third party]. The rights in this clause are subject to the rules on Academic Publication in
clause 5.
5.
ACADEMIC USE AND PUBLICATIONcvi
5.1
Any employee or student of the University (whether or not involved in the
Project) may, provided details of the intention to publish have been given to the
Sponsor and no Confidentiality Notice under clause 5.2 has been given:
5.1.1
discuss work undertaken as part of the Project in University seminars, tutorials and
lectures; and
8
5.1.2
Publish any Background of the Sponsor (unless it is the Sponsor’s Confidential
Information) or any of the Results.
5.2
The University will submit to the Sponsor, in writing, details of any Results and
any of the Sponsor's Background which any employee or student of the University
intends to Publish, at least [30]OR[60] days before the date of the proposed
submission for Publication. The Sponsor may, by giving written notice to the
University (a Confidentiality Notice): require the University to delay the
proposed Publication for a maximum of [insert number] month(s) after receipt of
the Confidentiality Notice if, in the Sponsor's reasonable opinion, that delay is
necessary in order to seek patent or similar protection for any of the Sponsor's
Background or any Results which are to be Published; or prevent the Publication
of any of the Sponsor's Background which is Confidential Information. The
Sponsor must give that Confidentiality Notice within [15]OR[30] days after the
Sponsor receives details of the proposed Publication. If the University does not
receive a Confidentiality Notice within that period, its employee or student may
proceed with the proposed Publication, provided that, whether or not it a
Confidentiality Notice has been given, any of the Sponsor's Background which is
Confidential Information may not be published.
6.
CONFIDENTIALITY
6.1
Subject to clause 5, neither party will[, either during the Project Period or for
[3][5][7][10] years] after the end of the Project Period,]cvii disclose to any third
party, nor use for any purpose except carrying out the Project, any of the other
party's Confidential Information.
6.2
Neither party will be in breach of any obligation to keep any Background, Results
or other information confidential or not to disclose it to any other party to the
extent that itcviii:
6.2.1 is known to the party making the disclosure before its receipt from the
other party, and not already subject to any obligation of confidentiality to
the other party;
6.2.2 is or becomes publicly known without any breach of this Agreement or any
other undertaking to keep it confidential;
6.2.3 has been obtained by the party making the disclosure from a third party in
circumstances where the party making the disclosure has no reason to
believe that there has been a breach of an obligation of confidentiality
owed to the other party;
6.2.4
has been independently developed by the party making the disclosure;
9
6.2.5
is disclosed pursuant to the requirement of any law or regulationcix and the party
required to make that disclosure has informed the other, within a reasonable time
after being required to make the disclosure, of the requirement to make the
disclosure and the information required to be disclosed; or
6.2.6 is approved for release in writing by an authorised representative of the
other party.
6.3
The University will not be in breach of any obligation to keep any of the Sponsor's
Background which is not Confidential Information, or any Results owned by or licensed to
the Sponsor, or other information, confidential or not to disclose them to any third party, by
Publishing any of the same if the University has followed the procedure in clause 5.2 and has
received no Confidentiality Notice within the period stated in that clause.
6.4
Neither the University nor the Sponsor will use the other’s name or logo in any
press release or product advertising, or for any other promotional purpose,
without first obtaining the other's written consent[; except that the University
may identify the sums received from the Sponsor in the University’s Annual
Report and similar publications].
7.
LIMITATION OF LIABILITY
7.1
The University warrants that there are, at the date of this Agreement, no laws,
regulations or other controls which restrict or prohibit the export of the Results to
the Sponsor.cx
7.2
Each of the parties warrants to the other that, to the best of its knowledge and
belief (having made reasonable enquiry of those of its employees involved in the
Project or likely to have relevant knowledge[, and in the case of the University
any student involved in the Project], but not having made any search of any
public register) any advice or information given by it or any of its employees [or
students] who work on the Project, or the content or use of any Results,
Background or materials, works or information provided in connection with the
Project, will not constitute or result in any infringement of third-party rights.
OR
Neither of the parties makes any representation or gives any warranty to the
other that any advice or information given by it or any of its employees [or
students] who work on the Project, or the content or use of any Results,
Background or materials, works or information provided in connection with the
Project, will not constitute or result in any infringement of third-party rights.cxi
7.2
7.3
Except under the limited warranty in clause[s] 7.1 [and 7.2] and the indemnities
in clauses 7.4 and clause 7.5, and subject to clause 7.8, neither party accepts
any liability or responsibility for any use which may be made by the other party of
10
any Results, nor for any reliance which may be placed by that other party on any
Results, nor for advice or information given in connection with any Results. cxii
7.4
The Sponsor will indemnify the University, [the Principal Investigator] and every
[other] employee [and student] of the University (the Indemnified Parties),
and keep them fully and effectively indemnified, against each and every claim
made against any of the Indemnified Parties as a result of the Sponsor's use of
any of the Results or any materials, works or information received from them
pursuant to the terms of this Agreement, provided that the Indemnified Party
must:
7.4.1
promptly notify the Sponsor of details of the claim;
7.4.2
not make any admission in relation to the claim;
7.4.3
allow the Sponsor to have the conduct of the defence or settlement of the claim;
7.4.4
give the Sponsor all reasonable assistance (at the Sponsor’s expense) in dealing with
the claim; and
7.4.5
take reasonable steps to mitigate its or his losses.
The indemnity in this clause 7.4 will not apply to the extent that the claim arises as a result
of the Indemnified Party's negligence, its breach of clause 6, its deliberate breach of this
Agreement or its knowing infringement of any third party’s Intellectual Property.cxiii
7.5
Each of the parties (the Indemnifying Party) will indemnify the other party,
and keep the other party fully and effectively indemnified, against each and every
claim made against the other party to the effect that or as a result of any
invention, material, work or information (including any Results or Background)
supplied by the Indemnifying Party pursuant to the terms of this Agreement is an
infringement of the Intellectual Property Rights of any third party, provided that
the other must:
7.5.1
promptly notify the Indemnifying Party of details of the claim;
7.5.2
not make any admission in relation to the claim;
11
7.5.3
allow the Indemnifying Party to have the conduct of the defence or settlement of
the claim; and
7.5.4
give the Indemnifying Party all reasonable assistance (at the Indemnifying Party’s
expense) in dealing with the claim.
The indemnity in this clause 7.5 will not apply to the extent that the claim arises as a result
of the other party’s negligence, its breach of clause 6 or its deliberate breach of this
Agreement.
7.6
Subject to clause 7.8, and except under the indemnities in clause 7.4 and clause
7.5, the liability of either party to the other for any breach of this Agreement, any
negligence or arising in any other way out of the subject matter of this
Agreement, the Project and the Results, will not extend to any indirect damages
or losses, or to any loss of profits, loss of revenue, loss of data, loss of contracts
or opportunity (in each case whether direct or indirect), even if the party bringing
the claim has advised the other of the possibility of those losses, or if they were
within the other party's contemplation.cxiv
7.7
Subject to clause 7.8, [and except under the indemnity in clause 7.4 and the
indemnity in clause 7.5,] the aggregate liability of each party to the other for all
and any breaches of this Agreement, any negligence or arising in any other way
out of the subject matter of this Agreement, the Project and the Results, will not
exceed in total [the monies actually paid by the Sponsor under this
Agreement].cxv
7.8
Nothing in this Agreement limits or excludes either party’s liability for:
7.8.1 death or personal injury caused by negligence;
7.8.2 any fraud or for any sort of liability which, by law, cannot be limited or
excluded; or
7.8.3
7.9
any loss or damage caused by a deliberate breach of this Agreement or a breach of
clause 6 (Confidentiality).
The express undertakings and warranties given by the parties in this Agreement
are in lieu of all other warranties, conditions, terms, undertakings and obligations,
whether express or implied by statute, common law, custom, trade usage, course
12
of dealing or in any other way.
permitted by law.cxvi
8.
All of these are excluded to the fullest extent
FORCE MAJEURE
If the performance by either party of any of its obligations under this Agreement (except a payment
obligation) is delayed or prevented by circumstances beyond its reasonable control, that party will
not be in breach of this Agreement because of that delay in performance. However, if the delay in
performance is more than [3]OR[6] months, the other party may terminate this Agreement with
immediate effect by giving written notice.
9.
TERMINATION
9.1
Either party may terminate this Agreement with immediate effect by giving notice
to the other party if:
9.1.1
the other party is in breach of any provision of this Agreement and (if it is capable of
remedy) the breach has not been remedied within [30]OR[60]OR[90] days after
receipt of written notice specifying the breach and requiring its remedy; or
9.1.2 the other party becomes insolvent, or if an order is made or a resolution is
passed for its winding up (except voluntarily for the purpose of solvent
amalgamation or reconstruction), or if an administrator, administrative
receiver or receiver is appointed over the whole or any part of the other
party's assets, or if the other party makes any arrangement with its
creditors.cxvii
[9.2
Each of the parties will notify the other promptly if at any time any of the Key
Personnel appointed by that party is unable or unwilling to continue to be
involved in the Project. Within [3]OR[6] months after the date of that notice, the
party who originally appointed that member of the Key Personnel will nominate a
successor. The other party will not unreasonably refuse to accept the nominated
successor, but if the successor is not acceptable to the other party on reasonable
grounds, or if the appointor cannot find a successor, either party may terminate
this Agreement by giving the other not less than [3] months' notice.]cxviii
9.4
Clauses 1, 4 (except clauses 4.6 [and 4.7] if the University terminates this Agreement under
clause 9.1), 5, 6, 7, 8, 9.3, 9.4, 10 and 11 will survive the expiry of the Project Period or the
termination of this Agreement for any reason and will continue in full force and effect
indefinitely.cxix
13
9.4
On the termination of this Agreement, the Sponsor will pay the University for all
work done prior to termination. If the Sponsor has paid any of the Financial
Contribution in advance and the whole of that contribution has not, by the end of
the Project Period or the termination of this Agreement, been used by the
University for the purposes for which that Financial Contribution was provided,
the University will return to the Sponsor the unused portion of that contribution.
10.
ANTI-BRIBERYcxx
10.1
The University will:
10.1.1 comply with all applicable laws, statutes, regulations and codes relating to antibribery and anti-corruption including the UK Bribery Act 2010 and the Indian
Prevention of Corruption Act 1988;
10.1.2 not engage in any activity, practice or conduct which would constitute an offence
under sections 1, 2 or 6 of the UK Bribery Act 2010 if such activity, practice or
conduct had been carried out in the UK or contravene section 2 or sections 7 to 16 of
the Indian Prevention of Corruption Act 1988 if such activity, practice or conduct had
been carried out in India;
10.1.3 comply with the Sponsor’s policies relating to Anti-bribery and Anti-corruption
provided by the Sponsor to the University from time to time;
10.1.4 have and maintain in place throughout the term of this Agreement its own policies
and procedures, including adequate procedures under the UK Bribery Act 2010 and
the Indian Prevention of Corruption Act 1988 and any other applicable law, to
ensure compliance with clauses 10.1.1, 10.1.2 and 10.1.3 and will enforce them
where appropriate;
10.1.5 promptly report to the Sponsor any request or demand for any undue financial or
other advantage of any kind received by the University in connection with the
performance of this agreement; and
10.1.6 within six months after the date of this Agreement, and annually afterwards, certify
to the Sponsor in writing signed by an officer of the University, compliance with this
clause 10 by the University and by all persons associated with the University. The
14
University will provide such supporting evidence of compliance as the Sponsor may
reasonably request.
10.2
The University will ensure that any person associated with the University who is performing
services or providing goods in connection with this Agreement does so only on the basis of a
written contract which imposes on and secures from that person terms equivalent to those
imposed on the University in this clause 10. The University will be responsible for the
observance and performance by those persons of those equivalent terms, and will be
directly liable to the Sponsor for any breach by those persons of any of those terms.
10.3
Breach of this clause 10 will be deemed a breach which is not capable of remedy for the
purposes of clause 9.1.1.
10.4
For the purpose of this clause 10, the meaning of adequate procedures and whether a
person is associated with another person will be determined in accordance with section 7(2)
of the UK Bribery Act 2010 (and any guidance issued under section 9 of that Act), sections
6(5) and 6(6) of that Act and section 8 of that Act respectively and the corresponding
sections under the Indian Prevention of Corruption Act 1988. For the purposes of this clause
10, a person associated with the University includes, but is not limited to, any employee,
officer, student and subcontractor of the University.
11.
GENERAL
11.1
Noticescxxi: Any notice to be given under this Agreement must be in English and in writing,
may be delivered to the other party or parties by any of the methods set out in the left hand
column below, and will be deemed to be received on the corresponding day set out in the
right hand column:
Method of service
Deemed day of receipt
By hand or courier
the day of delivery
By pre-paid airmail first class post
the fifth Business Day after posting
15
By recorded delivery post
the third Business Day after posting
By fax (provided the sender’s fax
machine confirms complete and errorfree transmission of that notice to the
correct fax number)
the next Business Day after sending or, if sent
before 16.00 (sender’s local time) on the
Business Day it was sent
The parties' respective representatives for the receipt of notices are, until
changed by notice given in accordance with this clause 11.1, as follows:
For the University:
For the Sponsor:
Name:
Name:
Address:
Address:
Fax number:
Fax number:
11.2
Headings: The headings in this Agreement are for ease of reference only; they do not affect
its construction or interpretation.
11.3
Assignmentcxxii: Neither party may assign or transfer this Agreement as a whole, or any of its
rights or obligations under it, without first obtaining the written consent of the other party.
That consent may not be unreasonably withheld or delayed.
11.4
Illegal/unenforceable provisions: If the whole or any part of any provision of this
Agreement is void or unenforceable in any jurisdiction, the other provisions of this
Agreement, and the rest of the void or unenforceable provision, will continue in force in that
jurisdiction, and the validity and enforceability of that provision in any other jurisdiction will
not be affected.
11.5
Waiver of rights: If a party fails to enforce, or delays in enforcing, an obligation of the other
party, or fails to exercise, or delays in exercising, a right under this Agreement, that failure or
16
delay will not affect its right to enforce that obligation or constitute a waiver of that right.
Any waiver of any provision of this Agreement will not, unless expressly stated to the
contrary, constitute a waiver of that provision on a future occasion.
11.6
No agency: Nothing in this Agreement creates, implies or evidences any partnership or joint
venture between the parties, or the relationship between them of principal and agent.
Neither party has any authority to make any representation or commitment, or to incur any
liability, on behalf of the other.
11.7
Entire Agreementcxxiii: This Agreement constitutes the entire agreement between the parties
relating to its subject matter. Each party acknowledges that it has not entered into this
Agreement on the basis of any warranty, representation, statement, agreement or
undertaking except those expressly set out in this Agreement. Each party waives any claim
for breach of this Agreement, or any right to rescind this Agreement in respect of, any
representation which is not an express provision of this Agreement. However, this clause
11.7 does not exclude any liability which either party may have to the other (or any right
which either party may have to rescind this Agreement) in respect of any fraudulent
misrepresentation or fraudulent concealment prior to the execution of this Agreement.
11.8
Formalities: Each party will take any action and execute any document reasonably required
by the other party to give effect to any of its rights under this Agreement, or to enable their
registration in any relevant territory provided the requesting party pays the other party’s
reasonable expenses.
11.9
Amendments: No variation or amendment of this Agreement will be effective unless it is
made in writing and signed by each party's representative.
11.10 Third parties: No one except a party to this Agreement has any right to prevent the
amendment of this Agreement or its termination, and no one except a party to this
Agreement may enforce any benefit conferred by this Agreement, unless this Agreement
expressly provides otherwise.
11.11 Governing Lawcxxiv: This Agreement and any dispute or claim arising out of or in
connection with it or its subject matter or formation (including non-contractual
disputes or claims) are governed by, and are to be construed in accordance with,
the laws of [England and Wales]OR[India].cxxv cxxvi
17
11.12 Jurisdictioncxxvii: Subject to clause 11.13, any dispute which has arisen or may
arise out of or in connection with this Agreement must be referred to, and settled
by, arbitration.cxxviii That arbitration is to take place at [insert location] or any
other location which the parties may agree in writing. The arbitration tribunal will
consist of three arbitrators, each of the parties nominating one arbitrator, who
will then jointly nominate a third arbitrator to preside over the arbitration. The
language of the arbitration will be English and all of the arbitrators must be fluent
in English. If the place of the arbitration is outside India:
11.12.1 The decision of the tribunal will be final, binding and incontestable, and
may be enforced as a decree of a court, or used as a basis for judgment
in India or elsewhere. In this regard, the parties agree that the New York
Convention (except for Articles V(1)(e) and VI) will apply to awards made
pursuant to this Agreement. Each of the parties waives the provisions of
Articles V(1)(e) and VI, so that there will be no appeal to any court from
the decision of the arbitrators; and
11.12.2 [Nothing contained in Part I of the Indian Arbitration and Conciliation Act
1996 will apply to any arbitration (whether commenced or to be
commenced) under this Agreement.]OR[The parties agree that the
operation of Part I of the Indian Arbitration and Conciliation Act 1996 is
specifically excluded and will not apply to any arbitration (whether
commenced or to be commenced) under this Agreement, except section
9 (interim measures by court) of Part I of the Act.]
The courts and tribunals at [insert location], India, will have exclusive jurisdiction in relation
to any dispute relating to:
11.12.3 any arbitration proceedings;
11.12.4 any challenge to the validity or applicability of this clause 11.11 to any dispute; and
11.12.5 any challenge to any arbitration award and its enforcement.
OR
Subject to clause 11.13, the Courts of England and Wales will have exclusive jurisdiction to
settle any dispute or claim arising out of or in connection with this Agreement or its subject
matter or formation (including non-contractual disputes or claims) except that either party
may bring proceedings in relation to the protection of its Intellectual Property Rights or
Confidential Information in any jurisdiction. The University irrevocably appoints [insert
name] of [insert address in England] [insert fax number] as the University’s agent to receive
on its behalf in England or Wales service of any legal proceedings. That service will be
18
deemed completed on delivery to that agent (whether or not it is forwarded to and received
by the University) and will be valid until such time as the University has received prior
written notice from the University to the effect that that agent has ceased to act as its agent.
If, for any reason, that agent ceases to be able to act as agent or no longer has an address in
England, the University will immediately appoint a substitute agent acceptable to the
Sponsor and will provide the new agent's name, address and fax number within England to
the Sponsorcxxix.
11.13 Proceedings relating to IPR or Confidential Informationcxxx: Nothing in this Agreement will
prevent either party from bringing an action in any jurisdiction in order to protect its
Intellectual Property Rights or Confidential Information.
11.14 Language: This Agreement is drafted in the English language. If this Agreement is translated
into any other language, the English language text will prevail. All other documents provided
under or in connection with this Agreement must be in the English language, or
accompanied by a certified English translation. If such document is translated into any other
language, the English language text will prevail [unless such document is a constitutional,
statutory or other official document].
SIGNEDcxxxi for and on behalf of the
University:
Name
Position
Signature
SIGNED for and on behalf of the Sponsor:
Name
Position
Signature
19
cxxxii
[Read and understood by the Principal
Investigator
Read and understood by the
Sponsor’s Supervisor
……………………………………………………………..
…………………………………………………………….
Signature
Signature
……………………………………………………………..
……………………………………………………………
Date
Date]
20
SCHEDULE 1
The Financial Contributioncxxxiii
This Schedule should set out complete details of the Financial Contribution, e.g. the types of
expenditure for which the Sponsor will reimburse the University (see below for an example), the
maximum amount which the Sponsor will pay, any milestones to be met and any conditions
attaching to payment.
The parties may agree that the Sponsor will cover increases in salary, pension and social security
contributions. In that case this Schedule should reflect this.
Year One
Year Two
Salary for [name of Appointee] at [x] including
pension and social security
£
£
Overheads (*% on salary)
£
£
Consumables
£
£
Equipment [itemise]
£
£
Total
£
£
All amounts in this Schedule exclude any value added or similar tax.
The University's Finance Officer is: [insert details]
All payments of the Financial Contribution will be made by [bank transfer to: [insert details]]
21
SCHEDULE 2
The Projectcxxxiv
Scope of the Project
Aims of the Project
Any Key Personnel to be provided by the University (including the Principal Investigator)
Any Key Personnel to be provided by the Sponsor (including the Sponsor's
Supervisor (if any))
Numbers of other full and part time staff to be provided by each party
Students participating in the Project
Project Management
who is to act as overall project manager
responsibilities of project manager
project meetings (frequency, location and representation of each party)
provision of information and reports to any body providing External Funding
claiming External Funding
Facilities to be provided by each party
22
Equipment to be provided by each party (and whether, if provided for use by the other, it is
donated to the other or is on loan until the end of the Project).
Where the Project is to be carried out
Any Background (including materials) which the Sponsor must provide
Any Background (including materials) which the University must provide
Any Background (including materials) which is to be obtained by either party from a third party
Whether all Background is to be kept Confidential or which Background is to be kept confidential,
for instance:
All of the Sponsor's Background [except insert details] is Confidential Information.
OR
Background contained in documents which are marked ‘Confidential’ is Confidential Information.
Anticipated outputs or Results
Tasks to be performed by each party (with timetable of major milestones)
23
SCHEDULE 3
Good Data Management Practices
1.
Research data must be generated using sound scientific techniques and processes;
2.
Research data must be accurately recorded in accordance with good scientific practices by
the people conducting the research;
3.
Research data must be analysed appropriately, without bias and in accordance
with good scientific practices;
4.
Research data and the Results must be stored securely and be easily retrievable;
5.
Data trails must be kept to allow people to demonstrate easily and to reconstruct
key decisions made during the conduct of the research, presentations made about
the research and conclusions reached in respect of the research; and
6.
Each party must have the right, on not less than 30 days written notice, to visit any other
party to verify that it is complying with the above practices and procedures.
24
Dated _________________________201[ ]
(1) [INSERT NAME OF INDIAN INSTITUTE]
(2) [INSERT NAME OF UK SPONSOR COMPANY]
DRAFT
RESEARCH COLLABORATION AGREEMENT
MODEL 2A
(The UK Sponsor owns the IPR in the Results and the Indian Institute has the right to use the Results for academic
teaching and academic research)
25
THIS AGREEMENT dated ………………………………………….. 201[?] is made BETWEENcxxxv:
(1)
[INSERT NAME OF INDIAN INSTITUTE/UNIVERSITY], a not-for-profit educational institution,
having corporate powers and incorporated under the laws of India, whose administrative
offices are at [insert address] (the Institute); and
(2)
[INSERT NAME OF UK COMPANY] [LIMITED], a company registered in [England] under
numbercxxxvi [insert company number], whose registered office is at [insert address of
registered office] (the Sponsor)
1.
DEFINITIONS AND INTERPRETATION
1.1
In this Agreement the following expressions have the meaning set opposite:
Academic Publicationcxxxvii
the publication of an abstract, article or paper in a
journal or an electronic repository, or its presentation
at a conference or seminar; and in clauses 5 and 6 to
Publish and Publication are to be construed as
references to Academic Publication;
this Agreementcxxxviii
this document, including its Schedules, as amended
from time to time in accordance with clause 11.9;
Backgroundcxxxix
information, techniques, Know-how, software
and materials (regardless of the form or medium
in which they are disclosed or stored) which are
provided by one party to the other for use in the
Project (whether before or after the date of this
Agreement), except any Result;
a Business Daycxl
Monday to Friday (inclusive) except public holidays in
[insert country];
the Commencement Date
[insert the date on which the Project started or is to
start];
26
Confidential Informationcxli
each party's confidential information is: any
Background disclosed by that party to the other for use
in the Project [and identified as confidential before or
at the time of disclosure]; and any Results in which that
party owns the Intellectual Property;
External Fundingcxlii
any funding or assistance provided for the Project, or
to any party for use in the Project by any third party,
including any state or public body;
the Financial Contribution
the financial contribution to be provided by the
Sponsor set out in Schedule 1;
the
Good
Management
Data
the practices and procedures set out in Schedule 3;
Practicescxliii
Intellectual Property Rightscxliv
patents, trade marks, service marks, registered
designs, copyrights, database rights, design rights,
confidential information, applications for any of the
above, and any similar right recognised from time to
time in any jurisdiction, together with all rights of
action in relation to the infringement of any of the
above;
the Key Personnelcxlv
the Principal Investigator and any other key personnel
identified in Schedule 2;
Know-how
unpatented technical information (including
information relating to inventions, discoveries,
concepts, methodologies, models, research,
development and testing procedures, the results of
experiments, tests and trials, manufacturing processes,
techniques and specifications, quality control data,
analyses, reports and submissions) which is not in the
27
public domain;
the Location
the location(s) at which the Project will be carried out
as set out in Schedule 2;
the Principal Investigator
[insert name] or his or her successor appointed under
clause 9.2;
the Projectcxlvi
the programme of work described in Schedule 2, as
amended from time to time in accordance with clause
11.9;
the Project Period
the period described in clause 2.1;
the Results
all information, Know-how, results, inventions,
software and other Intellectual Property identified or
first reduced to practice or writing in the course of the
Project; and
[the Sponsor’s Supervisor
[insert name] or his or her successor appointed under
clause 9.2.]cxlvii
1.2
A reference to a company in this Agreement includes any company, corporation
or other body corporate, wherever and however incorporated or established, and
a reference in this Agreement to a person includes a natural person, a corporate
or unincorporated body (whether or not having separate legal personality) and
that person's personal representatives, successors and permitted assigns.
1.3
Unless the context otherwise requires, words in the singular in this Agreement include the
plural and words in the plural include the singular.
1.4
Unless the context otherwise requires, a reference in this Agreement to one gender includes
a reference to the other genders.
28
1.5
A reference in this Agreement to a statute or statutory provision is a reference to it as
amended, extended or re-enacted from time to time and includes all subordinate legislation
made from time to time under that statute or statutory provision.
1.6
A reference in this Agreement to writing or written includes faxes but not e-mail.
1.7
Any obligation on a party in this Agreement not to do something includes an obligation not
to allow that thing to be done.
1.8
Any reference in this Agreement to an English or Indian legal term for any action, remedy,
method of judicial proceeding, legal document, legal status, court, official or any legal
concept or thing will, in respect of any other jurisdiction, be deemed to include a reference
to that which most nearly approximates to the English or Indian (as the case may be) legal
term in that jurisdiction.
1.9
Any words in this Agreement following the expressions including, include, in
particular, or any similar expression, are merely illustrative and do not limit the
sense of the words, description, definition, phrase or expression preceding those
expressions.
1.10
The rule known as the ejusdem generis rule does not apply to this Agreement.
Accordingly general words introduced by the word other will not be given a
restrictive meaning because they are preceded by words indicating a particular
class of acts, matters or things.
1.11
Time will [not]cxlviii be of the essence for all times, dates and periods specified in this
Agreement.
1.12
All references in this Agreement to clauses and Schedules are, respectively to clauses of, and
Schedules to, this Agreement.
2.
THE PROJECT
2.1
The Project [will begin on]OR[began on]cxlix the Commencement Date and will continue until
[insert date] or until any later date agreed in writing between the parties, or until this
29
Agreement is terminated in accordance with clause 8 or 9. If this Agreement is entered into
after the Commencement Date, it will apply retrospectively to work carried out in relation to
the Project on or after the Commencement Date.
2.2
[The Institute]OR[Each of the parties]cl will carry out the tasks allotted to it in
Schedule 2 with reasonable skill and care, and will provide the human resources,
materials, facilities and equipment that are designated as its responsibility in
Schedule 2. [The Project will be carried on under the direction and supervision of
the Principal Investigator]OR[the Sponsor's Supervisor]. The Project will be
carried out at the Location.
2.3
Each of the parties will use all reasonable endeavours to obtain all regulatory and
ethical licences, consents and approvals necessary to allow it to carry out the
tasks allotted to it in Schedule 2.cli
2.4
Each of the parties will ensure that its employees and students (if any) involved
in the Project: observe the conditions attaching to any regulatory and ethical
licences, consents and approvals; keep complete and accurate records of all
research, development and other work carried out in connection with the Project
and of all Results and observations, signed by the people who obtained each
Result or made those observations, and countersigned by an employee of that
party who is not a member of the research team but who understands the work;
and comply with the Good Data Management Practices.
2.5
Although [the Institute]OR[each of the parties] will use reasonable endeavours to
carry out the Project in accordance with Schedule 2, [the Institute does not
undertake]OR[neither party undertakes] that any research will lead to any
particular result, nor does it guarantee a successful outcome to the Project. clii
2.6
The Institute will provide the Sponsor with [monthly]OR[quarterly]OR[annual]
reports summarising the progress of the Project and a copy of all of the
Results.cliii
2.7
Each of the parties warrants to the other that it has full power and authority under its
constitution, and has taken all necessary actions and obtained all authorisations, licences,
consents and approvals required under its constitution or by law, to allow it to enter into
this Agreement and perform its obligations under it.
3.
FINANCIAL CONTRIBUTION AND EXTERNAL FUNDING
3.1
The Institute will keep complete and accurate accounts of its expenditure on the
Project. The Sponsor will pay the Financial Contribution to the Institute in
accordance with Schedule 1 within [30]OR[60] days after receipt by the Sponsor
of [monthly]OR[quarterly] invoices. Where the Financial Contribution is being
claimed against costs and expenses incurred by the Institute, each invoice must
be accompanied by a statement certified by an authorised officer of the
Institute.cliv
30
3.2
All amounts payable to the Institute under this Agreement will be paid in [in
pounds sterling]OR[Indian rupees] and are exclusive of any value added, sales,
service or similar tax which the Sponsor will pay at the rate from time to time
prescribed by law.clv
3.3
If the Sponsor fails to make any payment due to the Institute under this
Agreement, without prejudice to any other right or remedy available to the
Institute, the Institute may charge interest (both before and after any
judgement) on the amount outstanding, on a daily basis at the rate of [eight]clvi
per cent per annum. That interest will be calculated from the date or last date for
payment to the actual date of payment, both dates inclusive, and will be
compounded [quarterly]. The Sponsor will pay that interest to the Institute on
demand.
3.4
[Except as set out in Schedule 2,] the Institute will own all equipment purchased
or constructed by it, or for it, using the Financial Contribution or any External
Funding.
3.5
If the Project receives any External Funding [each of the parties]OR[the
Institute] will comply with the terms of that External Fundingclvii.
4.
USE AND EXPLOITATION OF INTELLECTUAL PROPERTY RIGHTSclviii
4.1
This Agreement does not affect the ownership of any Intellectual Property Rights
in any Background or in any other technology, design, work, invention, software,
data, technique, Know-how, or materials which are not Results. The Intellectual
Property Rights in any Background will remain the property of the party which
contributes them to the Project (or its licensors). clix No licence to use any
Intellectual Property Rights is granted or implied by this Agreement except the
rights expressly granted in this Agreement.
4.2
Each Party grants the other party a royalty-free, non-exclusive licence to use its
Background for the purpose of carrying out the Project, but for no other
purposeclx. Neither party may grant any sub-licence to use the other party’s
Background.
4.3
The Sponsor will own the Intellectual Property in the Results and may take such steps as it
may decide from time to time, and at its own expense, to registerclxi and maintain any
protection for that Intellectual Property, including filing and prosecuting patent applications
for any of the Results.clxii
4.4
Where any third party such as a student or contractor is involved in the Project, the Institute
or the party engaging that contractor (as the case may be) will ensure that that student and
that contractor assign any Intellectual Property Rights which they may have in the Results in
order to be able to give effect to the provisions of this clause 4clxiii. The Institute will ensure
31
that its employees involved in the creation of the Results give the Sponsor such assistance as
the Sponsor may reasonably request in connection with the registration and protection of
the Intellectual Property Rights in the Results, including filing and prosecuting patent
applications for any Result, and taking any action in respect of any alleged or actual
infringement of those Intellectual Property Rights.
4.5
To the extent that any Intellectual Property Rights in the Results are capable of prospective
assignment, the Institute now assignsclxiv those Intellectual Property Rights to the Sponsor,
subject to clause 4.6, [in perpetuity]clxv [and worldwide]clxvi; and to the extent any Intellectual
Property Rights in the Results cannot prospectively be assigned, the Institute will assign
those Intellectual Property Rights to the Sponsor, subject to clause 4.6, [in perpetuity] [and
worldwide] as and when they are created, at the request of the Sponsor.
4.6
The Sponsor will provide the Institute with such information as the Institute may reasonably
request from time to time after the expiry of two years from the completion of the Project
to demonstrate that the Sponsor is exploiting or is taking reasonable steps towards
exploiting the Results. If more than two years have passed from the completion of the
Project and the Sponsor does not demonstrate that it is exploiting any of the Results or is
taking reasonable steps towards exploiting them, the Sponsor will, if requested to do so by
the Institute, reassign the Intellectual Property Rights in those Results to the Institute. The
Sponsor will notify the Institute if the Sponsor decides not to proceed with the exploitation
of any of the Results and will, if requested to do so by the Institute, reassign the Intellectual
Property in those Results to the Institute.clxvii
4.7
[The Institute]OR[Each of the parties] will notify the [Sponsor]OR[other] promptly after
identifying any Result that [the Institute]OR[it] believes is patentable, and will supply the
[Sponsor]OR[other] with copies of that Result. The Institute will notify other Results to the
Sponsor in the reports provided under clause 2.4.clxviii
4.8
The Sponsor grants the Institute a royalty-free, non-exclusive licence to use the Results for
the purpose of carrying out the Project but, subject to clause 4.9, for no other purpose. The
Institute may not grant any sub-licence to use the Results.
4.9
For the avoidance of doubt, the Institute and each employee and student of the Institute will
have the irrevocable, royalty-free right to use the Results for the purposes of academic
teaching and academic research [, including research projects which are sponsored by any
third party]. The rights in this clause are subject to the rules on Academic Publication in
clause 5.
32
5.
ACADEMIC USE AND PUBLICATIONclxix
5.1
Any employee or student of the Institute (whether or not involved in the Project)
may, provided details of the intention to publish have been given to the Sponsor
and no Confidentiality Notice under clause 5.2 has been given:
5.1.1
discuss work undertaken as part of the Project in Institute seminars, tutorials and
lectures; and
5.1.2
Publish any Background of the Sponsor (unless it is the Sponsor’s Confidential
Information) or any of the Results.
5.2
The Institute will submit to the Sponsor, in writing, details of any Results and any
of the Sponsor's Background which any employee or student of the Institute
intends to Publish, at least [30]OR[60] days before the date of the proposed
submission for Publication. The Sponsor may, by giving written notice to the
Institute (a Confidentiality Notice): require the Institute to delay the proposed
Publication for a maximum of [insert number] month(s) after receipt of the
Confidentiality Notice if, in the Sponsor's reasonable opinion, that delay is
necessary in order to seek patent or similar protection for any of the Sponsor's
Background or any Results which are to be Published; or prevent the Publication
of any of the Sponsor's Background which is Confidential Information. The
Sponsor must give that Confidentiality Notice within [15]OR[30] days after the
Sponsor receives details of the proposed Publication. If the Institute does not
receive a Confidentiality Notice within that period, its employee or student may
proceed with the proposed Publication, provided that, whether or not it a
Confidentiality Notice has been given, any of the Sponsor's Background which is
Confidential Information may not be published.
6.
CONFIDENTIALITY
6.1
Subject to clause 5, neither party will[, either during the Project Period or for
[3][5][7][10] years] after the end of the Project Period,]clxx disclose to any third
party, nor use for any purpose except carrying out the Project, any of the other
party's Confidential Information.
6.2
Neither party will be in breach of any obligation to keep any Background, Results
or other information confidential or not to disclose it to any other party to the
extent that itclxxi:
6.2.1 is known to the party making the disclosure before its receipt from the
other party, and not already subject to any obligation of confidentiality to
the other party;
33
6.2.2 is or becomes publicly known without any breach of this Agreement or any
other undertaking to keep it confidential;
6.2.3 has been obtained by the party making the disclosure from a third party in
circumstances where the party making the disclosure has no reason to
believe that there has been a breach of an obligation of confidentiality
owed to the other party;
6.2.4
has been independently developed by the party making the disclosure;
6.2.5
is disclosed pursuant to the requirement of any law or regulationclxxii and the party
required to make that disclosure has informed the other, within a reasonable time
after being required to make the disclosure, of the requirement to make the
disclosure and the information required to be disclosed; or
6.2.6 is approved for release in writing by an authorised representative of the
other party.
6.3
The Institute will not be in breach of any obligation to keep any of the Sponsor's Background
which is not Confidential Information, or any Results owned by or licensed to the Sponsor, or
other information, confidential or not to disclose them to any third party, by Publishing any
of the same if the Institute has followed the procedure in clause 5.2 and has received no
Confidentiality Notice within the period stated in that clause.
6.4
Neither the Institute nor the Sponsor will use the other’s name or logo in any
press release or product advertising, or for any other promotional purpose,
without first obtaining the other's written consent[; except that the Institute may
identify the sums received from the Sponsor in the Institute’s Annual Report and
similar publications].
7.
LIMITATION OF LIABILITY
7.1
The Institute warrants that there are, at the date of this Agreement, no laws,
regulations or other controls which restrict or prohibit the export of the Results to
the Sponsor.clxxiii
7.2
Each of the parties warrants to the other that, to the best of its knowledge and
belief (having made reasonable enquiry of those of its employees involved in the
Project or likely to have relevant knowledge[, and in the case of the Institute any
student involved in the Project], but not having made any search of any public
register) any advice or information given by it or any of its employees [or
students] who work on the Project, or the content or use of any Results,
34
7.2
Background or materials, works or information provided in connection with the
Project, will not constitute or result in any infringement of third-party rights.
OR
Neither of the parties makes any representation or gives any warranty to the
other that any advice or information given by it or any of its employees [or
students] who work on the Project, or the content or use of any Results,
Background or materials, works or information provided in connection with the
Project, will not constitute or result in any infringement of third-party rights.clxxiv
7.3
Except under the limited warranty in clause[s] 7.1 [and 7.2] and the indemnities
in clauses 7.4 and clause 7.5, and subject to clause 7.8, neither party accepts
any liability or responsibility for any use which may be made by the other party of
any Results, nor for any reliance which may be placed by that other party on any
Results, nor for advice or information given in connection with any Results. clxxv
7.4
The Sponsor will indemnify the Institute, [the Principal Investigator] and every
[other] employee [and student] of the Institute (the Indemnified Parties), and
keep them fully and effectively indemnified, against each and every claim made
against any of the Indemnified Parties as a result of the Sponsor's use of any of
the Results or any materials, works or information received from them pursuant
to the terms of this Agreement, provided that the Indemnified Party must:
7.4.1
promptly notify the Sponsor of details of the claim;
7.4.2
not make any admission in relation to the claim;
7.4.3
allow the Sponsor to have the conduct of the defence or settlement of the claim;
7.4.4
give the Sponsor all reasonable assistance (at the Sponsor’s expense) in dealing with
the claim; and
7.4.5
take reasonable steps to mitigate its or his losses.
The indemnity in this clause 7.4 will not apply to the extent that the claim arises as a result
of the Indemnified Party's negligence, its breach of clause 6, its deliberate breach of this
Agreement or its knowing infringement of any third party’s Intellectual Property.clxxvi
7.5
Each of the parties (the Indemnifying Party) will indemnify the other party,
and keep the other party fully and effectively indemnified, against each and every
claim made against the other party to the effect that or as a result of any
invention, material, work or information (including any Results or Background)
35
supplied by the Indemnifying Party pursuant to the terms of this Agreement is an
infringement of the Intellectual Property Rights of any third party, provided that
the other must:
7.5.1
promptly notify the Indemnifying Party of details of the claim;
7.5.2
not make any admission in relation to the claim;
7.5.3
allow the Indemnifying Party to have the conduct of the defence or settlement of
the claim; and
7.5.4
give the Indemnifying Party all reasonable assistance (at the Indemnifying Party’s
expense) in dealing with the claim.
The indemnity in this clause 7.5 will not apply to the extent that the claim arises as a result
of the other party’s negligence, its breach of clause 6 or its deliberate breach of this
Agreement.
7.6
Subject to clause 7.8, and except under the indemnities in clause 7.4 and clause
7.5, the liability of either party to the other for any breach of this Agreement, any
negligence or arising in any other way out of the subject matter of this
Agreement, the Project and the Results, will not extend to any indirect damages
or losses, or to any loss of profits, loss of revenue, loss of data, loss of contracts
or opportunity (in each case whether direct or indirect), even if the party bringing
the claim has advised the other of the possibility of those losses, or if they were
within the other party's contemplation.clxxvii
7.7
Subject to clause 7.8, [and except under the indemnity in clause 7.4 and the
indemnity in clause 7.5,] the aggregate liability of each party to the other for all
and any breaches of this Agreement, any negligence or arising in any other way
out of the subject matter of this Agreement, the Project and the Results, will not
exceed in total [the monies actually paid by the Sponsor under this
Agreement].clxxviii
7.8
Nothing in this Agreement limits or excludes either party’s liability for:
7.8.1 death or personal injury caused by negligence;
36
7.8.2 any fraud or for any sort of liability which, by law, cannot be limited or
excluded; or
7.8.3
any loss or damage caused by a deliberate breach of this Agreement or a breach of
clause 6 (Confidentiality).
7.9
The express undertakings and warranties given by the parties in this Agreement
are in lieu of all other warranties, conditions, terms, undertakings and obligations,
whether express or implied by statute, common law, custom, trade usage, course
of dealing or in any other way. All of these are excluded to the fullest extent
permitted by law.clxxix
7.10
[Any assignment made under or pursuant to clause 4.5 is made or will be made
with full title guarantee.]OR[The Institute warrants to the Sponsor that, in
relation to any assignment made under or pursuant to clause 4.5:
7.10.1 the Institute has the right to dispose of the Intellectual Property Rights in the Results
and that the Institution will, at its own cost, do all that it reasonably can to give to
the Sponsor the title which the Institute purports to give to the Sponsor; and
7.10.1 that the Intellectual Property Rights in the Results are free from all charges and
encumbrances and rights of any third party (except those which the Institution is
unaware of or could not reasonably be aware of).]clxxx
8.
FORCE MAJEURE
If the performance by either party of any of its obligations under this Agreement (except a payment
obligation) is delayed or prevented by circumstances beyond its reasonable control, that party will
not be in breach of this Agreement because of that delay in performance. However, if the delay in
performance is more than [3]OR[6] months, the other party may terminate this Agreement with
immediate effect by giving written notice.
9.
TERMINATION
9.1
Either party may terminate this Agreement with immediate effect by giving notice
to the other party if:
9.1.1
the other party is in breach of any provision of this Agreement and (if it is capable of
remedy) the breach has not been remedied within [30]OR[60]OR[90] days after
receipt of written notice specifying the breach and requiring its remedy; or
37
9.1.2 the other party becomes insolvent, or if an order is made or a resolution is
passed for its winding up (except voluntarily for the purpose of solvent
amalgamation or reconstruction), or if an administrator, administrative
receiver or receiver is appointed over the whole or any part of the other
party's assets, or if the other party makes any arrangement with its
creditors.clxxxi
[9.2
Each of the parties will notify the other promptly if at any time any of the Key
Personnel appointed by that party is unable or unwilling to continue to be
involved in the Project. Within [3]OR[6] months after the date of that notice, the
party who originally appointed that member of the Key Personnel will nominate a
successor. The other party will not unreasonably refuse to accept the nominated
successor, but if the successor is not acceptable to the other party on reasonable
grounds, or if the appointor cannot find a successor, either party may terminate
this Agreement by giving the other not less than [3] months' notice.]clxxxii
9.5
Clauses 1, 4 (except clauses 4.6 [and 4.7] if the Institute terminates this Agreement under
clause 9.1), 5, 6, 7, 8, 9.3, 9.4, 10 and 11 will survive the expiry of the Project Period or the
termination of this Agreement for any reason and will continue in full force and effect
indefinitely.clxxxiii
9.4
On the termination of this Agreement, the Sponsor will pay the Institute for all
work done prior to termination. If the Sponsor has paid any of the Financial
Contribution in advance and the whole of that contribution has not, by the end of
the Project Period or the termination of this Agreement, been used by the
Institute for the purposes for which that Financial Contribution was provided, the
Institute will return to the Sponsor the unused portion of that contribution.
10.
ANTI-BRIBERYclxxxiv
10.1
The Institute will:
10.1.1 comply with all applicable laws, statutes, regulations and codes relating to antibribery and anti-corruption including the UK Bribery Act 2010 and the Indian
Prevention of Corruption Act 1988;
10.1.2 not engage in any activity, practice or conduct which would constitute an offence
under sections 1, 2 or 6 of the UK Bribery Act 2010 if such activity, practice or
conduct had been carried out in the UK or contravene section 2 or sections 7 to 16 of
the Indian Prevention of Corruption Act 1988 if such activity, practice or conduct had
been carried out in India;
38
10.1.3 comply with the Sponsor’s policies relating to Anti-bribery and Anti-corruption
provided by the Sponsor to the Institute from time to time;
10.1.4 have and maintain in place throughout the term of this Agreement its own policies
and procedures, including adequate procedures under the UK Bribery Act 2010 and
the Indian Prevention of Corruption Act 1988 and any other applicable law, to
ensure compliance with clauses 10.1.1, 10.1.2 and 10.1.3 and will enforce them
where appropriate;
10.1.5 promptly report to the Sponsor any request or demand for any undue financial or
other advantage of any kind received by the Institute in connection with the
performance of this agreement; and
10.1.6 within six months after the date of this Agreement, and annually afterwards, certify
to the Sponsor in writing signed by an officer of the Institute, compliance with this
clause 10 by the Institute and by all persons associated with the Institute. The
Institute will provide such supporting evidence of compliance as the Sponsor may
reasonably request.
10.2
The Institute will ensure that any person associated with the Institute who is performing
services or providing goods in connection with this Agreement does so only on the basis of a
written contract which imposes on and secures from that person terms equivalent to those
imposed on the Institute in this clause 10. The Institute will be responsible for the
observance and performance by those persons of those equivalent terms, and will be
directly liable to the Sponsor for any breach by those persons of any of those terms.
10.3
Breach of this clause 10 will be deemed a breach which is not capable of remedy for the
purposes of clause 9.1.1.
10.4
For the purpose of this clause 10, the meaning of adequate procedures and whether a
person is associated with another person will be determined in accordance with section 7(2)
of the UK Bribery Act 2010 (and any guidance issued under section 9 of that Act), sections
6(5) and 6(6) of that Act and section 8 of that Act respectively and the corresponding
sections under the Indian Prevention of Corruption Act 1988. For the purposes of this clause
10, a person associated with the Institute includes, but is not limited to, any employee,
officer, student and subcontractor of the Institute.
39
11.
GENERAL
11.1
Noticesclxxxv: Any notice to be given under this Agreement must be in English and in writing,
may be delivered to the other party or parties by any of the methods set out in the left hand
column below, and will be deemed to be received on the corresponding day set out in the
right hand column:
Method of service
Deemed day of receipt
By hand or courier
the day of delivery
By pre-paid airmail first class post
the fifth Business Day after posting
By recorded delivery post
the third Business Day after posting
By fax (provided the sender’s fax
machine confirms complete and errorfree transmission of that notice to the
correct fax number)
the next Business Day after sending or, if sent
before 16.00 (sender’s local time) on the
Business Day it was sent
The parties' respective representatives for the receipt of notices are, until
changed by notice given in accordance with this clause 11.1, as follows:
For the Institute:
For the Sponsor:
Name:
Name:
Address:
Address:
Fax number:
Fax number:
40
11.2
Headings: The headings in this Agreement are for ease of reference only; they do not affect
its construction or interpretation.
11.3
Assignmentclxxxvi: Neither party may assign or transfer this Agreement as a whole, or any of
its rights or obligations under it, without first obtaining the written consent of the other
party. That consent may not be unreasonably withheld or delayed.
11.4
Illegal/unenforceable provisions: If the whole or any part of any provision of this
Agreement is void or unenforceable in any jurisdiction, the other provisions of this
Agreement, and the rest of the void or unenforceable provision, will continue in force in that
jurisdiction, and the validity and enforceability of that provision in any other jurisdiction will
not be affected.
11.5
Waiver of rights: If a party fails to enforce, or delays in enforcing, an obligation of the other
party, or fails to exercise, or delays in exercising, a right under this Agreement, that failure or
delay will not affect its right to enforce that obligation or constitute a waiver of that right.
Any waiver of any provision of this Agreement will not, unless expressly stated to the
contrary, constitute a waiver of that provision on a future occasion.
11.6
No agency: Nothing in this Agreement creates, implies or evidences any partnership or joint
venture between the parties, or the relationship between them of principal and agent.
Neither party has any authority to make any representation or commitment, or to incur any
liability, on behalf of the other.
11.7
Entire Agreementclxxxvii: This Agreement constitutes the entire agreement between the
parties relating to its subject matter. Each party acknowledges that it has not entered into
this Agreement on the basis of any warranty, representation, statement, agreement or
undertaking except those expressly set out in this Agreement. Each party waives any claim
for breach of this Agreement, or any right to rescind this Agreement in respect of, any
representation which is not an express provision of this Agreement. However, this clause
11.7 does not exclude any liability which either party may have to the other (or any right
which either party may have to rescind this Agreement) in respect of any fraudulent
misrepresentation or fraudulent concealment prior to the execution of this Agreement.
11.8
Formalities: Each party will take any action and execute any document reasonably required
by the other party to give effect to any of its rights under this Agreement, or to enable their
41
registration in any relevant territory provided the requesting party pays the other party’s
reasonable expenses.
11.9
Amendments: No variation or amendment of this Agreement will be effective unless it is
made in writing and signed by each party's representative.
11.10 Third parties: No one except a party to this Agreement has any right to prevent the
amendment of this Agreement or its termination, and no one except a party to this
Agreement may enforce any benefit conferred by this Agreement, unless this Agreement
expressly provides otherwise.
11.11 Governing Lawclxxxviii: This Agreement and any dispute or claim arising out of or
in connection with it or its subject matter or formation (including non-contractual
disputes or claims) are governed by, and are to be construed in accordance with,
the laws of [England and Wales]OR[India].clxxxix cxc
11.12 Jurisdictioncxci: Subject to clause 11.13, any dispute which has arisen or may
arise out of or in connection with this Agreement must be referred to, and settled
by, arbitration.cxcii That arbitration is to take place at [insert location] or any other
location which the parties may agree in writing. The arbitration tribunal will
consist of three arbitrators, each of the parties nominating one arbitrator, who
will then jointly nominate a third arbitrator to preside over the arbitration. The
language of the arbitration will be English and all of the arbitrators must be fluent
in English. If the place of the arbitration is outside India:
11.12.1 The decision of the tribunal will be final, binding and incontestable, and
may be enforced as a decree of a court, or used as a basis for judgment
in India or elsewhere. In this regard, the parties agree that the New York
Convention (except for Articles V(1)(e) and VI) will apply to awards made
pursuant to this Agreement. Each of the parties waives the provisions of
Articles V(1)(e) and VI, so that there will be no appeal to any court from
the decision of the arbitrators; and
11.12.2 [Nothing contained in Part I of the Indian Arbitration and Conciliation Act
1996 will apply to any arbitration (whether commenced or to be
commenced) under this Agreement.]OR[The parties agree that the
operation of Part I of the Indian Arbitration and Conciliation Act 1996 is
specifically excluded and will not apply to any arbitration (whether
commenced or to be commenced) under this Agreement, except section
9 (interim measures by court) of Part I of the Act.]
The courts and tribunals at [insert location], India, will have exclusive jurisdiction in relation
to any dispute relating to:
11.12.3 any arbitration proceedings;
42
11.12.4 any challenge to the validity or applicability of this clause 11.11 to any dispute; and
11.12.5 any challenge to any arbitration award and its enforcement.
OR
Subject to clause 11.13, the Courts of England and Wales will have exclusive jurisdiction to
settle any dispute or claim arising out of or in connection with this Agreement or its subject
matter or formation (including non-contractual disputes or claims) except that either party
may bring proceedings in relation to the protection of its Intellectual Property Rights or
Confidential Information in any jurisdiction. The Institute irrevocably appoints [insert name]
of [insert address in England] [insert fax number] as the Institute’s agent to receive on its
behalf in England or Wales service of any legal proceedings. That service will be deemed
completed on delivery to that agent (whether or not it is forwarded to and received by the
Institute) and will be valid until such time as the Institute has received prior written notice
from the Institute to the effect that that agent has ceased to act as its agent. If, for any
reason, that agent ceases to be able to act as agent or no longer has an address in England,
the Institute will immediately appoint a substitute agent acceptable to the Sponsor and will
provide the new agent's name, address and fax number within England to the Sponsorcxciii.
11.13 Proceedings relating to IPR or Confidential Informationcxciv: Nothing in this Agreement will
prevent either party from bringing an action in any jurisdiction in order to protect its
Intellectual Property Rights or Confidential Information.
11.14 Language: This Agreement is drafted in the English language. If this Agreement is translated
into any other language, the English language text will prevail. All other documents provided
under or in connection with this Agreement must be in the English language, or
accompanied by a certified English translation. If such document is translated into any other
language, the English language text will prevail [unless such document is a constitutional,
statutory or other official document].
SIGNEDcxcv for and on behalf of the
Institute:
SIGNED for and on behalf of the Sponsor:
43
Name
Name
Position
Position
Signature
Signature
cxcvi
[Read and understood by the Principal
Investigator
Read and understood by the
Sponsor’s Supervisor
……………………………………………………………..
…………………………………………………………….
Signature
Signature
……………………………………………………………..
……………………………………………………………
Date
Date]
44
SCHEDULE 1
The Financial Contributioncxcvii
This Schedule should set out complete details of the Financial Contribution, e.g. the types of
expenditure for which the Sponsor will reimburse the Institute (see below for an example), the
maximum amount which the Sponsor will pay, any milestones to be met and any conditions
attaching to payment.
The parties may agree that the Sponsor will cover increases in salary, pension and social security
contributions. In that case this Schedule should reflect this.
Year One
Year Two
Salary for [name of Appointee] at [x] including
pension and social security
£
£
Overheads (*% on salary)
£
£
Consumables
£
£
Equipment [itemise]
£
£
Total
£
£
All amounts in this Schedule exclude any sales, service, value added or similar tax.
The Institute's Finance Officer is: [insert details]
All payments of the Financial Contribution will be made by [bank transfer to: [insert details]]
45
SCHEDULE 2
The Projectcxcviii
Scope of the Project
Aims of the Project
Any Key Personnel to be provided by the Institute (including the Principal Investigator)
Any Key Personnel to be provided by the Sponsor (including the Sponsor's
Supervisor (if any))
Numbers of other full and part time staff to be provided by each party
Students participating in the Project
Project Management
who is to act as overall project manager
responsibilities of project manager
project meetings (frequency, location and representation of each party)
provision of information and reports to any body providing External Funding
claiming External Funding
Facilities to be provided by each party
46
Equipment to be provided by each party (and whether, if provided for use by the other, it is
donated to the other or is on loan until the end of the Project).
Where the Project is to be carried out
Any Background (including materials) which the Sponsor must provide
Any Background (including materials) which the Institute must provide
Any Background (including materials) which is to be obtained by either party from a third party
Whether all Background is to be kept Confidential or which Background is to be kept confidential,
for instance:
All of the Sponsor's Background [except insert details] is Confidential Information.
OR
Background contained in documents which are marked ‘Confidential’ is Confidential Information.
Anticipated outputs or Results
Tasks to be performed by each party (with timetable of major milestones)
47
SCHEDULE 3
Good Data Management Practices
1.
Research data must be generated using sound scientific techniques and processes;
2.
Research data must be accurately recorded in accordance with good scientific practices by
the people conducting the research;
3.
Research data must be analysed appropriately, without bias and in accordance
with good scientific practices;
4.
Research data and the Results must be stored securely and be easily retrievable;
5.
Data trails must be kept to allow people to demonstrate easily and to reconstruct
key decisions made during the conduct of the research, presentations made about
the research and conclusions reached in respect of the research; and
6.
Each party must have the right, on not less than 30 days written notice, to visit any other
party to verify that it is complying with the above practices and procedures.
48
Dated _________________________201[ ]
(1) [INSERT NAME OF UK UNIVERSITY]
(2) [INSERT NAME OF INDIAN SPONSOR COMPANY]
DRAFT
RESEARCH COLLABORATION AGREEMENT
MODEL 2B
(The Indian Sponsor owns the IPR in the Results and the UK University has the right to use the Results for academic
teaching and academic research)
49
THIS AGREEMENT dated ………………………………………….. 201[?] is made BETWEENcxcix:
(1)
[INSERT NAME OF UK UNIVERSITY], a not-for-profit educational institution, having
corporate powers and incorporated under the laws of [England], whose administrative
offices are at [insert address] (the University); and
(2)
[INSERT NAME OF INDIAN COMPANY] [LIMITED], a company registered in [India] with
corporate identity numbercc [insert corporate identity number], whose registered office is at
[insert address of registered office] (the Sponsor)
1.
DEFINITIONS AND INTERPRETATION
1.1
In this Agreement the following expressions have the meaning set opposite:
Academic Publicationcci
the publication of an abstract, article or paper in a
journal or an electronic repository, or its presentation
at a conference or seminar; and in clauses 5 and 6 to
Publish and Publication are to be construed as
references to Academic Publication;
this Agreementccii
this document, including its Schedules, as amended
from time to time in accordance with clause 11.9;
Backgroundcciii
information, techniques, Know-how, software
and materials (regardless of the form or medium
in which they are disclosed or stored) which are
provided by one party to the other for use in the
Project (whether before or after the date of this
Agreement), except any Result;
a Business Daycciv
Monday to Friday (inclusive) except public holidays in
[insert country];
the Commencement Date
[insert the date on which the Project started or is to
50
start];
Confidential Informationccv
each party's confidential information is: any
Background disclosed by that party to the other for use
in the Project [and identified as confidential before or
at the time of disclosure]; and any Results in which that
party owns the Intellectual Property;
External Fundingccvi
any funding or assistance provided for the Project, or
to any party for use in the Project by any third party,
including any state or public body;
the Financial Contribution
the financial contribution to be provided by the
Sponsor set out in Schedule 1;
the
Good
Management
Data
the practices and procedures set out in Schedule 3;
Practicesccvii
Intellectual Property Rightsccviii
patents, trade marks, service marks, registered
designs, copyrights, database rights, design rights,
confidential information, applications for any of the
above, and any similar right recognised from time to
time in any jurisdiction, together with all rights of
action in relation to the infringement of any of the
above;
the Key Personnelccix
the Principal Investigator and any other key personnel
identified in Schedule 2;
Know-how
unpatented technical information (including
information relating to inventions, discoveries,
concepts, methodologies, models, research,
development and testing procedures, the results of
experiments, tests and trials, manufacturing processes,
techniques and specifications, quality control data,
51
analyses, reports and submissions) which is not in the
public domain;
the Location
the location(s) at which the Project will be carried out
as set out in Schedule 2;
the Principal Investigator
[insert name] or his or her successor appointed under
clause 9.2;
the Projectccx
the programme of work described in Schedule 2, as
amended from time to time in accordance with clause
11.9;
the Project Period
the period described in clause 2.1;
the Results
all information, Know-how, results, inventions,
software and other Intellectual Property identified or
first reduced to practice or writing in the course of the
Project; and
[the Sponsor’s Supervisor
[insert name] or his or her successor appointed under
clause 9.2.]ccxi
1.2
A reference to a company in this Agreement includes any company, corporation
or other body corporate, wherever and however incorporated or established, and
a reference in this Agreement to a person includes a natural person, a corporate
or unincorporated body (whether or not having separate legal personality) and
that person's personal representatives, successors and permitted assigns.
1.3
Unless the context otherwise requires, words in the singular in this Agreement include the
plural and words in the plural include the singular.
52
1.4
Unless the context otherwise requires, a reference in this Agreement to one gender includes
a reference to the other genders.
1.5
A reference in this Agreement to a statute or statutory provision is a reference to it as
amended, extended or re-enacted from time to time and includes all subordinate legislation
made from time to time under that statute or statutory provision.
1.6
A reference in this Agreement to writing or written includes faxes but not e-mail.
1.7
Any obligation on a party in this Agreement not to do something includes an obligation not
to allow that thing to be done.
1.8
Any reference in this Agreement to an English or Indian legal term for any action, remedy,
method of judicial proceeding, legal document, legal status, court, official or any legal
concept or thing will, in respect of any other jurisdiction, be deemed to include a reference
to that which most nearly approximates to the English or Indian (as the case may be) legal
term in that jurisdiction.
1.9
Any words in this Agreement following the expressions including, include, in
particular, or any similar expression, are merely illustrative and do not limit the
sense of the words, description, definition, phrase or expression preceding those
expressions.
1.10
The rule known as the ejusdem generis rule does not apply to this Agreement.
Accordingly general words introduced by the word other will not be given a
restrictive meaning because they are preceded by words indicating a particular
class of acts, matters or things.
1.11
Time will [not]ccxii be of the essence for all times, dates and periods specified in this
Agreement.
1.12
All references in this Agreement to clauses and Schedules are, respectively to clauses of, and
Schedules to, this Agreement.
2.
THE PROJECT
53
2.1
The Project [will begin on]OR[began on]ccxiii the Commencement Date and will continue until
[insert date] or until any later date agreed in writing between the parties, or until this
Agreement is terminated in accordance with clause 8 or 9. If this Agreement is entered into
after the Commencement Date, it will apply retrospectively to work carried out in relation to
the Project on or after the Commencement Date.
2.2
[The University]OR[Each of the parties]ccxiv will carry out the tasks allotted to it in
Schedule 2 with reasonable skill and care, and will provide the human resources,
materials, facilities and equipment that are designated as its responsibility in
Schedule 2. [The Project will be carried on under the direction and supervision of
the Principal Investigator]OR[the Sponsor's Supervisor]. The Project will be
carried out at the Location.
2.3
Each of the parties will use all reasonable endeavours to obtain all regulatory and
ethical licences, consents and approvals necessary to allow it to carry out the
tasks allotted to it in Schedule 2.ccxv
2.4
Each of the parties will ensure that its employees and students (if any) involved
in the Project: observe the conditions attaching to any regulatory and ethical
licences, consents and approvals; keep complete and accurate records of all
research, development and other work carried out in connection with the Project
and of all Results and observations, signed by the people who obtained each
Result or made those observations, and countersigned by an employee of that
party who is not a member of the research team but who understands the work;
and comply with the Good Data Management Practices.
2.5
Although [the University]OR[each of the parties] will use reasonable endeavours
to carry out the Project in accordance with Schedule 2, [the University does not
undertake]OR[neither party undertakes] that any research will lead to any
particular result, nor does it guarantee a successful outcome to the Project. ccxvi
2.6
The University will provide the Sponsor with [monthly]OR[quarterly]OR[annual]
reports summarising the progress of the Project and a copy of all of the
Results.ccxvii
2.7
Each of the parties warrants to the other that it has full power and authority under its
constitution, and has taken all necessary actions and obtained all authorisations, licences,
consents and approvals required under its constitution or by law, to allow it to enter into
this Agreement and perform its obligations under it.
3.
FINANCIAL CONTRIBUTION AND EXTERNAL FUNDING
3.1
The University will keep complete and accurate accounts of its expenditure on the
Project. The Sponsor will pay the Financial Contribution to the University in
accordance with Schedule 1 within [30]OR[60] days after receipt by the Sponsor
of [monthly]OR[quarterly] invoices. Where the Financial Contribution is being
54
claimed against costs and expenses incurred by the University, each invoice must
be accompanied by a statement certified by an authorised officer of the
University.ccxviii
3.2
All amounts payable to the University under this Agreement will be paid in [in
pounds sterling]OR[Indian rupees] and are exclusive of any value added tax or
similar tax which the Sponsor will pay at the rate from time to time prescribed by
law.ccxix
3.3
If the Sponsor fails to make any payment due to the University under this
Agreement, without prejudice to any other right or remedy available to the
University, the University may charge interest (both before and after any
judgement) on the amount outstanding, on a daily basis at the rate of [eight]ccxx
per cent per annum. That interest will be calculated from the date or last date for
payment to the actual date of payment, both dates inclusive, and will be
compounded [quarterly]. The Sponsor will pay that interest to the University on
demand.
3.4
[Except as set out in Schedule 2,] the University will own all equipment
purchased or constructed by it, or for it, using the Financial Contribution or any
External Funding.
3.5
If the Project receives any External Funding [each of the parties]OR[the
University] will comply with the terms of that External Fundingccxxi.
4.
USE AND EXPLOITATION OF INTELLECTUAL PROPERTY RIGHTSccxxii
4.1
This Agreement does not affect the ownership of any Intellectual Property Rights
in any Background or in any other technology, design, work, invention, software,
data, technique, Know-how, or materials which are not Results. The Intellectual
Property Rights in any Background will remain the property of the party which
contributes them to the Project (or its licensors). ccxxiii No licence to use any
Intellectual Property Rights is granted or implied by this Agreement except the
rights expressly granted in this Agreement.
4.2
Each Party grants the other party a royalty-free, non-exclusive licence to use its
Background for the purpose of carrying out the Project, but for no other
purposeccxxiv. Neither party may grant any sub-licence to use the other party's
Background.
4.3
The Sponsor will own the Intellectual Property in the Results and may take such steps as it
may decide from time to time, and at its own expense, to registerccxxv and maintain any
protection for that Intellectual Property, including filing and prosecuting patent applications
for any of the Results.ccxxvi
55
4.4
Where any third party such as a student or contractor is involved in the Project, the
University or the party engaging that contractor (as the case may be) will ensure that that
student and that contractor assign any Intellectual Property Rights which they may have in
the Results in order to be able to give effect to the provisions of this clause 4ccxxvii. The
University will ensure that its employees involved in the creation of the Results give the
Sponsor such assistance as the Sponsor may reasonably request in connection with the
registration and protection of the Intellectual Property Rights in the Results, including filing
and prosecuting patent applications for any Result, and taking any action in respect of any
alleged or actual infringement of those Intellectual Property Rights.
4.5
To the extent that any Intellectual Property Rights in the Results are capable of prospective
assignment, the University now assignsccxxviii those Intellectual Property Rights to the
Sponsor, subject to clause 4.6, [in perpetuity]ccxxix [and worldwide]ccxxx; and to the extent any
Intellectual Property Rights in the Results cannot prospectively be assigned, the University
will assign those Intellectual Property Rights to the Sponsor, subject to clause 4.6, [in
perpetuity] [and worldwide] as and when they are created, at the request of the Sponsor.
4.6
The Sponsor will provide the University with such information as the University may
reasonably request from time to time after the expiry of two years from the completion of
the Project to demonstrate that the Sponsor is exploiting or is taking reasonable steps
towards exploiting the Results. If more than two years have passed from the completion of
the Project and the Sponsor does not demonstrate that it is exploiting any of the Results or
is taking reasonable steps towards exploiting them, the Sponsor will, if requested to do so by
the University, reassign the Intellectual Property Rights in those Results to the University.
The Sponsor will notify the University if the Sponsor decides not to proceed with the
exploitation of any of the Results and will, if requested to do so by the University, reassign
the Intellectual Property in those Results to the University.ccxxxi
4.7
[The University]OR[Each of the parties] will notify the [Sponsor]OR[other] promptly after
identifying any Result that [the University]OR[it] believes is patentable, and will supply the
[Sponsor]OR[other] with copies of that Result. The University will notify other Results to the
Sponsor in the reports provided under clause 2.4.ccxxxii
4.8
The Sponsor grants the University a royalty-free, non-exclusive licence to use the Results for
the purpose of carrying out the Project but, subject to clause 4.9, for no other purpose. The
University may not grant any sub-licence to use the Results.
4.9
For the avoidance of doubt, the University and each employee and student of the University
will have the irrevocable, royalty-free right to use the Results for the purposes of academic
56
teaching and academic research [, including research projects which are sponsored by any
third party]. The rights in this clause are subject to the rules on Academic Publication in
clause 5.
5.
ACADEMIC USE AND PUBLICATIONccxxxiii
5.1
Any employee or student of the University (whether or not involved in the
Project) may, provided details of the intention to publish have been given to the
Sponsor and no Confidentiality Notice under clause 5.2 has been given:
5.1.1
discuss work undertaken as part of the Project in University seminars, tutorials and
lectures; and
5.1.2
Publish any Background of the Sponsor (unless it is the Sponsor’s Confidential
Information) or any of the Results.
5.2
The University will submit to the Sponsor, in writing, details of any Results and
any of the Sponsor's Background which any employee or student of the University
intends to Publish, at least [30]OR[60] days before the date of the proposed
submission for Publication. The Sponsor may, by giving written notice to the
University (a Confidentiality Notice): require the University to delay the
proposed Publication for a maximum of [insert number] month(s) after receipt of
the Confidentiality Notice if, in the Sponsor's reasonable opinion, that delay is
necessary in order to seek patent or similar protection for any of the Sponsor's
Background or any Results which are to be Published; or prevent the Publication
of any of the Sponsor's Background which is Confidential Information. The
Sponsor must give that Confidentiality Notice within [15]OR[30] days after the
Sponsor receives details of the proposed Publication. If the University does not
receive a Confidentiality Notice within that period, its employee or student may
proceed with the proposed Publication, provided that, whether or not it a
Confidentiality Notice has been given, any of the Sponsor's Background which is
Confidential Information may not be published.
6.
CONFIDENTIALITY
6.1
Subject to clause 5, neither party will[, either during the Project Period or for
[3][5][7][10] years] after the end of the Project Period,]ccxxxiv disclose to any
third party, nor use for any purpose except carrying out the Project, any of the
other party's Confidential Information.
6.2
Neither party will be in breach of any obligation to keep any Background, Results
or other information confidential or not to disclose it to any other party to the
extent that itccxxxv:
57
6.2.1 is known to the party making the disclosure before its receipt from the
other party, and not already subject to any obligation of confidentiality to
the other party;
6.2.2 is or becomes publicly known without any breach of this Agreement or any
other undertaking to keep it confidential;
6.2.3 has been obtained by the party making the disclosure from a third party in
circumstances where the party making the disclosure has no reason to
believe that there has been a breach of an obligation of confidentiality
owed to the other party;
6.2.4
has been independently developed by the party making the disclosure;
6.2.5
is disclosed pursuant to the requirement of any law or regulationccxxxvi and the party
required to make that disclosure has informed the other, within a reasonable time
after being required to make the disclosure, of the requirement to make the
disclosure and the information required to be disclosed; or
6.2.6 is approved for release in writing by an authorised representative of the
other party.
6.3
The University will not be in breach of any obligation to keep any of the Sponsor's
Background which is not Confidential Information, or any Results owned by or licensed to
the Sponsor, or other information, confidential or not to disclose them to any third party, by
Publishing any of the same if the University has followed the procedure in clause 5.2 and has
received no Confidentiality Notice within the period stated in that clause.
6.4
Neither the University nor the Sponsor will use the other’s name or logo in any
press release or product advertising, or for any other promotional purpose,
without first obtaining the other's written consent[; except that the University
may identify the sums received from the Sponsor in the University’s Annual
Report and similar publications].
7.
LIMITATION OF LIABILITY
7.1
The University warrants that there are, at the date of this Agreement, no laws,
regulations or other controls which restrict or prohibit the export of the Results to
the Sponsor.ccxxxvii
58
7.2
7.2
Each of the parties warrants to the other that, to the best of its knowledge and
belief (having made reasonable enquiry of those of its employees involved in the
Project or likely to have relevant knowledge[, and in the case of the University
any student involved in the Project], but not having made any search of any
public register) any advice or information given by it or any of its employees [or
students] who work on the Project, or the content or use of any Results,
Background or materials, works or information provided in connection with the
Project, will not constitute or result in any infringement of third-party rights.
OR
Neither of the parties makes any representation or gives any warranty to the
other that any advice or information given by it or any of its employees [or
students] who work on the Project, or the content or use of any Results,
Background or materials, works or information provided in connection with the
Project, will not constitute or result in any infringement of third-party rights.ccxxxviii
7.3
Except under the limited warranty in clause[s] 7.1 [and 7.2] and the indemnities
in clauses 7.4 and clause 7.5, and subject to clause 7.8, neither party accepts
any liability or responsibility for any use which may be made by the other party of
any Results, nor for any reliance which may be placed by that other party on any
Results, nor for advice or information given in connection with any Results. ccxxxix
7.4
The Sponsor will indemnify the University, [the Principal Investigator] and every
[other] employee [and student] of the University (the Indemnified Parties),
and keep them fully and effectively indemnified, against each and every claim
made against any of the Indemnified Parties as a result of the Sponsor's use of
any of the Results or any materials, works or information received from them
pursuant to the terms of this Agreement, provided that the Indemnified Party
must:
7.4.1
promptly notify the Sponsor of details of the claim;
7.4.2
not make any admission in relation to the claim;
7.4.3
allow the Sponsor to have the conduct of the defence or settlement of the claim;
7.4.4
give the Sponsor all reasonable assistance (at the Sponsor’s expense) in dealing with
the claim; and
7.4.5
take reasonable steps to mitigate its or his losses.
The indemnity in this clause 7.4 will not apply to the extent that the claim arises as a result
of the Indemnified Party's negligence, its breach of clause 6, its deliberate breach of this
Agreement or its knowing infringement of any third party’s Intellectual Property.ccxl
59
7.5
Each of the parties (the Indemnifying Party) will indemnify the other party,
and keep the other party fully and effectively indemnified, against each and every
claim made against the other party to the effect that or as a result of any
invention, material, work or information (including any Results or Background)
supplied by the Indemnifying Party pursuant to the terms of this Agreement is an
infringement of the Intellectual Property Rights of any third party, provided that
the other must:
7.5.1
promptly notify the Indemnifying Party of details of the claim;
7.5.2
not make any admission in relation to the claim;
7.5.3
allow the Indemnifying Party to have the conduct of the defence or settlement of
the claim; and
7.5.4
give the Indemnifying Party all reasonable assistance (at the Indemnifying Party’s
expense) in dealing with the claim.
The indemnity in this clause 7.5 will not apply to the extent that the claim arises as a result
of the other party’s negligence, its breach of clause 6 or its deliberate breach of this
Agreement.
7.6
Subject to clause 7.8, and except under the indemnities in clause 7.4 and clause
7.5, the liability of either party to the other for any breach of this Agreement, any
negligence or arising in any other way out of the subject matter of this
Agreement, the Project and the Results, will not extend to any indirect damages
or losses, or to any loss of profits, loss of revenue, loss of data, loss of contracts
or opportunity (in each case whether direct or indirect), even if the party bringing
the claim has advised the other of the possibility of those losses, or if they were
within the other party's contemplation.ccxli
7.7
Subject to clause 7.8, [and except under the indemnity in clause 7.4 and the
indemnity in clause 7.5,] the aggregate liability of each party to the other for all
and any breaches of this Agreement, any negligence or arising in any other way
out of the subject matter of this Agreement, the Project and the Results, will not
exceed in total [the monies actually paid by the Sponsor under this
Agreement].ccxlii
7.8
Nothing in this Agreement limits or excludes either party’s liability for:
60
7.8.1 death or personal injury caused by negligence;
7.8.2 any fraud or for any sort of liability which, by law, cannot be limited or
excluded; or
7.8.3
any loss or damage caused by a deliberate breach of this Agreement or a breach of
clause 6 (Confidentiality).
7.9
The express undertakings and warranties given by the parties in this Agreement
are in lieu of all other warranties, conditions, terms, undertakings and obligations,
whether express or implied by statute, common law, custom, trade usage, course
of dealing or in any other way. All of these are excluded to the fullest extent
permitted by law.ccxliii
7.10
[Any assignment made under or pursuant to clause 4.5 is made or will be made
with full title guarantee.]OR[The University warrants to the Sponsor that, in
relation to any assignment made under or pursuant to clause 4.5:
7.10.1 the University has the right to dispose of the Intellectual Property Rights in the
Results and that the Institution will, at its own cost, do all that it reasonably can to
give to the Sponsor the title which the University purports to give to the Sponsor;
and
7.10.1 that the Intellectual Property Rights in the Results are free from all charges and
encumbrances and rights of any third party (except those which the Institution is
unaware of or could not reasonably be aware of).]ccxliv
8.
FORCE MAJEURE
If the performance by either party of any of its obligations under this Agreement (except a payment
obligation) is delayed or prevented by circumstances beyond its reasonable control, that party will
not be in breach of this Agreement because of that delay in performance. However, if the delay in
performance is more than [3]OR[6] months, the other party may terminate this Agreement with
immediate effect by giving written notice.
9.
TERMINATION
9.1
Either party may terminate this Agreement with immediate effect by giving notice
to the other party if:
61
9.1.1
the other party is in breach of any provision of this Agreement and (if it is capable of
remedy) the breach has not been remedied within [30]OR[60]OR[90] days after
receipt of written notice specifying the breach and requiring its remedy; or
9.1.2 the other party becomes insolvent, or if an order is made or a resolution is
passed for its winding up (except voluntarily for the purpose of solvent
amalgamation or reconstruction), or if an administrator, administrative
receiver or receiver is appointed over the whole or any part of the other
party's assets, or if the other party makes any arrangement with its
creditors.ccxlv
[9.2
Each of the parties will notify the other promptly if at any time any of the Key
Personnel appointed by that party is unable or unwilling to continue to be
involved in the Project. Within [3]OR[6] months after the date of that notice, the
party who originally appointed that member of the Key Personnel will nominate a
successor. The other party will not unreasonably refuse to accept the nominated
successor, but if the successor is not acceptable to the other party on reasonable
grounds, or if the appointor cannot find a successor, either party may terminate
this Agreement by giving the other not less than [3] months' notice.]ccxlvi
9.6
Clauses 1, 4 (except clauses 4.6 [and 4.7] if the University terminates this Agreement under
clause 9.1), 5, 6, 7, 8, 9.3, 9.4, 10 and 11 will survive the expiry of the Project Period or the
termination of this Agreement for any reason and will continue in full force and effect
indefinitely.ccxlvii
9.4
On the termination of this Agreement, the Sponsor will pay the University for all
work done prior to termination. If the Sponsor has paid any of the Financial
Contribution in advance and the whole of that contribution has not, by the end of
the Project Period or the termination of this Agreement, been used by the
University for the purposes for which that Financial Contribution was provided,
the University will return to the Sponsor the unused portion of that contribution.
10.
ANTI-BRIBERYccxlviii
10.1
The University will:
10.1.1 comply with all applicable laws, statutes, regulations and codes relating to antibribery and anti-corruption including the UK Bribery Act 2010 and the Indian
Prevention of Corruption Act 1988;
10.1.2 not engage in any activity, practice or conduct which would constitute an offence
under sections 1, 2 or 6 of the UK Bribery Act 2010 if such activity, practice or
conduct had been carried out in the UK or contravene section 2 or sections 7 to 16 of
62
the Indian Prevention of Corruption Act 1988 if such activity, practice or conduct had
been carried out in India;
10.1.3 comply with the Sponsor’s policies relating to Anti-bribery and Anti-corruption
provided by the Sponsor to the University from time to time;
10.1.4 have and maintain in place throughout the term of this Agreement its own policies
and procedures, including adequate procedures under the UK Bribery Act 2010 and
the Indian Prevention of Corruption Act 1988 and any other applicable law, to
ensure compliance with clauses 10.1.1, 10.1.2 and 10.1.3 and will enforce them
where appropriate;
10.1.5 promptly report to the Sponsor any request or demand for any undue financial or
other advantage of any kind received by the University in connection with the
performance of this agreement; and
10.1.6 within six months after the date of this Agreement, and annually afterwards, certify
to the Sponsor in writing signed by an officer of the University, compliance with this
clause 10 by the University and by all persons associated with the University. The
University will provide such supporting evidence of compliance as the Sponsor may
reasonably request.
10.2
The University will ensure that any person associated with the University who is performing
services or providing goods in connection with this Agreement does so only on the basis of a
written contract which imposes on and secures from that person terms equivalent to those
imposed on the University in this clause 10. The University will be responsible for the
observance and performance by those persons of those equivalent terms, and will be
directly liable to the Sponsor for any breach by those persons of any of those terms.
10.3
Breach of this clause 10 will be deemed a breach which is not capable of remedy for the
purposes of clause 9.1.1.
10.4
For the purpose of this clause 10, the meaning of adequate procedures and whether a
person is associated with another person will be determined in accordance with section 7(2)
of the UK Bribery Act 2010 (and any guidance issued under section 9 of that Act), sections
6(5) and 6(6) of that Act and section 8 of that Act respectively and the corresponding
63
sections under the Indian Prevention of Corruption Act 1988. For the purposes of this clause
10, a person associated with the University includes, but is not limited to, any employee,
officer, student and subcontractor of the University.
11.
GENERAL
11.1
Noticesccxlix: Any notice to be given under this Agreement must be in English and in writing,
may be delivered to the other party or parties by any of the methods set out in the left hand
column below, and will be deemed to be received on the corresponding day set out in the
right hand column:
Method of service
Deemed day of receipt
By hand or courier
the day of delivery
By pre-paid airmail first class post
the fifth Business Day after posting
By recorded delivery post
the third Business Day after posting
By fax (provided the sender’s fax
machine confirms complete and errorfree transmission of that notice to the
correct fax number)
the next Business Day after sending or, if sent
before 16.00 (sender’s local time) on the
Business Day it was sent
The parties' respective representatives for the receipt of notices are, until
changed by notice given in accordance with this clause 11.1, as follows:
For the University:
For the Sponsor:
Name:
Name:
Address:
Address:
64
Fax number:
Fax number:
11.2
Headings: The headings in this Agreement are for ease of reference only; they do not affect
its construction or interpretation.
11.3
Assignmentccl: Neither party may assign or transfer this Agreement as a whole, or any of its
rights or obligations under it, without first obtaining the written consent of the other party.
That consent may not be unreasonably withheld or delayed.
11.4
Illegal/unenforceable provisions: If the whole or any part of any provision of this
Agreement is void or unenforceable in any jurisdiction, the other provisions of this
Agreement, and the rest of the void or unenforceable provision, will continue in force in that
jurisdiction, and the validity and enforceability of that provision in any other jurisdiction will
not be affected.
11.5
Waiver of rights: If a party fails to enforce, or delays in enforcing, an obligation of the other
party, or fails to exercise, or delays in exercising, a right under this Agreement, that failure or
delay will not affect its right to enforce that obligation or constitute a waiver of that right.
Any waiver of any provision of this Agreement will not, unless expressly stated to the
contrary, constitute a waiver of that provision on a future occasion.
11.6
No agency: Nothing in this Agreement creates, implies or evidences any partnership or joint
venture between the parties, or the relationship between them of principal and agent.
Neither party has any authority to make any representation or commitment, or to incur any
liability, on behalf of the other.
11.7
Entire Agreementccli: This Agreement constitutes the entire agreement between the parties
relating to its subject matter. Each party acknowledges that it has not entered into this
Agreement on the basis of any warranty, representation, statement, agreement or
undertaking except those expressly set out in this Agreement. Each party waives any claim
for breach of this Agreement, or any right to rescind this Agreement in respect of, any
representation which is not an express provision of this Agreement. However, this clause
11.7 does not exclude any liability which either party may have to the other (or any right
which either party may have to rescind this Agreement) in respect of any fraudulent
misrepresentation or fraudulent concealment prior to the execution of this Agreement.
65
11.8
Formalities: Each party will take any action and execute any document reasonably required
by the other party to give effect to any of its rights under this Agreement, or to enable their
registration in any relevant territory provided the requesting party pays the other party’s
reasonable expenses.
11.9
Amendments: No variation or amendment of this Agreement will be effective unless it is
made in writing and signed by each party's representative.
11.10 Third parties: No one except a party to this Agreement has any right to prevent the
amendment of this Agreement or its termination, and no one except a party to this
Agreement may enforce any benefit conferred by this Agreement, unless this Agreement
expressly provides otherwise.
11.11 Governing Lawcclii: This Agreement and any dispute or claim arising out of or in
connection with it or its subject matter or formation (including non-contractual
disputes or claims) are governed by, and are to be construed in accordance with,
the laws of [England and Wales]OR[India].ccliii ccliv
11.12 Jurisdictioncclv: Subject to clause 11.13, any dispute which has arisen or may
arise out of or in connection with this Agreement must be referred to, and settled
by, arbitration.cclvi That arbitration is to take place at [insert location] or any other
location which the parties may agree in writing. The arbitration tribunal will
consist of three arbitrators, each of the parties nominating one arbitrator, who
will then jointly nominate a third arbitrator to preside over the arbitration. The
language of the arbitration will be English and all of the arbitrators must be fluent
in English. If the place of the arbitration is outside India:
11.12.1 The decision of the tribunal will be final, binding and incontestable, and
may be enforced as a decree of a court, or used as a basis for judgment
in India or elsewhere. In this regard, the parties agree that the New York
Convention (except for Articles V(1)(e) and VI) will apply to awards made
pursuant to this Agreement. Each of the parties waives the provisions of
Articles V(1)(e) and VI, so that there will be no appeal to any court from
the decision of the arbitrators; and
11.12.2 [Nothing contained in Part I of the Indian Arbitration and Conciliation Act
1996 will apply to any arbitration (whether commenced or to be
commenced) under this Agreement.]OR[The parties agree that the
operation of Part I of the Indian Arbitration and Conciliation Act 1996 is
specifically excluded and will not apply to any arbitration (whether
commenced or to be commenced) under this Agreement, except section
9 (interim measures by court) of Part I of the Act.]
The courts and tribunals at [insert location], India, will have exclusive jurisdiction in relation
to any dispute relating to:
66
11.12.3 any arbitration proceedings;
11.12.4 any challenge to the validity or applicability of this clause 11.11 to any dispute; and
11.12.5 any challenge to any arbitration award and its enforcement.
OR
Subject to clause 11.13, the Courts of England and Wales will have exclusive jurisdiction to
settle any dispute or claim arising out of or in connection with this Agreement or its subject
matter or formation (including non-contractual disputes or claims) except that either party
may bring proceedings in relation to the protection of its Intellectual Property Rights or
Confidential Information in any jurisdiction. The University irrevocably appoints [insert
name] of [insert address in England] [insert fax number] as the University’s agent to receive
on its behalf in England or Wales service of any legal proceedings. That service will be
deemed completed on delivery to that agent (whether or not it is forwarded to and received
by the University) and will be valid until such time as the University has received prior
written notice from the University to the effect that that agent has ceased to act as its agent.
If, for any reason, that agent ceases to be able to act as agent or no longer has an address in
England, the University will immediately appoint a substitute agent acceptable to the
Sponsor and will provide the new agent's name, address and fax number within England to
the Sponsorcclvii.
11.13 Proceedings relating to IPR or Confidential Informationcclviii: Nothing in this Agreement will
prevent either party from bringing an action in any jurisdiction in order to protect its
Intellectual Property Rights or Confidential Information.
11.14 Language: This Agreement is drafted in the English language. If this Agreement is translated
into any other language, the English language text will prevail. All other documents provided
under or in connection with this Agreement must be in the English language, or
accompanied by a certified English translation. If such document is translated into any other
language, the English language text will prevail [unless such document is a constitutional,
statutory or other official document].
67
SIGNEDcclix for and on behalf of the
University:
Name
Position
Signature
SIGNED for and on behalf of the Sponsor:
Name
Position
Signature
cclx
[Read and understood by the Principal
Investigator
Read and understood by the
Sponsor’s Supervisor
……………………………………………………………..
…………………………………………………………….
Signature
Signature
……………………………………………………………..
……………………………………………………………
Date
Date]
68
SCHEDULE 1
The Financial Contributioncclxi
This Schedule should set out complete details of the Financial Contribution, e.g. the types of
expenditure for which the Sponsor will reimburse the University (see below for an example), the
maximum amount which the Sponsor will pay, any milestones to be met and any conditions
attaching to payment.
The parties may agree that the Sponsor will cover increases in salary, pension and social security
contributions. In that case this Schedule should reflect this.
Year One
Year Two
Salary for [name of Appointee] at [x] including
pension and social security
£
£
Overheads (*% on salary)
£
£
Consumables
£
£
Equipment [itemise]
£
£
Total
£
£
All amounts in this Schedule exclude any value added or similar tax.
The University's Finance Officer is: [insert details]
All payments of the Financial Contribution will be made by [bank transfer to: [insert details]]
69
SCHEDULE 2
The Projectcclxii
Scope of the Project
Aims of the Project
Any Key Personnel to be provided by the University (including the Principal Investigator)
Any Key Personnel to be provided by the Sponsor (including the Sponsor's
Supervisor (if any))
Numbers of other full and part time staff to be provided by each party
Students participating in the Project
Project Management
who is to act as overall project manager
responsibilities of project manager
project meetings (frequency, location and representation of each party)
provision of information and reports to any body providing External Funding
claiming External Funding
Facilities to be provided by each party
70
Equipment to be provided by each party (and whether, if provided for use by the other, it is
donated to the other or is on loan until the end of the Project).
Where the Project is to be carried out
Any Background (including materials) which the Sponsor must provide
Any Background (including materials) which the University must provide
Any Background (including materials) which is to be obtained by either party from a third party
Whether all Background is to be kept Confidential or which Background is to be kept confidential,
for instance:
All of the Sponsor's Background [except insert details] is Confidential Information.
OR
Background contained in documents which are marked ‘Confidential’ is Confidential Information.
Anticipated outputs or Results
Tasks to be performed by each party (with timetable of major milestones)
71
SCHEDULE 3
Good Data Management Practices
1.
Research data must be generated using sound scientific techniques and processes;
2.
Research data must be accurately recorded in accordance with good scientific practices by
the people conducting the research;
3.
Research data must be analysed appropriately, without bias and in accordance
with good scientific practices;
4.
Research data and the Results must be stored securely and be easily retrievable;
5.
Data trails must be kept to allow people to demonstrate easily and to reconstruct
key decisions made during the conduct of the research, presentations made about
the research and conclusions reached in respect of the research; and
6.
Each party must have the right, on not less than 30 days written notice, to visit any other
party to verify that it is complying with the above practices and procedures.
72
GUIDANCE NOTES- 1A
An explanation of how to interpret Model Agreement 1A
Exclusive or Non-Exclusive Licence: Clause 4 contains alternative wording so that
the Institute (which retains ownership of the IPR) grants the Sponsor either:
i
- a non-exclusive licence; or
- an exclusive licence,
depending on the wording chosen. Which alternative is chosen will depend on factors
such as the bargaining strengths of the parties and their respective contributions
(financial and otherwise) to the Project.
By granting a non-exclusive licence in a Field and Territory, the Institute is precluded from granting
exclusive rights to any third party in the same field and in the same territory, but it may grant nonexclusive licences to other parties.
Before choosing which form of model agreement to use, it is important to agree the
basic terms with the other party. You may find the accompanying checklist a useful tool
to help you do this.
Please see the notes on clause 4 for an explanation of exclusive and non-exclusive (and
sole) licences.
ii
Names of the Parties: The full corporate names of both of the parties should appear at the
beginning of the Agreement.
iii
Company Numbers: Although a company may change its name and the address of its registered
office, a company formed in England, Wales or Scotland never changes its registered number.
Therefore, it is advisable to identify the company by its registration number.
Academic Publication: It is important to the career prospects of many academic
researchers that they publish articles and participate at conferences. Therefore the
Institute and its academics will nearly always wish to publish information about the
Project.
iv
Changes to the Agreement: It is important that changes to the Agreement are
properly recorded in writing and signed on behalf of each party. In that way
misunderstandings about each party's commitments may be avoided. A copy of the
document recording the change should be kept with the original signed copy of the
Agreement.
v
Background: It is likely that each party will make available for use in the Project,
information, software or materials which already exist or which are developed
independently of the Project. In this agreement each of the parties allows its Background
to be used for the purposes of the Project but not for any other purpose (clause 4.2),
although negotiations may result in Background being used, where necessary, to exploit
the Results.
vi
73
Although it may not be necessary or possible to identify all of the Background at the start of the
Project, if the success of the Project depends on one or both of the parties making certain
Background available, this needs to be identified and described in Schedule 2.
Note that unless identified Background is included in Schedule 2, as one of the items that a party is
obliged to provide under clause 2.2 that party is not obliged to provide any Background. That will not
prevent it providing Background if it wishes to do so.
If any of the Background is sensitive or for some other reason should not be disclosed beyond the
researchers working on the Project, this should be identified either before, or at the time when the
Background is made available. While academic researchers may want to publish Background as part
of their academic publication of the Results, it may be important that the Background of the Sponsor
remains confidential. It is important that this issue is resolved at the outset. Please refer to the notes
on Confidential Information and Academic Publication.
Consider whether this should be a business day in England (or another part of the UK)
or a business day in India, bearing in mind that public holidays are different in different
countries.
vii
Some collaborators may take the view that all of their Background is commercially
sensitive and must be kept confidential. If that is the case, the words in square brackets
should be deleted. Alternatively, if the intention is that only Background that is identified
as being confidential is to be treated as such, the words in square brackets should be
included. Whether or not those words are included, any information or material which is
to be kept confidential should be marked ‘Confidential’.
viii
ix
External Funding: If any funding is provided from the public purse, e.g. any government
department or Ministry there will be conditions attached to that funding which affect the ownership
and exploitation of the Intellectual Property Rights in the Results.
Equally, where funding is provided by any third party, such as a charity, there are likely to be
conditions attached to that funding.
It is important that these are identified at the outset and that the provisions in the agreement do not
conflict with any conditions imposed by the provider of the funding.
Some (but not all) Funding Bodies will insist that the party receiving the funding ensures that its
collaborators comply with those terms.
74
The party receiving the funding should check that the terms of the funding and the terms of the
Agreement are consistent. The agreement may not be suitable for your purposes if the funding
agreement or conditions impose conflicting terms.
Field: If the Institute grants a non-exclusive licence to the Sponsor under clause 4.6,
the Sponsor's use and exploitation of the Intellectual property Rights in the Results may
be limited to a specific business or technological area or field.
x
This will be particularly useful where the Sponsor's key business area is limited to a specific field
because the Sponsor may have no need for a licence in other fields, so leaving the way clear for the
Institute, or other licensees of the Institute, to exploit the Intellectual Property Rights in the Results
in other fields.
Alternatively the licence may apply to all fields of use.
This is something to be negotiated at the outset. For this and other issues, you may find
the accompanying Checklist useful.
xi
Good Data Management Practices: It is important that people are able to rely on the integrity of
the research data and that adequate records are kept, not only for the purposes of filing patents but
also to be able to demonstrate who created the Results for the purposes of establishing the
ownership of other Intellectual Property Rights.
Intellectual Property Rights: The ownership and exploitation of Intellectual
Property Rights is one of the most difficult issues and the parties should try to resolve it
early when negotiating the terms of any collaboration.
xii
An explanation of the different types of Intellectual Property Right can be found at:
http://www.ipo.gov.uk and http://www.ipindia.nic.in/ (for patents, trademarks,
industrial designs and geographical indications) and http://copyright.gov.in/Default.aspx
(for copyright).
xiii
Key Personnel: Schedule 2 should contain the names of any people whose involvement is
important to the success of the Project. Where most of the work is being done by one party, for
example, the Institute, the Key Personnel may all be Institute researchers, but where the Sponsor is
making a substantial ‘human’ contribution to the research activities, some Key Personnel may be
provided by the Sponsor. The significance of the Key Personnel is that if one of them leaves and is
not replaced, the agreement may be terminated under clause 9.2.
The Project: One of the most important parts of the agreement is the description of
the Project in Schedule 2. That Schedule and clause 2.2 determine what is to be done
and the resources which are to be provided; the nature of the Intellectual Property
xiv
75
Rights created will flow from the description of the Project and its outputs or results. It is
the cornerstone of the agreement and it is important that the researchers give serious
thought to the contents of Schedule 2 so that it is complete and accurate.
The Sponsor’s Supervisor: Where the Sponsor is making a significant contribution
to the research work, the person leading the Sponsor's team should be named.
Otherwise delete this definition and other references to the Sponsor’s Supervisor.
xv
xvi
The Territory: If the Institute grants a non-exclusive licence to the Sponsor under clause 4.6, the
Sponsor's use and exploitation of that IP may be limited to a specific geographical area or territory.
This will be particularly useful where the Sponsor's key business area is limited to a specific territory
because the Sponsor may have no need for a licence in other territories, so leaving the way clear for
the Institute, or other licensees of the Institute, to exploit the Intellectual Property Rights in the
Results in other territories.
If the Sponsor's use of the Intellectual Property Rights in the Results is not limited to a specific
territory, you should insert ‘worldwide’ in the definition of the Territory.
This is something to be negotiated at the outset. For this and other issues, you may find
the accompanying Checklist useful.
xvii
Time of the Essence: If time is of the essence a failure to keep the agreed timetable
by one party will allow the other party to terminate and possibly to claim damages. If
this is not what the parties intend, insert ‘not’.
xviii
Beginning work before the agreement is signed: If work on the Project has already begun before
the agreement is signed and dated, it is important to make the agreement apply retrospectively to
work already done. Ideally the agreement should be negotiated and signed before work begins.
xix
Resources: References to each of the parties/neither party should be used where the Sponsor is
contributing resources in addition to the financial contribution and may be carrying out some of the
research.
In the context of clause 2.2, the Institute may take the view that it should not be obliged to provide
more resources than the Sponsor's financial contribution and any external funding allows. If that is
the case, it may wish to add:
76
‘and in the case of the Institute, this will be limited to the extent allowed by the Financial
Contribution paid by the Sponsor and any External Funding which the Institute receives for the
Project’
at the end of the first sentence.
xx
Ability to carry out the Project: The purpose of clause 2.3 is to ensure that each party either has or
will, at the appropriate time, obtain any consents and approvals (for instance regulatory and ethical)
that may be necessary for it to carry out its responsibilities under the Project.
xxi
No guarantees: Clause 2.5 makes it clear that the success of the Project is not guaranteed; that is
in the nature of a research project. The highlighted wording will depend on whether the Project is
essentially being carried out by the Institute or whether it is a joint effort.
xxii
Reports: In clause 2.6 the parties should agree how frequently reports are to be submitted. The
frequency of reports will depend on the nature and duration of the Project and the requirements of
any third party which provides any funding for the Project.
xxiii
Hardship Clause: In projects where any financial contribution is not based on the costs incurred,
the parties may agree to include a hardship clause in Schedule 1, providing for the Sponsor meeting
(or at least considering meeting) any unanticipated increases in the Institute’s overheads.
Sales Tax and VAT: Whether or not the Institute must charge central sales tax,
local sales tax, service tax or VAT (and the rate of that tax) will depend on Indian law.
xxiv
Interest on Late Payment: In India the rate of interest on late payment is a matter
for negotiation the parties. 8% over base rate is allowed under the UK Interest on Late
Payments of Commercial Debts (Interest) Act 1998, but the parties often negotiate the
rate of interest on late payments.
xxv
xxvi
Conflicts with Funding Conditions: Before entering into any Agreement you should check the
terms of any External Funding and any conflicts should be resolved by amending the terms of the
Agreement or, perhaps, by deciding not to use one of the Agreements.
Joint Ownership of Intellectual Property Rights: The Institute may favour joint
ownership of the Intellectual Property Rights in the Results and the Sponsor may
welcome that as an ‘easy’ solution. But joint ownership is not usually favoured in the UK.
xxvii
77
Under English law, what each joint owner may do with the Intellectual Property Rights in
the Results is generally very limited. For instance, although each joint owner may use an
invention, any dealing in the patent which protects that invention, including granting any
licence, requires the permission of the other joint owner(s). That may result in the
Sponsor not being able to commercialise the Intellectual Property Rights and, depending
on the importance of the Intellectual Property Rights to the Sponsor’s business, it may
affect the value of the business, making it more difficult to attract investment or to find
a buyer.
Under the Indian Patent Law:
-
If a patent is granted to two or more persons each of them has equal rights in the
invention unless they agree to the contrary; if there are three patent owners,
each will have a one-third right in the patent unless they have entered into an
agreement which determines other shares in the invention and in the revenues
from it;
-
each patent owner may work his share for his own benefit without accounting to
the other owner(s); but
-
a licence of the patent may not be granted without the permission of the other
owners. The Controller may, on application, intervene if this is flouted.
If the Agreement is to provide for joint ownership, it should set out the rights of each
joint owner clearly so that there is no misunderstanding. For instance, it might provide
for the Sponsor having the exclusive right to commercialise (with the right to license
others) in certain territories and fields (as if the Sponsor were an exclusive licensee)
without having to obtain the Institute’s permission.
Thought also needs to be given to:
a) co-operation in filing for any patent or registering any other Intellectual Property
Right which is jointly owned;
b) both of the joint owners joining in any action against infringers;
c) how the proceeds of exploitation are to be shared between the co-owners;
d) what is to happen to the Sponsor’s share in the Intellectual Property Rights if the
Sponsor is wound up; and
e) what is to happen if the Sponsor wants to sell its business,
and appropriate provision should be included in any agreement which provides for joint
ownership.
Below is an example of the sort of provisions you might include if you want to provide for joint
ownership. They envisage that joint ownership arises because it is not possible to distinguish
between the parties' contribution to any Result. The joint owners may take steps to protect the
jointly owned IP. If one of them does not want to take those steps, the other joint owner may take
them and the owner not wishing to protect the IP must provide reasonable assistance.
Both joint owners may deal with and exploit the jointly owned Intellectual Property Rights without
accounting to the other owner(s) for any money made.
78
Where any Result is created or generated by both parties jointly and it is impossible to
distinguish each party's intellectual contribution to the creation of the Intellectual
Property Rights in that Result, the Intellectual Property Rights in that Result will be
owned by those parties in equal shares. The joint owners may take such steps as they
may decide from time to time, at their joint and equal expense, to register and maintain
any protection for those Intellectual Property Rights, including filing and prosecuting
patent applications for any Result, and taking any action in respect of any alleged or
actual infringement of those Intellectual Property Rights. If one of the joint owners does
not wish to take any such step or action, the other joint owner may do so at its expense,
and the party not wishing to take such steps or action will provide, at the expense of the
party making the request, any assistance which is reasonably requested of it.
Any joint owner of any of the Intellectual Property Rights in any Result may deal with and exploit that
Intellectual Property as though it were the sole owner, without being required to account to the other
joint owner for any share in the revenues generated by that dealing or exploitation or any proceeds
of sale, provided that no joint owner may grant any third party any rights which detract from the
other joint owner’s right to deal with any jointly owned Intellectual Property Right as it sees fit.
If you intend Intellectual Property Rights created by one party to be jointly owned, the
agreement will need to contain an assignment from the party creating those Intellectual
Property Rights to the parties jointly.
xxviii
Background: Clause 4.1 clarifies that the agreement is are concerned only with the ownership
and right to exploit the Intellectual Property Rights the outputs or Results of the Project; the
ownership and exploitation of other Intellectual Property Rights are not affected.
Under clause 4, if either party provides any Background, the other party may not exploit it
commercially or use it for any purpose except the Project; in clause 4.2 the licence to use
Background is for the purposes of the Project only. The parties may wish to consider extending the
licence of Background so that it can be used where necessary for the exploitation of the Results.
Unless a party designates any of its Background as confidential, it may be used it in connection with
the Academic Publication of the Results. (Please see the note on Academic Publication).
Should either party wish to use the other’s Background for any purpose except the
Project, it will need to negotiate the appropriate licence to allow it to do so.
xxix
xxx
Registering Copyright: It is not possible to register copyright in the UK. However, it is possible to
register copyright in India. It is not mandatory to do so, but it may make it easier to prove ownership
and to enforce the copyright.
xxxi
Patenting Strategy: As the owner of the Intellectual Property Rights in the Results, the Institute
may or may not decide to patent any invention. If the Sponsor is interested in acquiring exclusive
79
rights or in taking an assignment of the Intellectual Property Rights in any Results, it may wish the
Institute to apply for a patent so as to protect those Results. In practice the Institute and the Sponsor
will need to discuss and agree a patenting strategy.
It is suggested that the Sponsor pays the patenting costs which the Institute would not otherwise
have incurred, but that if the rights are then licensed or assigned to a third party by the Institute, the
Institute then reimburses the Sponsor.
xxxii
Subcontractors and Students: Where any student or sub-contractor works on the Project, the
Institute or the party engaging the sub-contractor should ensure that it has acquired the Intellectual
Property Rights which the student or sub-contractor acquires by virtue of his involvement in the
Project. Those rights will not automatically belong to the party which engages the sub-contractor.
xxxiii
Notifying Results: The obligation in clause 4.5 is to notify any patentable Results promptly, and
the clause leaves the notification of other Results until the time of the next report. This is to reduce
the administrative burden but, depending on the nature of the Project, the parties may wish to
consider amending the clause so that all Results are to be notified promptly.
xxxiv
Licence to the Sponsor: Because the Institute owns the Intellectual Property Rights in the
Results, the Institute grants the Sponsor the right to use the Results for any purpose (possibly in a
specific field and/or territory), but the Sponsor has no right to sublicense the use of the Results. If
the Sponsor wishes to sublicense the use of the Results or, if having been granted a non-exclusive
licence, the Sponsor wishes to have exclusive rights, it will need to negotiate with the Institute to
obtain a further licence.
Exclusive/Non-Exclusive Licence: If the Institute grants a non-exclusive licence,
both the Institute and the Sponsor will be able to use and commercialise the Intellectual
Property Rights in the Results, and the Institute will be able to license other parties to
use and commercialise the Intellectual Property Rights in the Results.
xxxv
If the Institute grants an exclusive licence in respect of the Results to the Sponsor, only
the Sponsor will be able to use and commercialise those Intellectual Property Rights in
the territory and the field specified in that licence; the Institute will not be able to use
and commercialise those Intellectual Property Rights itself in that territory or that field.
Nor will the Institute be able to license others to do so. But note that in this agreement
the Institute reserves the right to use the Results for academic purposes even if it has
granted an exclusive licence.
Where the Institute is funded by the Indian Government, the Institute may not be able
to grant an exclusive licence which conflicts with the Indian Government’s rights. This is
dependent on the collaboration agreement executed by the Institute and the
Government, or on the conditions under which the Grant has been given to the Institute
80
by the Government. This should be discussed and the position established before any
agreement is signed or work begins on the project.
It is also possible to grant what is called a sole licence. That means that the Sponsor will
be the only licensee, but the Institute does not exclude itself from using and
commercialising the Results.
The Financial Return to the Institute: The financial return to the Institute is the
Financial Contribution paid by the Sponsor, details of which should be inserted in
Schedule 1. That may take the form of a fixed sum or the payment of royalties (or a
combination of the two). Where the return is in the form an on-going royalty, the words
‘fully paid-up, royalty free’ should be deleted from clause 4.6.
xxxvi
xxxvii
Time Limited Rights: An approach which the Institute might consider if it grants an exclusive
licence is to time limit the rights of the Sponsor, allowing it exclusivity for a number of years, and at
the end of that period, the Institute and the Sponsor both having non-exclusive rights to exploit the
Intellectual Property Rights. That will affect the value of the licence to the Sponsor and, depending
on the importance of the rights to the Sponsor may make it difficult for it to raise investment or sell
its business.
Institute may not Commercialise: Use this Clause only if an exclusive licence is
granted in clause 4.6. Delete this Clause if a non-exclusive licence is granted in clause
4.6.
xxxviii
xxxix
Academic Use and Publication: There is an obvious tension between industry's wish to protect
its information and materials and academia's wish to publish, and it may be necessary for the parties
to discuss how a proposed publication may be amended in order to accommodate the academics'
desire to publish while retaining protection for sensitive information and materials. This issue should
be addressed as early as possible in the negotiations.
The period during which academic publication may be delayed will vary according to the
circumstances and the nature of the information; it may be as little as one month or as much as 12
months (or possibly more). The important thing is to protect information which only has a value
while it is kept confidential and to allow time for a patent application to be made where appropriate.
Theses
Where students are involved in the Project, the Sponsor and the Institute may agree to add a clause
allowing for the submission of a thesis and its deposit in the Institute’s library. An example of that
sort of clause is given below. The Institute will need to have a process in place for examining theses
confidentially and restricting access to them in the library.
Possible Thesis Clauses:
81
Where, with the agreement of the Sponsor, any registered student of the Institute has been involved
in the Project, nothing in this Agreement will prevent that student submitting a thesis based on any
of the [Results and the] Sponsor's Background for a degree of the Institute, or the examination of
that thesis by examiners appointed by the Institute, or the deposit of that thesis in a library of the
Institute in accordance with the relevant procedures of the Institute. However, if the examination or
deposit of the thesis would disclose any [Result or any ]of the Sponsor's Background which is
Confidential Information, the Institute will notify the Sponsor at least [30]OR[60] days before the
thesis is due to be submitted, and the Sponsor may, by giving notice to the Institute (a Thesis Notice)
within [15]OR[30] days after the Sponsor receives the notice from the Institute, require any external
examiners or readers of the deposited thesis to sign confidentiality undertakings as a condition of
receipt of the thesis. If the Institute does not receive a Thesis Notice within that period, it may
proceed with examination and deposit of the thesis.]
Or
Where, with the agreement of the Sponsor, any registered student of the Institute has been involved
in the Project he will follow the Institute’s regulations for the submission of any thesis or theses for
examination. In any event the Institute will procure that the student will submit a draft thesis to the
Principal Investigator and the Sponsor's Supervisor at least [30] days before the date for submission
for examination. The Student may not, without the Sponsor's express written consent, include in any
thesis any of the Sponsor's Background or and Results belonging to Sponsor.]
xl
Confidentiality - Time Limits: It is common for people to want to limit the time during which
information is to be kept confidential, and this clause allows for that. The danger of imposing a time
limit is that the information may still be commercially sensitive, or should be kept confidential for
some other reason, after the end of the period of confidentiality. The parties should consider
whether information is to be kept confidential indefinitely. If it is, the words in square brackets
should be omitted.
Under Indian law information may be kept confidential indefinitely but any clause which is
effectively a non-compete clause which prevents a person from earning his living for more than 2
years may not be enforceable.
But even if the clause is unlimited in duration, the law will not uphold it so as to protect information
which is in the public domain – see clause 6.2.2.
xli
Theses and Confidentiality: If the parties have agreed to include a clause allowing for the
examination and submission of thesis, they will need to add the following to the end of clause 6.3:
82
‘; or by the examination or deposit of a student thesis if the Institute has followed the procedure in
clause 5.2 and has received no Thesis Notice within the period stated in that clause’.
xlii
Right to Information: Simply stating in the agreement that information (including Background) is
to be kept confidential and/or marking it as confidential will not necessarily guarantee that will be
kept confidential.
Indian Research Institutes (both governmental and non-governmental) are required to
provide information under the Right to Information Act 2005. This includes a) the name
of the project/the title of the agreement; b) the sponsor; and c) the amount of money
involved.
There are exemptions for commercially confidential information, trade secrets and intellectual
property, the disclosure of which would harm the competitive position of a third party, unless the
competent authority is satisfied that larger public interest warrants the disclosure of that
information.
Warranty re Exports: It is important that this is investigated at the outset. If the
Results of the Project cannot be exported and the Sponsor’s aim is to use them outside
India, the Sponsor’s aims will be frustrated, and nothing in the agreement will be able to
overcome that.
xliii
xliv
IPR Warranty: The alternative wordings for clause 7.2 take very different approaches. In the first
version of the clause there is a limited warranty against the infringement of third party rights. The
second set of wording makes it clear that no warranty is given in this respect. This is something
which the parties will have to negotiate. Even where a warranty is given, the warranty is qualified
and appropriate searches should be made by the party wishing to exploit any patentable invention.
The words in square brackets in clause 7.2 should be omitted if the second version of clause 7.3 is
used.
Exclusion of Liability: This clause excludes liability except in very specific
circumstances:
xlv
-
under the warranty re exports in clause 7.1;
under the non-infringement warranty in clause 7.2 (if that warranty is given;
under the indemnities in clauses 7.4 and 7.5;
where the law does not allow liability to be excluded (e.g. for personal injury or
death caused by negligence or for fraud – see clauses 7.8.1 and 7.8.2); and
where the parties agree there should be no exclusion of liability (e.g. for
deliberate breach of the agreement or any breach of confidence – see clause
7.8.3).
Both parties should consider whether this results a fair allocation of risk and reward.
83
xlvi
Indemnity from the Sponsor: The Sponsor agrees to cover the Institute and its employees (and
possibly its students) against any claim that is brought against them as a result of the Sponsor's use
of the Results or the Institute’s Background. The rationale for this is that the Sponsor takes the
commercial risks associated with its use of the Intellectual Property Rights.
The indemnity is conditional on the person claiming the benefit of the indemnity letting the Sponsor
know about the claim quickly, not making any admission, allowing the Sponsor to deal with the
claim, helping the Sponsor in dealing with it (at the Sponsor's expense), and mitigating his or its
losses (taking reasonable steps to keep the losses to a reasonable level). These conditions are
imposed to make sure that the Institute and its employees and students do not make matters worse
and potentially increase the amount of the claim.
The Sponsor will not, however, indemnify anyone if their negligence or deliberate breach of the
Agreement, or a breach of confidence has given rise to the claim or if the person claiming the
indemnity has knowingly infringed third Party Intellectual Property Rights.
The parties should consider whether the Sponsor should be required to have insurance to back up
the indemnity. Larger organisations may self-insure, but where the Sponsor has limited financial
resources, the indemnity may be worthless unless the Sponsor has appropriate insurance.
xlvii
Exclusion of Liability for Indirect Loss and Loss of Profits etc.: The object of this clause is to
exclude liability of each party for indirect loss, that is loss that the parties would not necessarily
foresee as being the natural and direct result of a breach of contract or negligence; a loss that is
suffered only because some special circumstance. Liability for loss of profits and revenue, and other
some other types of loss (whether they are direct or indirect) is excluded altogether.
The complete exclusion of loss of profits and revenue may leave the Sponsor with no
worthwhile claim. Both parties should consider whether this results a fair allocation of
risk and reward, especially if the Sponsor is commissioning the research in an area which
is important to its business.
xlviii
Cap on Liability for Direct Loss: This clause caps each party's liability by reference to the
Sponsor's payments to the Institute. The parties might agree that some other level of financial cap is
more justifiable or fairer.
84
The cap does not apply to liability under the indemnities, but the parties might agree that it should
apply to that liability. If that is the case, the words ‘and except under the indemnity in clause 7.4 and
clause 7.5’ should be deleted.
Some sorts of loss cannot be excluded by law, and the agreement takes the line that it would be
unfair to cap or exclude liability for loss which has been caused by a deliberate breach of the
agreement or any breach of confidence. This principle (in clause 7.8) overrides the limitations and
exclusions in other clauses.
In any case, before agreeing any limitation of liability clause, the parties should consider their
insurance arrangements.
xlix
Exclusion of Implied Terms and Conditions: The law, such as the Indian Contract Act read with
Sales of Goods Act, and the UK Supply of Good and Services Act, and sometimes the course of
dealing between the parties, can mean that terms are implied into an agreement, even though they
are not actually set out in the agreement. This clause excludes that sort of term. A typical example of
an implied term is that the supplier will use reasonable skill and care or that goods will be fit for
purpose. Only the express terms of the Agreement apply to the Project.
l
Termination on Breach or Insolvency: Either the Institute or the Sponsor may terminate the
agreement if the other has not complied with the agreement or if the other is insolvent.
li
Loss of Key Personnel: In some projects it may make sense to have a right to terminate if Key
Personnel are unavailable and a suitable replacement is not appointed within a specified period.
The use of this clause should be considered carefully; in practice, if a key academic researcher moves
to another institute, it may be possible to novate the Agreement with the new institute.
lii
Provisions Surviving Termination: Some provisions of the agreement, especially confidentiality,
intellectual property rights and limitations of liability should survive the end of the end of the Project
or termination of the Agreement.
Note that if on-going payments are to be made, some of the payment terms may also need to
survive the end of the Project.
85
The Institute should consider whether the licence to the Sponsor should survive if the agreement is
terminated because the Sponsor has not paid or is insolvent.
Anti-Bribery and Corruption: Under the UK 2010 Bribery Act, a commercial
organisation in the UK commits a criminal offence if any person associated with it bribes
another person,
liii
It is a defence if the UK organisation can show that it has ’adequate procedures’
designed to prevent bribery by its associated person. Because the
liv
Notices: If either party has cause to give a notice under the Agreements, for instance to terminate,
the procedure in this clause must be followed.
lv
Assignment of the Agreement: If one party bows out of the Project by assigning or transferring the
Agreement to a new party, the other original party and the new party should consider whether to
execute a novation agreement. This would typically release the party that is bowing out of the
Project from its undertakings (but preserve its obligations of confidentiality) and give the parties an
opportunity to sort out any rights they need to use or exploit the Intellectual Property Rights of the
party leaving the Project.
lvi
Entire Agreement: This clause states that the agreement is the entire agreement between the
parties. The parties should think carefully about whether that statement is correct. The effect of this
clause is to remove the possibility that undertakings or understandings given or implied in any other
document have any effect. That may not be appropriate if, for instance, the parties are relying on
what is said in any proposal submitted for external funding. You may also want to include the
Funding Terms if they impose conditions which apply to the relationship between the parties.
lvii
Governing Law: This clause sets out which country’s laws will be used to interpret the agreement,
including the rights and obligations of the parties.
The choice of governing law should be one of the first things to be decided because only a lawyer
qualified in the relevant law will be able to advise on the effect of that law on the interpretation of
the agreement.
Different Legal Systems: It is important to recognise the differences between the
two legal systems in Indian and England. For instance:
lviii
a) the limitation period under English law is usually 6 years; under Indian law it is 3
years for breach of contract or infringement of copyright;
b) usually commercial disputes to be resolved in India must be brought before the
District Courts where either the cause of action arises or the defendant is situated
(there are over 600 districts in India), although some High Courts (e.g. the High
Courts of Bombay and Delhi) have exclusive (original) jurisdiction in relation to
commercial disputes.
86
Issues to consider when deciding on the system of law and how disputes are to be resolved include:
i)
whether the systems of law based on the common law so that the fundamental principles
are broadly analogous;
ii) Whether the judiciary is impartial;
iii) is there a long back-log of cases/does it take a long time to obtain a court order;
iv) the duration of protection for Intellectual Property Rights;
v) the remedies available for infringement of intellectual property rights (e.g. can punitive
damages be awarded and how common are damages for patent infringement.
Insurance: A UK company with litigation insurance should check that its insurance
covers litigation or arbitration in India (or elsewhere) before agreeing to Indian law or to
resolve disputes in any forum except the English courts.
lix
Jurisdiction and Dispute Resolution: It is equally important to decide how disputes
are to be resolved. This clause provides for two possibilities:
lx
i)
arbitration in a location chosen by the parties; or
ii) going to court in England.
Arbitration: Arbitration is seen as the most efficient method of resolving commercial
disputes in India, more so than in the UK. Litigants in India are not keen to file ordinary
civil suits in commercial matters, because of the ad valorem court fees payable in most
cases, and very long delays. In India there is a growing preference for international
arbitration in Singapore.
lxi
The International Chamber of Commerce (ICC) is the most popular organisation for
international arbitrations in India and is frequently used by both the public and private
sectors. The Singapore International Arbitration Centre (SIAC) has become popular
recently.
Service Outside the Jurisdiction: Where a party is outside England and Wales, the
other party should have the right to serve proceedings on an agent within England or
Wales in order to avoid the need to obtain the court's permission to serve English
proceedings outside the jurisdiction.
lxii
Proceedings relating to IPR or Confidential Information: This clause is
important because an infringement of Intellectual Property Rights or breach of
confidence may take place anywhere in the world, and the owner of those rights needs
to be free to take action in the most appropriate forum.
lxiii
lxiv
Signatures: The agreement should be prepared in duplicate and both the Institute and the
Sponsor should sign both copies. The signed copies should be kept safely. If there is a dispute it may
need to be produced in court.
lxv
Signatures of The Principal Investigator and the Sponsor's Supervisor: The parties might consider
asking these people to acknowledge the terms of the agreement as a check that the researchers are
87
aware of its terms and that those terms reflect what they think they are doing. They are not parties
to the agreement and are not liable to the other party is there is a breach of the agreement.
lxvi
The Financial Contribution: The ways in which the Project may be funded by the parties are very
varied and will need to be negotiated.
This Schedule should set out complete details of the Financial Contribution to be paid by each party,
e.g. whether the Financial Contribution is a fixed price or, where it is on a costs basis, the types of
expenditure which will be reimbursed, the maximum amount (if any) which will be paid, any
milestones to be met and any conditions attaching to payment.
The parties may agree that the Sponsor will cover increases in salary (or at least those in line with
national pay awards), superannuation and NI contributions. In that case this Schedule should reflect
this.
lxvii
The Project: This Schedule should contain a full description of the Project, clearly setting out what
each party is to do (with a timetable if appropriate), and the human resources, facilities and
equipment which each party is to provide. The list of the matters in this Schedule is not exhaustive
and there may be additional issues which are important to the Project.
Unless this Schedule states otherwise, all equipment bought by the Institute with the Financial
Contribution or External Funding will belong to the Institute rather than the Sponsor.
If either party is to recruit any key personnel, and whether the approval of the other party is
necessary, should be clearly stated in this Schedule.
If any equipment is provided on loan, this Schedule should set out responsibility for keeping it in
good condition, maintaining and insuring it.
88
GUIDANCE NOTES- 1B
An explanation of how to interpret Model Agreement 1B
Exclusive or Non-Exclusive Licence: Clause 4 contains alternative wording so that
the University (which retains ownership of the IPR) grants the Sponsor either:
lxviii
- a non-exclusive licence; or
- an exclusive licence,
depending on the wording chosen. Which alternative is chosen will depend on factors
such as the bargaining strengths of the parties and their respective contributions
(financial and otherwise) to the Project.
By granting a non-exclusive licence in a Field and Territory, the University is precluded from granting
exclusive rights to any third party in the same field and in the same territory, but it may grant nonexclusive licences to other parties.
Before choosing which form of model agreement to use, it is important to agree the
basic terms with the other party. You may find the accompanying checklist a useful tool
to help you do this.
Please see the notes on clause 4 for an explanation of exclusive and non-exclusive (and
sole) licences.
lxix
Names of the Parties: The full corporate names of both of the parties should appear at the
beginning of the Agreement.
lxx
Company Numbers: A company formed in India is allocated a unique corporate identity number
(CIN) which gives the company’s listing status, its economic activity, the state in which its registered
office is located, ownership (e.g. union government company/state government company/private
limited company or public limited company), its year of incorporation and which ends with the
unique sequential number assigned to every company by the Registrar of Companies (RoCs) office of
the relevant Indian state. Therefore it is advisable to identify the company by its CIN.
Academic Publication: It is important to the career prospects of many academic
researchers that they publish articles and participate at conferences. Therefore the
University and its academics will nearly always wish to publish information about the
Project.
lxxi
Changes to the Agreement: It is important that changes to the Agreement are
properly recorded in writing and signed on behalf of each party. In that way
misunderstandings about each party's commitments may be avoided. A copy of the
document recording the change should be kept with the original signed copy of the
Agreement.
lxxii
89
Background: It is likely that each party will make available for use in the Project,
information, software or materials which already exist or which are developed
independently of the Project. In this agreement each of the parties allows its Background
to be used for the purposes of the Project but not for any other purpose (clause 4.2),
although negotiations may result in Background being used, where necessary, to exploit
the Results.
lxxiii
Although it may not be necessary or possible to identify all of the Background at the start of the
Project, if the success of the Project depends on one or both of the parties making certain
Background available, this needs to be identified and described in Schedule 2.
Note that unless identified Background is included in Schedule 2, as one of the items that a party is
obliged to provide under clause 2.2 that party is not obliged to provide any Background. That will not
prevent it providing Background if it wishes to do so.
If any of the Background is sensitive or for some other reason should not be disclosed beyond the
researchers working on the Project, this should be identified either before, or at the time when the
Background is made available. While academic researchers may want to publish Background as part
of their academic publication of the Results, it may be important that the Background of the Sponsor
remains confidential. It is important that this issue is resolved at the outset. Please refer to the notes
on Confidential Information and Academic Publication.
Consider whether this should be a business day in England (or another part of the
UK) or a business day in India, bearing in mind that public holidays are different in
different countries.
lxxiv
Some collaborators may take the view that all of their Background is commercially
sensitive and must be kept confidential. If that is the case, the words in square brackets
should be deleted. Alternatively, if the intention is that only Background that is identified
as being confidential is to be treated as such, the words in square brackets should be
included. Whether or not those words are included, any information or material which is
to be kept confidential should be marked ‘Confidential’.
lxxv
lxxvi
External Funding: If any funding is provided from the public purse, e.g. any government
department or Ministry there will be conditions attached to that funding which affect the ownership
and exploitation of the Intellectual Property Rights in the Results.
Equally, where funding is provided by any third party, such as a charity, there are likely to be
conditions attached to that funding.
It is important that these are identified at the outset and that the provisions in the agreement do not
conflict with any conditions imposed by the provider of the funding.
90
Some (but not all) Funding Bodies will insist that the party receiving the funding ensures that its
collaborators comply with those terms.
The party receiving the funding should check that the terms of the funding and the terms of the
Agreement are consistent. The agreement may not be suitable for your purposes if the funding
agreement or conditions impose conflicting terms.
Field: If the University grants a non-exclusive licence to the Sponsor under clause
4.6, the Sponsor's use and exploitation of the Intellectual property Rights in the Results
may be limited to a specific business or technological area or field.
lxxvii
This will be particularly useful where the Sponsor's key business area is limited to a specific field
because the Sponsor may have no need for a licence in other fields, so leaving the way clear for the
University, or other licensees of the University, to exploit the Intellectual Property Rights in the
Results in other fields.
Alternatively the licence may apply to all fields of use.
This is something to be negotiated at the outset. For this and other issues, you may find
the accompanying Checklist useful.
lxxviii
Good Data Management Practices: It is important that people are able to rely on the integrity of
the research data and that adequate records are kept, not only for the purposes of filing patents but
also to be able to demonstrate who created the Results for the purposes of establishing the
ownership of other Intellectual Property Rights.
Intellectual Property Rights: The ownership and exploitation of Intellectual
Property Rights is one of the most difficult issues and the parties should try to resolve it
early when negotiating the terms of any collaboration.
lxxix
An explanation of the different types of Intellectual Property Right can be found at:
http://www.ipo.gov.uk and http://www.ipindia.nic.in/ (for patents, trademarks,
industrial designs and geographical indications) and http://copyright.gov.in/Default.aspx
(for copyright).
lxxx
Key Personnel: Schedule 2 should contain the names of any people whose involvement is
important to the success of the Project. Where most of the work is being done by one party, for
example, the University, the Key Personnel may all be University researchers, but where the Sponsor
is making a substantial ‘human’ contribution to the research activities, some Key Personnel may be
provided by the Sponsor. The significance of the Key Personnel is that if one of them leaves and is
not replaced, the agreement may be terminated under clause 9.2.
91
The Project: One of the most important parts of the agreement is the description of
the Project in Schedule 2. That Schedule and clause 2.2 determine what is to be done
and the resources which are to be provided; the nature of the Intellectual Property
Rights created will flow from the description of the Project and its outputs or results. It is
the cornerstone of the agreement and it is important that the researchers give serious
thought to the contents of Schedule 2 so that it is complete and accurate.
lxxxi
The Sponsor’s Supervisor: Where the Sponsor is making a significant contribution
to the research work, the person leading the Sponsor's team should be named.
Otherwise delete this definition and other references to the Sponsor’s Supervisor.
lxxxii
lxxxiii
The Territory: If the University grants a non-exclusive licence to the Sponsor under clause 4.6,
the Sponsor's use and exploitation of that IP may be limited to a specific geographical area or
territory.
This will be particularly useful where the Sponsor's key business area is limited to a specific territory
because the Sponsor may have no need for a licence in other territories, so leaving the way clear for
the University, or other licensees of the University, to exploit the Intellectual Property Rights in the
Results in other territories.
If the Sponsor's use of the Intellectual Property Rights in the Results is not limited to a specific
territory, you should insert ‘worldwide’ in the definition of the Territory.
This is something to be negotiated at the outset. For this and other issues, you may find
the accompanying Checklist useful.
Time of the Essence: If time is of the essence a failure to keep the agreed
timetable by one party will allow the other party to terminate and possibly to claim
damages. If this is not what the parties intend, insert ‘not’.
lxxxiv
lxxxv
Beginning work before the agreement is signed: If work on the Project has already begun before
the agreement is signed and dated, it is important to make the agreement apply retrospectively to
work already done. Ideally the agreement should be negotiated and signed before work begins.
lxxxvi
Resources: References to each of the parties/neither party should be used where the Sponsor is
contributing resources in addition to the financial contribution and may be carrying out some of the
research.
In the context of clause 2.2, the University may take the view that it should not be obliged to provide
more resources than the Sponsor's financial contribution and any external funding allows. If that is
the case, it may wish to add:
92
‘and in the case of the University, this will be limited to the extent allowed by the Financial
Contribution paid by the Sponsor and any External Funding which the University receives for the
Project’
at the end of the first sentence.
lxxxvii
Ability to carry out the Project: The purpose of clause 2.3 is to ensure that each party either has
or will, at the appropriate time, obtain any consents and approvals (for instance regulatory and
ethical) that may be necessary for it to carry out its responsibilities under the Project.
lxxxviii
No guarantees: Clause 2.5 makes it clear that the success of the Project is not guaranteed; that
is in the nature of a research project. The highlighted wording will depend on whether the Project is
essentially being carried out by the University or whether it is a joint effort.
lxxxix
Reports: In clause 2.6 the parties should agree how frequently reports are to be submitted. The
frequency of reports will depend on the nature and duration of the Project and the requirements of
any third party which provides any funding for the Project.
xc
Hardship Clause: In projects where any financial contribution is not based on the costs incurred,
the parties may agree to include a hardship clause in Schedule 1, providing for the Sponsor meeting
(or at least considering meeting) any unanticipated increases in the University’s overheads.
VAT: Whether or not the University must charge VAT (and the rate of that tax) will
depend on UK law.
xci
Interest on Late Payment: In India the rate of interest on late payment is a matter
for negotiation the parties. 8% over base rate is allowed under the UK Interest on Late
Payments of Commercial Debts (Interest) Act 1998, but the parties often negotiate the
rate of interest on late payments.
xcii
xciii
Conflicts with Funding Conditions: Before entering into any Agreement you should check the
terms of any External Funding and any conflicts should be resolved by amending the terms of the
Agreement or, perhaps, by deciding not to use one of the Agreements.
93
Joint Ownership of Intellectual Property Rights: The University may favour joint
ownership of the Intellectual Property Rights in the Results and the Sponsor may
welcome that as an ‘easy’ solution. But joint ownership is not usually favoured in the UK.
Under English law, what each joint owner may do with the Intellectual Property Rights in
the Results is generally very limited. For instance, although each joint owner may use an
invention, any dealing in the patent which protects that invention, including granting any
licence, requires the permission of the other joint owner(s). That may result in the
Sponsor not being able to commercialise the Intellectual Property Rights and, depending
on the importance of the Intellectual Property Rights to the Sponsor’s business, it may
affect the value of the business, making it more difficult to attract investment or to find
a buyer.
xciv
Under the Indian Patent Law:
-
If a patent is granted to two or more persons each of them has equal rights in the
invention unless they agree to the contrary; if there are three patent owners,
each will have a one-third right in the patent unless they have entered into an
agreement which determines other shares in the invention and in the revenues
from it;
-
each patent owner may work his share for his own benefit without accounting to
the other owner(s); but
-
a licence of the patent may not be granted without the permission of the other
owners. The Controller may, on application, intervene if this is flouted.
If the Agreement is to provide for joint ownership, it should set out the rights of each
joint owner clearly so that there is no misunderstanding. For instance, it might provide
for the Sponsor having the exclusive right to commercialise (with the right to license
others) in certain territories and fields (as if the Sponsor were an exclusive licensee)
without having to obtain the University’s permission.
Thought also needs to be given to:
f)
co-operation in filing for any patent or registering any other Intellectual Property
Right which is jointly owned;
g) both of the joint owners joining in any action against infringers;
h) how the proceeds of exploitation are to be shared between the co-owners;
i) what is to happen to the Sponsor’s share in the Intellectual Property Rights if the
Sponsor is wound up; and
j) what is to happen if the Sponsor wants to sell its business,
and appropriate provision should be included in any agreement which provides for joint
ownership.
Below is an example of the sort of provisions you might include if you want to provide for joint
ownership. They envisage that joint ownership arises because it is not possible to distinguish
between the parties' contribution to any Result. The joint owners may take steps to protect the
jointly owned IP. If one of them does not want to take those steps, the other joint owner may take
them and the owner not wishing to protect the IP must provide reasonable assistance.
94
Both joint owners may deal with and exploit the jointly owned Intellectual Property Rights without
accounting to the other owner(s) for any money made.
Where any Result is created or generated by both parties jointly and it is impossible to
distinguish each party's intellectual contribution to the creation of the Intellectual
Property Rights in that Result, the Intellectual Property Rights in that Result will be
owned by those parties in equal shares. The joint owners may take such steps as they
may decide from time to time, at their joint and equal expense, to register and maintain
any protection for those Intellectual Property Rights, including filing and prosecuting
patent applications for any Result, and taking any action in respect of any alleged or
actual infringement of those Intellectual Property Rights. If one of the joint owners does
not wish to take any such step or action, the other joint owner may do so at its expense,
and the party not wishing to take such steps or action will provide, at the expense of the
party making the request, any assistance which is reasonably requested of it.
Any joint owner of any of the Intellectual Property Rights in any Result may deal with and exploit that
Intellectual Property as though it were the sole owner, without being required to account to the other
joint owner for any share in the revenues generated by that dealing or exploitation or any proceeds
of sale, provided that no joint owner may grant any third party any rights which detract from the
other joint owner’s right to deal with any jointly owned Intellectual Property Right as it sees fit.
If you intend Intellectual Property Rights created by one party to be jointly owned, the
agreement will need to contain an assignment from the party creating those Intellectual
Property Rights to the parties jointly.
xcv
Background: Clause 4.1 clarifies that the agreement is are concerned only with the ownership and
right to exploit the Intellectual Property Rights the outputs or Results of the Project; the ownership
and exploitation of other Intellectual Property Rights are not affected.
Under clause 4, if either party provides any Background, the other party may not exploit it
commercially or use it for any purpose except the Project; in clause 4.2 the licence to use
Background is for the purposes of the Project only. The parties may wish to consider extending the
licence of Background so that it can be used where necessary for the exploitation of the Results.
Unless a party designates any of its Background as confidential, it may be used it in connection with
the Academic Publication of the Results. (Please see the note on Academic Publication).
Should either party wish to use the other’s Background for any purpose except the
Project, it will need to negotiate the appropriate licence to allow it to do so.
xcvi
xcvii
Registering Copyright: It is not possible to register copyright in the UK. However, it is possible to
register copyright in India. It is not mandatory to do so, but it may make it easier to prove ownership
and to enforce the copyright.
95
xcviii
Patenting Strategy: As the owner of the Intellectual Property Rights in the Results, the University
may or may not decide to patent any invention. If the Sponsor is interested in acquiring exclusive
rights or in taking an assignment of the Intellectual Property Rights in any Results, it may wish the
University to apply for a patent so as to protect those Results. In practice the University and the
Sponsor will need to discuss and agree a patenting strategy.
It is suggested that the Sponsor pays the patenting costs which the University would not otherwise
have incurred, but that if the rights are then licensed or assigned to a third party by the University,
the University then reimburses the Sponsor.
xcix
Subcontractors and Students: Where any student or sub-contractor works on the Project, the
University or the party engaging the sub-contractor should ensure that it has acquired the
Intellectual Property Rights which the student or sub-contractor acquires by virtue of his
involvement in the Project. Those rights will not automatically belong to the party which engages the
sub-contractor.
c
Notifying Results: The obligation in clause 4.5 is to notify any patentable Results promptly, and the
clause leaves the notification of other Results until the time of the next report. This is to reduce the
administrative burden but, depending on the nature of the Project, the parties may wish to consider
amending the clause so that all Results are to be notified promptly.
ci
Licence to the Sponsor: Because the University owns the Intellectual Property Rights in the Results,
the University grants the Sponsor the right to use the Results for any purpose (possibly in a specific
field and/or territory), but the Sponsor has no right to sublicense the use of the Results. If the
Sponsor wishes to sublicense the use of the Results or, if having been granted a non-exclusive
licence, the Sponsor wishes to have exclusive rights, it will need to negotiate with the University to
obtain a further licence.
Exclusive/Non-Exclusive Licence: If the University grants a non-exclusive licence,
both the University and the Sponsor will be able to use and commercialise the
Intellectual Property Rights in the Results, and the University will be able to license other
parties to use and commercialise the Intellectual Property Rights in the Results.
cii
If the University grants an exclusive licence in respect of the Results to the Sponsor,
only the Sponsor will be able to use and commercialise those Intellectual Property Rights
in the territory and the field specified in that licence; the University will not be able to
use and commercialise those Intellectual Property Rights itself in that territory or that
field. Nor will the University be able to license others to do so. But note that in this
agreement the University reserves the right to use the Results for academic purposes
even if it has granted an exclusive licence.
96
It is also possible to grant what is called a sole licence. That means that the Sponsor will
be the only licensee, but the University does not exclude itself from using and
commercialising the Results.
The Financial Return to the University: The financial return to the University is the
Financial Contribution paid by the Sponsor, details of which should be inserted in
Schedule 1. That may take the form of a fixed sum or the payment of royalties (or a
combination of the two). Where the return is in the form an on-going royalty, the words
‘fully paid-up, royalty free’ should be deleted from clause 4.6.
ciii
civ
Time Limited Rights: An approach which the University might consider if it grants an exclusive
licence is to time limit the rights of the Sponsor, allowing it exclusivity for a number of years, and at
the end of that period, the University and the Sponsor both having non-exclusive rights to exploit
the Intellectual Property Rights. That will affect the value of the licence to the Sponsor and,
depending on the importance of the rights to the Sponsor may make it difficult for it to raise
investment or sell its business.
University may not Commercialise: Use this Clause only if an exclusive licence is
granted in clause 4.6. Delete this Clause if a non-exclusive licence is granted in clause
4.6.
cv
cvi
Academic Use and Publication: There is an obvious tension between industry's wish to protect its
information and materials and academia's wish to publish, and it may be necessary for the parties to
discuss how a proposed publication may be amended in order to accommodate the academics'
desire to publish while retaining protection for sensitive information and materials. This issue should
be addressed as early as possible in the negotiations.
The period during which academic publication may be delayed will vary according to the
circumstances and the nature of the information; it may be as little as one month or as much as 12
months (or possibly more). The important thing is to protect information which only has a value
while it is kept confidential and to allow time for a patent application to be made where appropriate.
Theses
Where students are involved in the Project, the Sponsor and the University may agree to add a
clause allowing for the submission of a thesis and its deposit in the University’s library. An example
of that sort of clause is given below. The University will need to have a process in place for
examining theses confidentially and restricting access to them in the library.
Possible Thesis Clauses:
Where, with the agreement of the Sponsor, any registered student of the University has been
involved in the Project, nothing in this Agreement will prevent that student submitting a thesis based
97
on any of the [Results and the] Sponsor's Background for a degree of the University, or the
examination of that thesis by examiners appointed by the University, or the deposit of that thesis in a
library of the University in accordance with the relevant procedures of the University. However, if the
examination or deposit of the thesis would disclose any [Result or any ]of the Sponsor's Background
which is Confidential Information, the University will notify the Sponsor at least [30]OR[60] days
before the thesis is due to be submitted, and the Sponsor may, by giving notice to the University (a
Thesis Notice) within [15]OR[30] days after the Sponsor receives the notice from the University,
require any external examiners or readers of the deposited thesis to sign confidentiality undertakings
as a condition of receipt of the thesis. If the University does not receive a Thesis Notice within that
period, it may proceed with examination and deposit of the thesis.]
Or
Where, with the agreement of the Sponsor, any registered student of the University has been
involved in the Project he will follow the University’s regulations for the submission of any thesis or
theses for examination. In any event the University will procure that the student will submit a draft
thesis to the Principal Investigator and the Sponsor's Supervisor at least [30] days before the date for
submission for examination. The Student may not, without the Sponsor's express written consent,
include in any thesis any of the Sponsor's Background or and Results belonging to Sponsor.]
cvii
Confidentiality - Time Limits: It is common for people to want to limit the time during which
information is to be kept confidential, and this clause allows for that. The danger of imposing a time
limit is that the information may still be commercially sensitive, or should be kept confidential for
some other reason, after the end of the period of confidentiality. The parties should consider
whether information is to be kept confidential indefinitely. If it is, the words in square brackets
should be omitted.
Under Indian law information may be kept confidential indefinitely but any clause which is
effectively a non-compete clause which prevents a person from earning his living for more than 2
years may not be enforceable.
But even if the clause is unlimited in duration, the law will not uphold it so as to protect information
which is in the public domain – see clause 6.2.2.
cviii
Theses and Confidentiality: If the parties have agreed to include a clause allowing for the
examination and submission of thesis, they will need to add the following to the end of clause 6.3:
98
‘; or by the examination or deposit of a student thesis if the University has followed the procedure in
clause 5.2 and has received no Thesis Notice within the period stated in that clause’.
cix
Freedom of Information: Simply stating in the agreement that information (including Background)
is to be kept confidential and/or marking it as confidential will not necessarily guarantee that will be
kept confidential.
In the UK, members of the public have the ‘right to know’ under the Freedom of Information Act
2000 (the FOIA). This means that public authorities (including universities) are obliged to disclose
information on request unless the information comes within one of the exemptions to the Act. For
the purposes of research collaborations, the most likely exemptions are:
a) the information was provided by another person in confidence and its disclosure would
mean that the public authority would be in breach of confidence and could be sued by the
person whose information is disclosed (that is that the disclosure would be an actionable
breach of confidence); or
b) the information is a trade secret or the disclosure would harm someone’s commercial
interests and the public interest in withholding the information outweighs the public interest
in disclosing it.
Even if information is a trade secret or commercially sensitive when it is disclosed to a public body in
the UK, this may have changed in the interim and, whenever a request is made under the FOIA,
public bodies must to decide whether the information falls within one of the exemptions under the
Act at the time the request is made. In practice that will often mean that the public body will need to
consult the person who made the information available before deciding whether or not comply with
the request.
More information about the FOIA can be found at More information about the FOIA can be found at
http://www.ico.gov.uk/.
Warranty re Exports: It is important that this is investigated at the outset. If the
Results of the Project cannot be exported and the Sponsor’s aim is to use them outside
India, the Sponsor’s aims will be frustrated, and nothing in the agreement will be able to
overcome that.
cx
cxi
IPR Warranty: The alternative wordings for clause 7.2 take very different approaches. In the first
version of the clause there is a limited warranty against the infringement of third party rights. The
second set of wording makes it clear that no warranty is given in this respect. This is something
99
which the parties will have to negotiate. Even where a warranty is given, the warranty is qualified
and appropriate searches should be made by the party wishing to exploit any patentable invention.
The words in square brackets in clause 7.2 should be omitted if the second version of clause 7.3 is
used.
Exclusion of Liability: This clause excludes liability except in very specific
circumstances:
cxii
-
under the warranty re exports in clause 7.1;
under the non-infringement warranty in clause 7.2 (if that warranty is given;
under the indemnities in clauses 7.4 and 7.5;
where the law does not allow liability to be excluded (e.g. for personal injury or
death caused by negligence or for fraud – see clauses 7.8.1 and 7.8.2); and
where the parties agree there should be no exclusion of liability (e.g. for
deliberate breach of the agreement or any breach of confidence – see clause
7.8.3).
Both parties should consider whether this results a fair allocation of risk and reward.
cxiii
Indemnity from the Sponsor: The Sponsor agrees to cover the University and its employees (and
possibly its students) against any claim that is brought against them as a result of the Sponsor's use
of the Results or the University’s Background. The rationale for this is that the Sponsor takes the
commercial risks associated with its use of the Intellectual Property Rights.
The indemnity is conditional on the person claiming the benefit of the indemnity letting the Sponsor
know about the claim quickly, not making any admission, allowing the Sponsor to deal with the
claim, helping the Sponsor in dealing with it (at the Sponsor's expense), and mitigating his or its
losses (taking reasonable steps to keep the losses to a reasonable level). These conditions are
imposed to make sure that the University and its employees and students do not make matters
worse and potentially increase the amount of the claim.
The Sponsor will not, however, indemnify anyone if their negligence or deliberate breach of the
Agreement, or a breach of confidence has given rise to the claim or if the person claiming the
indemnity has knowingly infringed third Party Intellectual Property Rights.
The parties should consider whether the Sponsor should be required to have insurance to back up
the indemnity. Larger organisations may self-insure, but where the Sponsor has limited financial
resources, the indemnity may be worthless unless the Sponsor has appropriate insurance.
100
cxiv
Exclusion of Liability for Indirect Loss and Loss of Profits etc.: The object of this clause is to
exclude liability of each party for indirect loss, that is loss that the parties would not necessarily
foresee as being the natural and direct result of a breach of contract or negligence; a loss that is
suffered only because some special circumstance. Liability for loss of profits and revenue, and other
some other types of loss (whether they are direct or indirect) is excluded altogether.
The complete exclusion of loss of profits and revenue may leave the Sponsor with no
worthwhile claim. Both parties should consider whether this results a fair allocation of
risk and reward, especially if the Sponsor is commissioning the research in an area which
is important to its business.
cxv
Cap on Liability for Direct Loss: This clause caps each party's liability by reference to the Sponsor's
payments to the University. The parties might agree that some other level of financial cap is more
justifiable or fairer.
The cap does not apply to liability under the indemnities, but the parties might agree that it should
apply to that liability. If that is the case, the words ‘and except under the indemnity in clause 7.4 and
clause 7.5’ should be deleted.
Some sorts of loss cannot be excluded by law, and the agreement takes the line that it would be
unfair to cap or exclude liability for loss which has been caused by a deliberate breach of the
agreement or any breach of confidence. This principle (in clause 7.8) overrides the limitations and
exclusions in other clauses.
In any case, before agreeing any limitation of liability clause, the parties should consider their
insurance arrangements.
cxvi
Exclusion of Implied Terms and Conditions: The law, such as the Indian Contract Act read with
Sales of Goods Act, and the UK Supply of Good and Services Act, and sometimes the course of
dealing between the parties, can mean that terms are implied into an agreement, even though they
are not actually set out in the agreement. This clause excludes that sort of term. A typical example of
an implied term is that the supplier will use reasonable skill and care or that goods will be fit for
purpose. Only the express terms of the Agreement apply to the Project.
cxvii
Termination on Breach or Insolvency: Either the University or the Sponsor may terminate the
agreement if the other has not complied with the agreement or if the other is insolvent.
101
cxviii
Loss of Key Personnel: In some projects it may make sense to have a right to terminate if Key
Personnel are unavailable and a suitable replacement is not appointed within a specified period.
The use of this clause should be considered carefully; in practice, if a key academic researcher moves
to another University, it may be possible to novate the Agreement with the new University.
cxix
Provisions Surviving Termination: Some provisions of the agreement, especially confidentiality,
intellectual property rights and limitations of liability should survive the end of the end of the Project
or termination of the Agreement.
Note that if on-going payments are to be made, some of the payment terms may also need to
survive the end of the Project.
The University should consider whether the licence to the Sponsor should survive if the agreement is
terminated because the Sponsor has not paid or is insolvent.
Anti-Bribery and Corruption: Under the UK 2010 Bribery Act, a commercial
organisation in the UK commits a criminal offence if any person associated with it bribes
another person,
cxx
It is a defence if the UK organisation can show that it has ’adequate procedures’
designed to prevent bribery by its associated person. Because the
cxxi
Notices: If either party has cause to give a notice under the Agreements, for instance to
terminate, the procedure in this clause must be followed.
cxxii
Assignment of the Agreement: If one party bows out of the Project by assigning or transferring
the Agreement to a new party, the other original party and the new party should consider whether
to execute a novation agreement. This would typically release the party that is bowing out of the
Project from its undertakings (but preserve its obligations of confidentiality) and give the parties an
opportunity to sort out any rights they need to use or exploit the Intellectual Property Rights of the
party leaving the Project.
cxxiii
Entire Agreement: This clause states that the agreement is the entire agreement between the
parties. The parties should think carefully about whether that statement is correct. The effect of this
clause is to remove the possibility that undertakings or understandings given or implied in any other
document have any effect. That may not be appropriate if, for instance, the parties are relying on
what is said in any proposal submitted for external funding. You may also want to include the
Funding Terms if they impose conditions which apply to the relationship between the parties.
102
cxxiv
Governing Law: This clause sets out which country’s laws will be used to interpret the
agreement, including the rights and obligations of the parties.
The choice of governing law should be one of the first things to be decided because only a lawyer
qualified in the relevant law will be able to advise on the effect of that law on the interpretation of
the agreement.
Different Legal Systems: It is important to recognise the differences between the
two legal systems in Indian and England. For instance:
cxxv
c) the limitation period under English law is usually 6 years; under Indian law it is 3
years for breach of contract or infringement of copyright;
d) usually commercial disputes to be resolved in India must be brought before the
District Courts where either the cause of action arises or the defendant is situated
(there are over 600 districts in India), although some High Courts (e.g. the High
Courts of Bombay and Delhi) have exclusive (original) jurisdiction in relation to
commercial disputes.
Issues to consider when deciding on the system of law and how disputes are to be resolved include:
vi) whether the systems of law based on the common law so that the fundamental principles
are broadly analogous;
vii) Whether the judiciary is impartial;
viii) is there a long back-log of cases/does it take a long time to obtain a court order;
ix) the duration of protection for Intellectual Property Rights;
x) the remedies available for infringement of intellectual property rights (e.g. can punitive
damages be awarded and how common are damages for patent infringement.
Insurance: A UK company with litigation insurance should check that its insurance
covers litigation or arbitration in India (or elsewhere) before agreeing to Indian law or to
resolve disputes in any forum except the English courts.
cxxvi
Jurisdiction and Dispute Resolution: It is equally important to decide how
disputes are to be resolved. This clause provides for two possibilities:
cxxvii
iii) arbitration in a location chosen by the parties; or
iv) going to court in England.
Arbitration: Arbitration is seen as the most efficient method of resolving
commercial disputes in India, more so than in the UK. Litigants in India are not keen to
file ordinary civil suits in commercial matters, because of the ad valorem court fees
payable in most cases, and very long delays. In India there is a growing preference for
international arbitration in Singapore.
cxxviii
The International Chamber of Commerce (ICC) is the most popular organisation for
international arbitrations in India and is frequently used by both the public and private
103
sectors. The Singapore International Arbitration Centre (SIAC) has become popular
recently.
Service Outside the Jurisdiction: Where a party is outside England and Wales,
the other party should have the right to serve proceedings on an agent within England or
Wales in order to avoid the need to obtain the court's permission to serve English
proceedings outside the jurisdiction.
cxxix
Proceedings relating to IPR or Confidential Information: This clause is
important because an infringement of Intellectual Property Rights or breach of
confidence may take place anywhere in the world, and the owner of those rights needs
to be free to take action in the most appropriate forum.
cxxx
cxxxi
Signatures: The agreement should be prepared in duplicate and both the University and the
Sponsor should sign both copies. The signed copies should be kept safely. If there is a dispute it may
need to be produced in court.
cxxxii
Signatures of The Principal Investigator and the Sponsor's Supervisor: The parties might
consider asking these people to acknowledge the terms of the agreement as a check that the
researchers are aware of its terms and that those terms reflect what they think they are doing. They
are not parties to the agreement and are not liable to the other party is there is a breach of the
agreement.
cxxxiii
The Financial Contribution: The ways in which the Project may be funded by the parties are
very varied and will need to be negotiated.
This Schedule should set out complete details of the Financial Contribution to be paid by each party,
e.g. whether the Financial Contribution is a fixed price or, where it is on a costs basis, the types of
expenditure which will be reimbursed, the maximum amount (if any) which will be paid, any
milestones to be met and any conditions attaching to payment.
The parties may agree that the Sponsor will cover increases in salary (or at least those in line with
national pay awards), superannuation and NI contributions. In that case this Schedule should reflect
this.
cxxxiv
The Project: This Schedule should contain a full description of the Project, clearly setting out
what each party is to do (with a timetable if appropriate), and the human resources, facilities and
equipment which each party is to provide. The list of the matters in this Schedule is not exhaustive
and there may be additional issues which are important to the Project.
104
Unless this Schedule states otherwise, all equipment bought by the University with the Financial
Contribution or External Funding will belong to the University rather than the Sponsor.
If either party is to recruit any key personnel, and whether the approval of the other party is
necessary, should be clearly stated in this Schedule.
If any equipment is provided on loan, this Schedule should set out responsibility for keeping it in
good condition, maintaining and insuring it.
105
GUIDANCE NOTES- 2A
An explanation of how to interpret Model Agreement 2A
cxxxv
Names of the Parties: The full corporate names of both of the parties should appear at the
beginning of the Agreement.
cxxxvi
Company Numbers: Although a company may change its name and the address of its registered
office, a company formed in England, Wales or Scotland never changes its registered number.
Therefore, it is advisable to identify the company by its registration number.
Academic Publication: It is important to the career prospects of many academic
researchers that they publish articles and participate at conferences. Therefore the
Institute and its academics will nearly always wish to publish information about the
Project.
cxxxvii
Changes to the Agreement: It is important that changes to the Agreement are
properly recorded in writing and signed on behalf of each party. In that way
misunderstandings about each party's commitments may be avoided. A copy of the
document recording the change should be kept with the original signed copy of the
Agreement.
cxxxviii
Background: It is likely that each party will make available for use in the Project,
information, software or materials which already exist or which are developed
independently of the Project. In this agreement each of the parties allows its Background
to be used for the purposes of the Project but not for any other purpose (clause 4.2),
although negotiations may result in Background being used, where necessary, to exploit
the Results.
cxxxix
Although it may not be necessary or possible to identify all of the Background at the start of the
Project, if the success of the Project depends on one or both of the parties making certain
Background available, this needs to be identified and described in Schedule 2.
Note that unless identified Background is included in Schedule 2, as one of the items that a party is
obliged to provide under clause 2.2 that party is not obliged to provide any Background. That will not
prevent it providing Background if it wishes to do so.
If any of the Background is sensitive or for some other reason should not be disclosed beyond the
researchers working on the Project, this should be identified either before, or at the time when the
Background is made available. While academic researchers may want to publish Background as part
of their academic publication of the Results, it may be important that the Background of the Sponsor
remains confidential. It is important that this issue is resolved at the outset. Please refer to the notes
on Confidential Information and Academic Publication.
106
Consider whether this should be a business day in England (or another part of the UK)
or a business day in India, bearing in mind that public holidays are different in different
countries.
cxl
Some collaborators may take the view that all of their Background is commercially
sensitive and must be kept confidential. If that is the case, the words in square brackets
should be deleted. Alternatively, if the intention is that only Background that is identified
as being confidential is to be treated as such, the words in square brackets should be
included. Whether or not those words are included, any information or material which is
to be kept confidential should be marked ‘Confidential’.
cxli
cxlii
External Funding: If any funding is provided from the public purse, e.g. any government
department or Ministry there will be conditions attached to that funding which affect the ownership
and exploitation of the Intellectual Property Rights in the Results.
Equally, where funding is provided by any third party, such as a charity, there are likely to be
conditions attached to that funding.
It is important that these are identified at the outset and that the provisions in the agreement do not
conflict with any conditions imposed by the provider of the funding.
Some (but not all) Funding Bodies will insist that the party receiving the funding ensures that its
collaborators comply with those terms.
The party receiving the funding should check that the terms of the funding and the terms of the
Agreement are consistent. The agreement may not be suitable for your purposes if the funding
agreement or conditions impose conflicting terms.
cxliii
Good Data Management Practices: It is important that people are able to rely on the integrity of
the research data and that adequate records are kept, not only for the purposes of filing patents but
also to be able to demonstrate who created the Results for the purposes of establishing the
ownership of other Intellectual Property Rights.
Intellectual Property Rights: The ownership and exploitation of Intellectual
Property Rights is one of the most difficult issues and the parties should try to resolve it
early when negotiating the terms of any collaboration.
cxliv
An explanation of the different types of Intellectual Property Right can be found at:
http://www.ipo.gov.uk and http://www.ipindia.nic.in/ (for patents, trademarks,
industrial designs and geographical indications) and http://copyright.gov.in/Default.aspx
(for copyright).
107
cxlv
Key Personnel: Schedule 2 should contain the names of any people whose involvement is
important to the success of the Project. Where most of the work is being done by one party, for
example, the Institute, the Key Personnel may all be Institute researchers, but where the Sponsor is
making a substantial ‘human’ contribution to the research activities, some Key Personnel may be
provided by the Sponsor. The significance of the Key Personnel is that if one of them leaves and is
not replaced, the agreement may be terminated under clause 9.2.
The Project: One of the most important parts of the agreement is the description of
the Project in Schedule 2. That Schedule and clause 2.2 determine what is to be done
and the resources which are to be provided; the nature of the Intellectual Property
Rights created will flow from the description of the Project and its outputs or results. It is
the cornerstone of the agreement and it is important that the researchers give serious
thought to the contents of Schedule 2 so that it is complete and accurate.
cxlvi
The Sponsor’s Supervisor: Where the Sponsor is making a significant contribution
to the research work, the person leading the Sponsor's team should be named.
Otherwise delete this definition and other references to the Sponsor’s Supervisor.
cxlvii
Time of the Essence: If time is of the essence a failure to keep the agreed
timetable by one party will allow the other party to terminate and possibly to claim
damages. If this is not what the parties intend, insert ‘not’.
cxlviii
cxlix
Beginning work before the agreement is signed: If work on the Project has already begun before
the agreement is signed and dated, it is important to make the agreement apply retrospectively to
work already done. Ideally the agreement should be negotiated and signed before work begins.
cl
Resources: References to each of the parties/neither party should be used where the Sponsor is
contributing resources in addition to the financial contribution and may be carrying out some of the
research.
In the context of clause 2.2, the Institute may take the view that it should not be obliged to provide
more resources than the Sponsor's financial contribution and any external funding allows. If that is
the case, it may wish to add:
‘and in the case of the Institute, this will be limited to the extent allowed by the Financial
Contribution paid by the Sponsor and any External Funding which the Institute receives for the
Project’
at the end of the first sentence.
108
cli
Ability to carry out the Project: The purpose of clause 2.3 is to ensure that each party either has or
will, at the appropriate time, obtain any consents and approvals (for instance regulatory and ethical)
that may be necessary for it to carry out its responsibilities under the Project.
clii
No guarantees: Clause 2.5 makes it clear that the success of the Project is not guaranteed; that is
in the nature of a research project. The highlighted wording will depend on whether the Project is
essentially being carried out by the Institute or whether it is a joint effort.
cliii
Reports: In clause 2.6 the parties should agree how frequently reports are to be submitted. The
frequency of reports will depend on the nature and duration of the Project and the requirements of
any third party which provides any funding for the Project.
cliv
Hardship Clause: In projects where any financial contribution is not based on the costs incurred,
the parties may agree to include a hardship clause in Schedule 1, providing for the Sponsor meeting
(or at least considering meeting) any unanticipated increases in the Institute’s overheads.
clv
Sales Tax and VAT: Whether or not the Institute must charge central sales tax, local
sales tax, service tax or VAT (and the rate of that tax) will depend on Indian law.
Interest on Late Payment: In India the rate of interest on late payment is a matter
for negotiation the parties. 8% over base rate is allowed under the UK Interest on Late
Payments of Commercial Debts (Interest) Act 1998, but the parties often negotiate the
rate of interest on late payments.
clvi
clvii
Conflicts with Funding Conditions: Before entering into any Agreement you should check the
terms of any External Funding and any conflicts should be resolved by amending the terms of the
Agreement or, perhaps, by deciding not to use one of the Agreements.
clviii
Joint Ownership of Intellectual Property Rights: The Institute may favour joint
ownership of the Intellectual Property Rights in the Results and the Sponsor may
welcome that as an ‘easy’ solution. But joint ownership is not usually favoured in the UK.
Under English law, what each joint owner may do with the Intellectual Property Rights in
the Results is generally very limited. For instance, although each joint owner may use an
invention, any dealing in the patent which protects that invention, including granting any
licence, requires the permission of the other joint owner(s). That may result in the
Sponsor not being able to commercialise the Intellectual Property Rights and, depending
on the importance of the Intellectual Property Rights to the Sponsor’s business, it may
affect the value of the business, making it more difficult to attract investment or to find
a buyer.
109
Under the Indian Patent Law:
-
If a patent is granted to two or more persons each of them has equal rights in the
invention unless they agree to the contrary; if there are three patent owners,
each will have a one-third right in the patent unless they have entered into an
agreement which determines other shares in the invention and in the revenues
from it;
-
each patent owner may work his share for his own benefit without accounting to
the other owner(s); but
-
a licence of the patent may not be granted without the permission of the other
owners. The Controller may, on application, intervene if this is flouted.
If the Agreement is to provide for joint ownership, it should set out the rights of each
joint owner clearly so that there is no misunderstanding. For instance, it might provide
for the Sponsor having the exclusive right to commercialise (with the right to license
others) in certain territories and fields (as if the Sponsor were an exclusive licensee)
without having to obtain the Institute’s permission.
Thought also needs to be given to:
k) co-operation in filing for any patent or registering any other Intellectual Property
Right which is jointly owned;
l) both of the joint owners joining in any action against infringers;
m) how the proceeds of exploitation are to be shared between the co-owners;
n) what is to happen to the Sponsor’s share in the Intellectual Property Rights if the
Sponsor is wound up; and
o) what is to happen if the Sponsor wants to sell its business,
and appropriate provision should be included in any agreement which provides for joint
ownership.
Below is an example of the sort of provisions you might include if you want to provide for joint
ownership. They envisage that joint ownership arises because it is not possible to distinguish
between the parties' contribution to any Result. The joint owners may take steps to protect the
jointly owned IP. If one of them does not want to take those steps, the other joint owner may take
them and the owner not wishing to protect the IP must provide reasonable assistance.
Both joint owners may deal with and exploit the jointly owned Intellectual Property Rights without
accounting to the other owner(s) for any money made.
Where any Result is created or generated by both parties jointly and it is impossible to
distinguish each party's intellectual contribution to the creation of the Intellectual
Property Rights in that Result, the Intellectual Property Rights in that Result will be
owned by those parties in equal shares. The joint owners may take such steps as they
may decide from time to time, at their joint and equal expense, to register and maintain
any protection for those Intellectual Property Rights, including filing and prosecuting
patent applications for any Result, and taking any action in respect of any alleged or
actual infringement of those Intellectual Property Rights. If one of the joint owners does
110
not wish to take any such step or action, the other joint owner may do so at its expense,
and the party not wishing to take such steps or action will provide, at the expense of the
party making the request, any assistance which is reasonably requested of it.
Any joint owner of any of the Intellectual Property Rights in any Result may deal with and exploit that
Intellectual Property as though it were the sole owner, without being required to account to the other
joint owner for any share in the revenues generated by that dealing or exploitation or any proceeds
of sale, provided that no joint owner may grant any third party any rights which detract from the
other joint owner’s right to deal with any jointly owned Intellectual Property Right as it sees fit.
If you intend Intellectual Property Rights created by one party to be jointly owned, the
agreement will need to contain an assignment from the party creating those Intellectual
Property Rights to the parties jointly.
clix
Background: Clause 4.1 clarifies that the agreement is are concerned only with the ownership and
right to exploit the Intellectual Property Rights the outputs or Results of the Project; the ownership
and exploitation of other Intellectual Property Rights are not affected.
Under clause 4, if either party provides any Background, the other party may not exploit it
commercially or use it for any purpose except the Project; in clause 4.2 the licence to use
Background is for the purposes of the Project only. The parties may wish to consider extending the
licence of Background so that it can be used where necessary for the exploitation of the Results.
Unless a party designates any of its Background as confidential, it may be used it in connection with
the Academic Publication of the Results. (Please see the note on Academic Publication).
Should either party wish to use the other’s Background for any purpose except the
Project, it will need to negotiate the appropriate licence to allow it to do so.
clx
clxi
Registering Copyright: It is not possible to register copyright in the UK. However, it is possible to
register copyright in India. It is not mandatory to do so, but it may make it easier to prove ownership
and to enforce the copyright.
clxii
Patenting Strategy: As the owner of the Intellectual Property Rights in the Results, the Sponsor
may or may not decide to patent any invention. If the Institute wants any invention to be patented it
will need to discuss and agree a patenting strategy with the Sponsor.
Subcontractors and Students: Where any student or sub-contractor works on the
Project, the Institute or the party engaging the sub-contractor should ensure that it has
acquired the Intellectual Property Rights which the student or sub-contractor acquires by
virtue of his involvement in the Project. Those rights will not automatically belong to the
party which engages the sub-contractor.
clxiii
111
clxiv
Assignment of IPR: Although the agreement provides for the Sponsor owning the Intellectual
Property Rights in any of the Results created by the Institute, those Intellectual Property Rights need
to be transferred or assigned to the Sponsor.
Some forms of Intellectual Property Rights, such as copyright, can be assigned in advance or
prospectively assigned, i.e. before they are created or come into existence, but that is not always the
case. The Intellectual Property Rights are assigned in advance where the law allows that, and where
Intellectual Property Rights cannot be assigned in advance there is an agreement to assign them
later, once they have come into existence.
Under Indian copyright law if the assignment is not stated to be ‘in perpetuity’, an
assignment of copyright is only for 5 years.
clxv
clxvi
Alternatively the assignment may relate to a particular territory.
clxvii
Re-assignment of IPR: The Institute may wish to include a provision which re-assigns rights to
the Institute if certain targets for on-going payments are not met, or if the Sponsor is not exploiting
the Intellectual Property Rights, but this sort of clause may not be effective if the Sponsor is
insolvent.
If there is any concern about the solvency of the Sponsor to whom any Intellectual Property Rights
are to be assigned, the Sponsor may prefer to grant an exclusive licence which can be terminated on
the Sponsor’s breach or insolvency. (See Model 1.)
clxviii
Notifying Results: The obligation in clause 4.5 is to notify any patentable Results promptly, and
the clause leaves the notification of other Results until the time of the next report. This is to reduce
the administrative burden but, depending on the nature of the Project, the parties may wish to
consider amending the clause so that all Results are to be notified promptly.
clxix
Academic Use and Publication: There is an obvious tension between industry's wish to protect its
information and materials and academia's wish to publish, and it may be necessary for the parties to
discuss how a proposed publication may be amended in order to accommodate the academics'
desire to publish while retaining protection for sensitive information and materials. This issue should
be addressed as early as possible in the negotiations.
The period during which academic publication may be delayed will vary according to the
circumstances and the nature of the information; it may be as little as one month or as much as 12
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months (or possibly more). The important thing is to protect information which only has a value
while it is kept confidential and to allow time for a patent application to be made where appropriate.
Theses
Where students are involved in the Project, the Sponsor and the Institute may agree to add a clause
allowing for the submission of a thesis and its deposit in the Institute’s library. An example of that
sort of clause is given below. The Institute will need to have a process in place for examining theses
confidentially and restricting access to them in the library.
Possible Thesis Clauses:
Where, with the agreement of the Sponsor, any registered student of the Institute has been involved
in the Project, nothing in this Agreement will prevent that student submitting a thesis based on any
of the [Results and the] Sponsor's Background for a degree of the Institute, or the examination of
that thesis by examiners appointed by the Institute, or the deposit of that thesis in a library of the
Institute in accordance with the relevant procedures of the Institute. However, if the examination or
deposit of the thesis would disclose any [Result or any ]of the Sponsor's Background which is
Confidential Information, the Institute will notify the Sponsor at least [30]OR[60] days before the
thesis is due to be submitted, and the Sponsor may, by giving notice to the Institute (a Thesis Notice)
within [15]OR[30] days after the Sponsor receives the notice from the Institute, require any external
examiners or readers of the deposited thesis to sign confidentiality undertakings as a condition of
receipt of the thesis. If the Institute does not receive a Thesis Notice within that period, it may
proceed with examination and deposit of the thesis.]
Or
Where, with the agreement of the Sponsor, any registered student of the Institute has been involved
in the Project he will follow the Institute’s regulations for the submission of any thesis or theses for
examination. In any event the Institute will procure that the student will submit a draft thesis to the
Principal Investigator and the Sponsor's Supervisor at least [30] days before the date for submission
for examination. The Student may not, without the Sponsor's express written consent, include in any
thesis any of the Sponsor's Background or and Results belonging to Sponsor.]
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Confidentiality - Time Limits: It is common for people to want to limit the time during which
information is to be kept confidential, and this clause allows for that. The danger of imposing a time
limit is that the information may still be commercially sensitive, or should be kept confidential for
some other reason, after the end of the period of confidentiality. The parties should consider
whether information is to be kept confidential indefinitely. If it is, the words in square brackets
should be omitted.
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Under Indian law information may be kept confidential indefinitely but any clause which is
effectively a non-compete clause which prevents a person from earning his living for more than 2
years may not be enforceable.
But even if the clause is unlimited in duration, the law will not uphold it so as to protect information
which is in the public domain – see clause 6.2.2.
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Theses and Confidentiality: If the parties have agreed to include a clause allowing for the
examination and submission of thesis, they will need to add the following to the end of clause 6.3:
‘; or by the examination or deposit of a student thesis if the Institute has followed the procedure in
clause 5.2 and has received no Thesis Notice within the period stated in that clause’.
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Right to Information: Simply stating in the agreement that information (including Background) is
to be kept confidential and/or marking it as confidential will not necessarily guarantee that will be
kept confidential.
Indian Research Institutes (both governmental and non-governmental) are required to
provide information under the Right to Information Act 2005. This includes a) the name
of the project/the title of the agreement; b) the sponsor; and c) the amount of money
involved.
There are exemptions for commercially confidential information, trade secrets and intellectual
property, the disclosure of which would harm the competitive position of a third party, unless the
competent authority is satisfied that larger public interest warrants the disclosure of that
information.
Warranty re Exports: It is important that this is investigated at the outset. If the
Results of the Project cannot be exported and the Sponsor’s aim is to use them outside
India, the Sponsor’s aims will be frustrated, and nothing in the agreement will be able to
overcome that.
clxxiii
clxxiv
IPR Warranty: The alternative wordings for clause 7.2 take very different approaches. In the first
version of the clause there is a limited warranty against the infringement of third party rights. The
second set of wording makes it clear that no warranty is given in this respect. This is something
which the parties will have to negotiate. Even where a warranty is given, the warranty is qualified
and appropriate searches should be made by the party wishing to exploit any patentable invention.
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The words in square brackets in clause 7.2 should be omitted if the second version of clause 7.3 is
used.
Exclusion of Liability: This clause excludes liability except in very specific
circumstances:
clxxv
-
under the warranty re exports in clause 7.1;
under the non-infringement warranty in clause 7.2 (if that warranty is given;
under the indemnities in clauses 7.4 and 7.5;
where the law does not allow liability to be excluded (e.g. for personal injury or
death caused by negligence or for fraud – see clauses 7.8.1 and 7.8.2); and
where the parties agree there should be no exclusion of liability (e.g. for
deliberate breach of the agreement or any breach of confidence – see clause
7.8.3).
Both parties should consider whether this results a fair allocation of risk and reward.
clxxvi
Indemnity from the Sponsor: The Sponsor agrees to cover the Institute and its employees (and
possibly its students) against any claim that is brought against them as a result of the Sponsor's use
of the Results or the Institute’s Background. The rationale for this is that the Sponsor takes the
commercial risks associated with its use of the Intellectual Property Rights.
The indemnity is conditional on the person claiming the benefit of the indemnity letting the Sponsor
know about the claim quickly, not making any admission, allowing the Sponsor to deal with the
claim, helping the Sponsor in dealing with it (at the Sponsor's expense), and mitigating his or its
losses (taking reasonable steps to keep the losses to a reasonable level). These conditions are
imposed to make sure that the Institute and its employees and students do not make matters worse
and potentially increase the amount of the claim.
The Sponsor will not, however, indemnify anyone if their negligence or deliberate breach of the
Agreement, or a breach of confidence has given rise to the claim or if the person claiming the
indemnity has knowingly infringed third Party Intellectual Property Rights.
The parties should consider whether the Sponsor should be required to have insurance to back up
the indemnity. Larger organisations may self-insure, but where the Sponsor has limited financial
resources, the indemnity may be worthless unless the Sponsor has appropriate insurance.
clxxvii
Exclusion of Liability for Indirect Loss and Loss of Profits etc.: The object of this clause is to
exclude liability of each party for indirect loss, that is loss that the parties would not necessarily
foresee as being the natural and direct result of a breach of contract or negligence; a loss that is
suffered only because some special circumstance. Liability for loss of profits and revenue, and other
some other types of loss (whether they are direct or indirect) is excluded altogether.
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The complete exclusion of loss of profits and revenue may leave the Sponsor with no
worthwhile claim. Both parties should consider whether this results a fair allocation of
risk and reward, especially if the Sponsor is commissioning the research in an area which
is important to its business.
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Cap on Liability for Direct Loss: This clause caps each party's liability by reference to the
Sponsor's payments to the Institute. The parties might agree that some other level of financial cap is
more justifiable or fairer.
The cap does not apply to liability under the indemnities, but the parties might agree that it should
apply to that liability. If that is the case, the words ‘and except under the indemnity in clause 7.4 and
clause 7.5’ should be deleted.
Some sorts of loss cannot be excluded by law, and the agreement takes the line that it would be
unfair to cap or exclude liability for loss which has been caused by a deliberate breach of the
agreement or any breach of confidence. This principle (in clause 7.8) overrides the limitations and
exclusions in other clauses.
In any case, before agreeing any limitation of liability clause, the parties should consider their
insurance arrangements.
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Exclusion of Implied Terms and Conditions: The law, such as the Indian Contract Act read with
Sales of Goods Act, and the UK Supply of Good and Services Act, and sometimes the course of
dealing between the parties, can mean that terms are implied into an agreement, even though they
are not actually set out in the agreement. This clause excludes that sort of term. A typical example of
an implied term is that the supplier will use reasonable skill and care or that goods will be fit for
purpose. Only the express terms of the Agreement apply to the Project.
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Warranty of Full Title Guarantee: Where the Institute is undertaking contract research for the
Sponsor, the Sponsor may want the Institute to assign ‘with full title guarantee’. If the Institute gives
that warranty, under English law, it is promising that:
-
it has the right to dispose of the Intellectual Property Rights and that it will, at its own cost,
do all that it reasonably can to give the title (ownership) that it purports to give; and
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-
the Intellectual Property Rights are free from all charges and encumbrances (such as a
mortgage) and rights of third parties (except those which the Institute does not know about
or could not be expected to know about).
The parties will need to discuss whether the Institute is willing to assign with full title guarantee or
whether the fuller alternative wording in this clause should be amended to fit the circumstances.
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Termination on Breach or Insolvency: Either the Institute or the Sponsor may terminate the
agreement if the other has not complied with the agreement or if the other is insolvent.
clxxxii
Loss of Key Personnel: In some projects it may make sense to have a right to terminate if Key
Personnel are unavailable and a suitable replacement is not appointed within a specified period.
The use of this clause should be considered carefully; in practice, if a key academic researcher moves
to another institute, it may be possible to novate the Agreement with the new institute.
clxxxiii
Provisions Surviving Termination: Some provisions of the agreement, especially confidentiality,
intellectual property rights and limitations of liability should survive the end of the end of the Project
or termination of the Agreement.
Note that if on-going payments are to be made, some of the payment terms may also need to
survive the end of the Project.
The Institute should consider whether the licence to the Sponsor should survive if the agreement is
terminated because the Sponsor has not paid or is insolvent.
Anti-Bribery and Corruption: Under the UK 2010 Bribery Act, a commercial
organisation in the UK commits a criminal offence if any person associated with it bribes
another person,
clxxxiv
It is a defence if the UK organisation can show that it has ’adequate procedures’
designed to prevent bribery by its associated person. Because the
clxxxv
Notices: If either party has cause to give a notice under the Agreements, for instance to
terminate, the procedure in this clause must be followed.
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Assignment of the Agreement: If one party bows out of the Project by assigning or transferring
the Agreement to a new party, the other original party and the new party should consider whether
to execute a novation agreement. This would typically release the party that is bowing out of the
Project from its undertakings (but preserve its obligations of confidentiality) and give the parties an
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opportunity to sort out any rights they need to use or exploit the Intellectual Property Rights of the
party leaving the Project.
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Entire Agreement: This clause states that the agreement is the entire agreement between the
parties. The parties should think carefully about whether that statement is correct. The effect of this
clause is to remove the possibility that undertakings or understandings given or implied in any other
document have any effect. That may not be appropriate if, for instance, the parties are relying on
what is said in any proposal submitted for external funding. You may also want to include the
Funding Terms if they impose conditions which apply to the relationship between the parties.
clxxxviii
Governing Law: This clause sets out which country’s laws will be used to interpret the
agreement, including the rights and obligations of the parties.
The choice of governing law should be one of the first things to be decided because only a lawyer
qualified in the relevant law will be able to advise on the effect of that law on the interpretation of
the agreement.
Different Legal Systems: It is important to recognise the differences between the
two legal systems in Indian and England. For instance:
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e) the limitation period under English law is usually 6 years; under Indian law it is 3
years for breach of contract or infringement of copyright;
f)
usually commercial disputes to be resolved in India must be brought before the
District Courts where either the cause of action arises or the defendant is situated
(there are over 600 districts in India), although some High Courts (e.g. the High
Courts of Bombay and Delhi) have exclusive (original) jurisdiction in relation to
commercial disputes.
Issues to consider when deciding on the system of law and how disputes are to be resolved include:
xi) whether the systems of law based on the common law so that the fundamental principles
are broadly analogous;
xii) Whether the judiciary is impartial;
xiii) is there a long back-log of cases/does it take a long time to obtain a court order;
xiv) the duration of protection for Intellectual Property Rights;
xv) the remedies available for infringement of intellectual property rights (e.g. can punitive
damages be awarded and how common are damages for patent infringement.
Insurance: A UK company with litigation insurance should check that its insurance
covers litigation or arbitration in India (or elsewhere) before agreeing to Indian law or to
resolve disputes in any forum except the English courts.
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Jurisdiction and Dispute Resolution: It is equally important to decide how
disputes are to be resolved. This clause provides for two possibilities:
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v) arbitration in a location chosen by the parties; or
vi) going to court in England.
Arbitration: Arbitration is seen as the most efficient method of resolving commercial
disputes in India, more so than in the UK. Litigants in India are not keen to file ordinary
civil suits in commercial matters, because of the ad valorem court fees payable in most
cases, and very long delays. In India there is a growing preference for international
arbitration in Singapore.
cxcii
The International Chamber of Commerce (ICC) is the most popular organisation for
international arbitrations in India and is frequently used by both the public and private
sectors. The Singapore International Arbitration Centre (SIAC) has become popular
recently.
Service Outside the Jurisdiction: Where a party is outside England and Wales, the
other party should have the right to serve proceedings on an agent within England or
Wales in order to avoid the need to obtain the court's permission to serve English
proceedings outside the jurisdiction.
cxciii
Proceedings relating to IPR or Confidential Information: This clause is
important because an infringement of Intellectual Property Rights or breach of
confidence may take place anywhere in the world, and the owner of those rights needs
to be free to take action in the most appropriate forum.
cxciv
cxcv
Signatures: The agreement should be prepared in duplicate and both the Institute and the
Sponsor should sign both copies. The signed copies should be kept safely. If there is a dispute it may
need to be produced in court.
cxcvi
Signatures of The Principal Investigator and the Sponsor's Supervisor: The parties might
consider asking these people to acknowledge the terms of the agreement as a check that the
researchers are aware of its terms and that those terms reflect what they think they are doing. They
are not parties to the agreement and are not liable to the other party is there is a breach of the
agreement.
cxcvii
The Financial Contribution: The ways in which the Project may be funded by the parties are
very varied and will need to be negotiated.
This Schedule should set out complete details of the Financial Contribution to be paid by each party,
e.g. whether the Financial Contribution is a fixed price or, where it is on a costs basis, the types of
expenditure which will be reimbursed, the maximum amount (if any) which will be paid, any
milestones to be met and any conditions attaching to payment.
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The parties may agree that the Sponsor will cover increases in salary (or at least those in line with
national pay awards), superannuation and NI contributions. In that case this Schedule should reflect
this.
cxcviii
The Project: This Schedule should contain a full description of the Project, clearly setting out
what each party is to do (with a timetable if appropriate), and the human resources, facilities and
equipment which each party is to provide. The list of the matters in this Schedule is not exhaustive
and there may be additional issues which are important to the Project.
Unless this Schedule states otherwise, all equipment bought by the Institute with the Financial
Contribution or External Funding will belong to the Institute rather than the Sponsor.
If either party is to recruit any key personnel, and whether the approval of the other party is
necessary, should be clearly stated in this Schedule.
If any equipment is provided on loan, this Schedule should set out responsibility for keeping it in
good condition, maintaining and insuring it.
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GUIDANCE NOTES- 2B
An explanation of how to interpret Model Agreement 2B
cxcix
Names of the Parties: The full corporate names of both of the parties should appear at the
beginning of the Agreement.
cc
Company Numbers: A company formed in India is allocated a unique corporate identity number
(CIN) which gives the company’s listing status, its economic activity, the state in which its registered
office is located, ownership (e.g. union government company/state government company/private
limited company or public limited company), its year of incorporation and which ends with the
unique sequential number assigned to every company by the Registrar of Companies (RoCs) office of
the relevant Indian state. Therefore it is advisable to identify the company by its CIN.
Academic Publication: It is important to the career prospects of many academic
researchers that they publish articles and participate at conferences. Therefore the
University and its academics will nearly always wish to publish information about the
Project.
cci
Changes to the Agreement: It is important that changes to the Agreement are
properly recorded in writing and signed on behalf of each party. In that way
misunderstandings about each party's commitments may be avoided. A copy of the
document recording the change should be kept with the original signed copy of the
Agreement.
ccii
Background: It is likely that each party will make available for use in the Project,
information, software or materials which already exist or which are developed
independently of the Project. In this agreement each of the parties allows its Background
to be used for the purposes of the Project but not for any other purpose (clause 4.2),
although negotiations may result in Background being used, where necessary, to exploit
the Results.
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Although it may not be necessary or possible to identify all of the Background at the start of the
Project, if the success of the Project depends on one or both of the parties making certain
Background available, this needs to be identified and described in Schedule 2.
Note that unless identified Background is included in Schedule 2, as one of the items that a party is
obliged to provide under clause 2.2 that party is not obliged to provide any Background. That will not
prevent it providing Background if it wishes to do so.
If any of the Background is sensitive or for some other reason should not be disclosed beyond the
researchers working on the Project, this should be identified either before, or at the time when the
Background is made available. While academic researchers may want to publish Background as part
of their academic publication of the Results, it may be important that the Background of the Sponsor
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remains confidential. It is important that this issue is resolved at the outset. Please refer to the notes
on Confidential Information and Academic Publication.
Consider whether this should be a business day in England (or another part of the
UK) or a business day in India, bearing in mind that public holidays are different in
different countries.
cciv
Some collaborators may take the view that all of their Background is commercially
sensitive and must be kept confidential. If that is the case, the words in square brackets
should be deleted. Alternatively, if the intention is that only Background that is identified
as being confidential is to be treated as such, the words in square brackets should be
included. Whether or not those words are included, any information or material which is
to be kept confidential should be marked ‘Confidential’.
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ccvi
External Funding: If any funding is provided from the public purse, e.g. any government
department or Ministry there will be conditions attached to that funding which affect the ownership
and exploitation of the Intellectual Property Rights in the Results.
Equally, where funding is provided by any third party, such as a charity, there are likely to be
conditions attached to that funding.
It is important that these are identified at the outset and that the provisions in the agreement do not
conflict with any conditions imposed by the provider of the funding.
Some (but not all) Funding Bodies will insist that the party receiving the funding ensures that its
collaborators comply with those terms.
The party receiving the funding should check that the terms of the funding and the terms of the
Agreement are consistent. The agreement may not be suitable for your purposes if the funding
agreement or conditions impose conflicting terms.
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Good Data Management Practices: It is important that people are able to rely on the integrity of
the research data and that adequate records are kept, not only for the purposes of filing patents but
also to be able to demonstrate who created the Results for the purposes of establishing the
ownership of other Intellectual Property Rights.
Intellectual Property Rights: The ownership and exploitation of Intellectual
Property Rights is one of the most difficult issues and the parties should try to resolve it
early when negotiating the terms of any collaboration.
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An explanation of the different types of Intellectual Property Right can be found at:
http://www.ipo.gov.uk and http://www.ipindia.nic.in/ (for patents, trademarks,
industrial designs and geographical indications) and http://copyright.gov.in/Default.aspx
(for copyright).
ccix
Key Personnel: Schedule 2 should contain the names of any people whose involvement is
important to the success of the Project. Where most of the work is being done by one party, for
example, the University, the Key Personnel may all be University researchers, but where the Sponsor
is making a substantial ‘human’ contribution to the research activities, some Key Personnel may be
provided by the Sponsor. The significance of the Key Personnel is that if one of them leaves and is
not replaced, the agreement may be terminated under clause 9.2.
The Project: One of the most important parts of the agreement is the description of
the Project in Schedule 2. That Schedule and clause 2.2 determine what is to be done
and the resources which are to be provided; the nature of the Intellectual Property
Rights created will flow from the description of the Project and its outputs or results. It is
the cornerstone of the agreement and it is important that the researchers give serious
thought to the contents of Schedule 2 so that it is complete and accurate.
ccx
The Sponsor’s Supervisor: Where the Sponsor is making a significant contribution
to the research work, the person leading the Sponsor's team should be named.
Otherwise delete this definition and other references to the Sponsor’s Supervisor.
ccxi
Time of the Essence: If time is of the essence a failure to keep the agreed
timetable by one party will allow the other party to terminate and possibly to claim
damages. If this is not what the parties intend, insert ‘not’.
ccxii
ccxiii
Beginning work before the agreement is signed: If work on the Project has already begun before
the agreement is signed and dated, it is important to make the agreement apply retrospectively to
work already done. Ideally the agreement should be negotiated and signed before work begins.
ccxiv
Resources: References to each of the parties/neither party should be used where the Sponsor is
contributing resources in addition to the financial contribution and may be carrying out some of the
research.
In the context of clause 2.2, the University may take the view that it should not be obliged to provide
more resources than the Sponsor's financial contribution and any external funding allows. If that is
the case, it may wish to add:
‘and in the case of the University, this will be limited to the extent allowed by the Financial
Contribution paid by the Sponsor and any External Funding which the University receives for the
Project’
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at the end of the first sentence.
ccxv
Ability to carry out the Project: The purpose of clause 2.3 is to ensure that each party either has
or will, at the appropriate time, obtain any consents and approvals (for instance regulatory and
ethical) that may be necessary for it to carry out its responsibilities under the Project.
ccxvi
No guarantees: Clause 2.5 makes it clear that the success of the Project is not guaranteed; that is
in the nature of a research project. The highlighted wording will depend on whether the Project is
essentially being carried out by the University or whether it is a joint effort.
ccxvii
Reports: In clause 2.6 the parties should agree how frequently reports are to be submitted. The
frequency of reports will depend on the nature and duration of the Project and the requirements of
any third party which provides any funding for the Project.
ccxviii
Hardship Clause: In projects where any financial contribution is not based on the costs incurred,
the parties may agree to include a hardship clause in Schedule 1, providing for the Sponsor meeting
(or at least considering meeting) any unanticipated increases in the University’s overheads.
VAT: Whether or not the University must charge VAT (and the rate of that tax) will
depend on UK law.
ccxix
Interest on Late Payment: In India the rate of interest on late payment is a matter
for negotiation the parties. 8% over base rate is allowed under the UK Interest on Late
Payments of Commercial Debts (Interest) Act 1998, but the parties often negotiate the
rate of interest on late payments.
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ccxxi
Conflicts with Funding Conditions: Before entering into any Agreement you should check the
terms of any External Funding and any conflicts should be resolved by amending the terms of the
Agreement or, perhaps, by deciding not to use one of the Agreements.
Joint Ownership of Intellectual Property Rights: The University may favour
joint ownership of the Intellectual Property Rights in the Results and the Sponsor may
welcome that as an ‘easy’ solution. But joint ownership is not usually favoured in the UK.
Under English law, what each joint owner may do with the Intellectual Property Rights in
the Results is generally very limited. For instance, although each joint owner may use an
invention, any dealing in the patent which protects that invention, including granting any
licence, requires the permission of the other joint owner(s). That may result in the
Sponsor not being able to commercialise the Intellectual Property Rights and, depending
ccxxii
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on the importance of the Intellectual Property Rights to the Sponsor’s business, it may
affect the value of the business, making it more difficult to attract investment or to find
a buyer.
Under the Indian Patent Law:
-
If a patent is granted to two or more persons each of them has equal rights in the
invention unless they agree to the contrary; if there are three patent owners,
each will have a one-third right in the patent unless they have entered into an
agreement which determines other shares in the invention and in the revenues
from it;
-
each patent owner may work his share for his own benefit without accounting to
the other owner(s); but
-
a licence of the patent may not be granted without the permission of the other
owners. The Controller may, on application, intervene if this is flouted.
If the Agreement is to provide for joint ownership, it should set out the rights of each
joint owner clearly so that there is no misunderstanding. For instance, it might provide
for the Sponsor having the exclusive right to commercialise (with the right to license
others) in certain territories and fields (as if the Sponsor were an exclusive licensee)
without having to obtain the University’s permission.
Thought also needs to be given to:
p) co-operation in filing for any patent or registering any other Intellectual Property
Right which is jointly owned;
q) both of the joint owners joining in any action against infringers;
r) how the proceeds of exploitation are to be shared between the co-owners;
s) what is to happen to the Sponsor’s share in the Intellectual Property Rights if the
Sponsor is wound up; and
t) what is to happen if the Sponsor wants to sell its business,
and appropriate provision should be included in any agreement which provides for joint
ownership.
Below is an example of the sort of provisions you might include if you want to provide for joint
ownership. They envisage that joint ownership arises because it is not possible to distinguish
between the parties' contribution to any Result. The joint owners may take steps to protect the
jointly owned IP. If one of them does not want to take those steps, the other joint owner may take
them and the owner not wishing to protect the IP must provide reasonable assistance.
Both joint owners may deal with and exploit the jointly owned Intellectual Property Rights without
accounting to the other owner(s) for any money made.
Where any Result is created or generated by both parties jointly and it is impossible to
distinguish each party's intellectual contribution to the creation of the Intellectual
Property Rights in that Result, the Intellectual Property Rights in that Result will be
owned by those parties in equal shares. The joint owners may take such steps as they
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may decide from time to time, at their joint and equal expense, to register and maintain
any protection for those Intellectual Property Rights, including filing and prosecuting
patent applications for any Result, and taking any action in respect of any alleged or
actual infringement of those Intellectual Property Rights. If one of the joint owners does
not wish to take any such step or action, the other joint owner may do so at its expense,
and the party not wishing to take such steps or action will provide, at the expense of the
party making the request, any assistance which is reasonably requested of it.
Any joint owner of any of the Intellectual Property Rights in any Result may deal with and exploit that
Intellectual Property as though it were the sole owner, without being required to account to the other
joint owner for any share in the revenues generated by that dealing or exploitation or any proceeds
of sale, provided that no joint owner may grant any third party any rights which detract from the
other joint owner’s right to deal with any jointly owned Intellectual Property Right as it sees fit.
If you intend Intellectual Property Rights created by one party to be jointly owned, the
agreement will need to contain an assignment from the party creating those Intellectual
Property Rights to the parties jointly.
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Background: Clause 4.1 clarifies that the agreement is are concerned only with the ownership
and right to exploit the Intellectual Property Rights the outputs or Results of the Project; the
ownership and exploitation of other Intellectual Property Rights are not affected.
Under clause 4, if either party provides any Background, the other party may not exploit it
commercially or use it for any purpose except the Project; in clause 4.2 the licence to use
Background is for the purposes of the Project only. The parties may wish to consider extending the
licence of Background so that it can be used where necessary for the exploitation of the Results.
Unless a party designates any of its Background as confidential, it may be used it in connection with
the Academic Publication of the Results. (Please see the note on Academic Publication).
Should either party wish to use the other’s Background for any purpose except the
Project, it will need to negotiate the appropriate licence to allow it to do so.
ccxxiv
ccxxv
Registering Copyright: It is not possible to register copyright in the UK. However, it is possible to
register copyright in India. It is not mandatory to do so, but it may make it easier to prove ownership
and to enforce the copyright.
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Patenting Strategy: As the owner of the Intellectual Property Rights in the Results, the Sponsor
may or may not decide to patent any invention. If the University wants any invention to be patented
it will need to discuss and agree a patenting strategy with the Sponsor.
Subcontractors and Students: Where any student or sub-contractor works on
the Project, the University or the party engaging the sub-contractor should ensure that it
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has acquired the Intellectual Property Rights which the student or sub-contractor
acquires by virtue of his involvement in the Project. Those rights will not automatically
belong to the party which engages the sub-contractor.
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Assignment of IPR: Although the agreement provides for the Sponsor owning the Intellectual
Property Rights in any of the Results created by the University, those Intellectual Property Rights
need to be transferred or assigned to the Sponsor.
Some forms of Intellectual Property Rights, such as copyright, can be assigned in advance or
prospectively assigned, i.e. before they are created or come into existence, but that is not always the
case. The Intellectual Property Rights are assigned in advance where the law allows that, and where
Intellectual Property Rights cannot be assigned in advance there is an agreement to assign them
later, once they have come into existence.
Under Indian copyright law if the assignment is not stated to be ‘in perpetuity’, an
assignment of copyright is only for 5 years.
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Alternatively the assignment may relate to a particular territory.
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Re-assignment of IPR: The University may wish to include a provision which re-assigns rights to
the University if certain targets for on-going payments are not met, or if the Sponsor is not exploiting
the Intellectual Property Rights, but this sort of clause may not be effective if the Sponsor is
insolvent.
If there is any concern about the solvency of the Sponsor to whom any Intellectual Property Rights
are to be assigned, the Sponsor may prefer to grant an exclusive licence which can be terminated on
the Sponsor’s breach or insolvency. (See Model 1.)
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Notifying Results: The obligation in clause 4.5 is to notify any patentable Results promptly, and
the clause leaves the notification of other Results until the time of the next report. This is to reduce
the administrative burden but, depending on the nature of the Project, the parties may wish to
consider amending the clause so that all Results are to be notified promptly.
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Academic Use and Publication: There is an obvious tension between industry's wish to protect
its information and materials and academia's wish to publish, and it may be necessary for the parties
to discuss how a proposed publication may be amended in order to accommodate the academics'
desire to publish while retaining protection for sensitive information and materials. This issue should
be addressed as early as possible in the negotiations.
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The period during which academic publication may be delayed will vary according to the
circumstances and the nature of the information; it may be as little as one month or as much as 12
months (or possibly more). The important thing is to protect information which only has a value
while it is kept confidential and to allow time for a patent application to be made where appropriate.
Theses
Where students are involved in the Project, the Sponsor and the University may agree to add a
clause allowing for the submission of a thesis and its deposit in the University’s library. An example
of that sort of clause is given below. The University will need to have a process in place for
examining theses confidentially and restricting access to them in the library.
Possible Thesis Clauses:
Where, with the agreement of the Sponsor, any registered student of the University has been
involved in the Project, nothing in this Agreement will prevent that student submitting a thesis based
on any of the [Results and the] Sponsor's Background for a degree of the University, or the
examination of that thesis by examiners appointed by the University, or the deposit of that thesis in a
library of the University in accordance with the relevant procedures of the University. However, if the
examination or deposit of the thesis would disclose any [Result or any ]of the Sponsor's Background
which is Confidential Information, the University will notify the Sponsor at least [30]OR[60] days
before the thesis is due to be submitted, and the Sponsor may, by giving notice to the University (a
Thesis Notice) within [15]OR[30] days after the Sponsor receives the notice from the University,
require any external examiners or readers of the deposited thesis to sign confidentiality undertakings
as a condition of receipt of the thesis. If the University does not receive a Thesis Notice within that
period, it may proceed with examination and deposit of the thesis.]
Or
Where, with the agreement of the Sponsor, any registered student of the University has been
involved in the Project he will follow the University’s regulations for the submission of any thesis or
theses for examination. In any event the University will procure that the student will submit a draft
thesis to the Principal Investigator and the Sponsor's Supervisor at least [30] days before the date for
submission for examination. The Student may not, without the Sponsor's express written consent,
include in any thesis any of the Sponsor's Background or and Results belonging to Sponsor.]
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Confidentiality - Time Limits: It is common for people to want to limit the time during which
information is to be kept confidential, and this clause allows for that. The danger of imposing a time
limit is that the information may still be commercially sensitive, or should be kept confidential for
some other reason, after the end of the period of confidentiality. The parties should consider
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whether information is to be kept confidential indefinitely. If it is, the words in square brackets
should be omitted.
Under Indian law information may be kept confidential indefinitely but any clause which is
effectively a non-compete clause which prevents a person from earning his living for more than 2
years may not be enforceable.
But even if the clause is unlimited in duration, the law will not uphold it so as to protect information
which is in the public domain – see clause 6.2.2.
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Theses and Confidentiality: If the parties have agreed to include a clause allowing for the
examination and submission of thesis, they will need to add the following to the end of clause 6.3:
‘; or by the examination or deposit of a student thesis if the University has followed the procedure in
clause 5.2 and has received no Thesis Notice within the period stated in that clause’.
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Freedom of Information: Simply stating in the agreement that information (including
Background) is to be kept confidential and/or marking it as confidential will not necessarily
guarantee that will be kept confidential.
In the UK, members of the public have the ‘right to know’ under the Freedom of Information Act
2000 (the FOIA). This means that public authorities (including universities) are obliged to disclose
information on request unless the information comes within one of the exemptions to the Act. For
the purposes of research collaborations, the most likely exemptions are:
c) the information was provided by another person in confidence and its disclosure would
mean that the public authority would be in breach of confidence and could be sued by the
person whose information is disclosed (that is that the disclosure would be an actionable
breach of confidence); or
d) the information is a trade secret or the disclosure would harm someone’s commercial
interests and the public interest in withholding the information outweighs the public interest
in disclosing it.
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Even if information is a trade secret or commercially sensitive when it is disclosed to a public body in
the UK, this may have changed in the interim and, whenever a request is made under the FOIA,
public bodies must to decide whether the information falls within one of the exemptions under the
Act at the time the request is made. In practice that will often mean that the public body will need to
consult the person who made the information available before deciding whether or not comply with
the request.
More information about the FOIA can be found at http://www.ico.gov.uk/
Warranty re Exports: It is important that this is investigated at the outset. If the
Results of the Project cannot be exported and the Sponsor’s aim is to use them outside
India, the Sponsor’s aims will be frustrated, and nothing in the agreement will be able to
overcome that.
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IPR Warranty: The alternative wordings for clause 7.2 take very different approaches. In the
first version of the clause there is a limited warranty against the infringement of third party rights.
The second set of wording makes it clear that no warranty is given in this respect. This is something
which the parties will have to negotiate. Even where a warranty is given, the warranty is qualified
and appropriate searches should be made by the party wishing to exploit any patentable invention.
The words in square brackets in clause 7.2 should be omitted if the second version of clause 7.3 is
used.
Exclusion of Liability: This clause excludes liability except in very specific
circumstances:
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under the warranty re exports in clause 7.1;
under the non-infringement warranty in clause 7.2 (if that warranty is given;
under the indemnities in clauses 7.4 and 7.5;
where the law does not allow liability to be excluded (e.g. for personal injury or
death caused by negligence or for fraud – see clauses 7.8.1 and 7.8.2); and
where the parties agree there should be no exclusion of liability (e.g. for
deliberate breach of the agreement or any breach of confidence – see clause
7.8.3).
Both parties should consider whether this results a fair allocation of risk and reward.
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Indemnity from the Sponsor: The Sponsor agrees to cover the University and its employees (and
possibly its students) against any claim that is brought against them as a result of the Sponsor's use
of the Results or the University’s Background. The rationale for this is that the Sponsor takes the
commercial risks associated with its use of the Intellectual Property Rights.
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The indemnity is conditional on the person claiming the benefit of the indemnity letting the Sponsor
know about the claim quickly, not making any admission, allowing the Sponsor to deal with the
claim, helping the Sponsor in dealing with it (at the Sponsor's expense), and mitigating his or its
losses (taking reasonable steps to keep the losses to a reasonable level). These conditions are
imposed to make sure that the University and its employees and students do not make matters
worse and potentially increase the amount of the claim.
The Sponsor will not, however, indemnify anyone if their negligence or deliberate breach of the
Agreement, or a breach of confidence has given rise to the claim or if the person claiming the
indemnity has knowingly infringed third Party Intellectual Property Rights.
The parties should consider whether the Sponsor should be required to have insurance to back up
the indemnity. Larger organisations may self-insure, but where the Sponsor has limited financial
resources, the indemnity may be worthless unless the Sponsor has appropriate insurance.
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Exclusion of Liability for Indirect Loss and Loss of Profits etc.: The object of this clause is to
exclude liability of each party for indirect loss, that is loss that the parties would not necessarily
foresee as being the natural and direct result of a breach of contract or negligence; a loss that is
suffered only because some special circumstance. Liability for loss of profits and revenue, and other
some other types of loss (whether they are direct or indirect) is excluded altogether.
The complete exclusion of loss of profits and revenue may leave the Sponsor with no
worthwhile claim. Both parties should consider whether this results a fair allocation of
risk and reward, especially if the Sponsor is commissioning the research in an area which
is important to its business.
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Cap on Liability for Direct Loss: This clause caps each party's liability by reference to the
Sponsor's payments to the University. The parties might agree that some other level of financial cap
is more justifiable or fairer.
The cap does not apply to liability under the indemnities, but the parties might agree that it should
apply to that liability. If that is the case, the words ‘and except under the indemnity in clause 7.4 and
clause 7.5’ should be deleted.
Some sorts of loss cannot be excluded by law, and the agreement takes the line that it would be
unfair to cap or exclude liability for loss which has been caused by a deliberate breach of the
agreement or any breach of confidence. This principle (in clause 7.8) overrides the limitations and
exclusions in other clauses.
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In any case, before agreeing any limitation of liability clause, the parties should consider their
insurance arrangements.
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Exclusion of Implied Terms and Conditions: The law, such as the Indian Contract Act read with
Sales of Goods Act, and the UK Supply of Good and Services Act, and sometimes the course of
dealing between the parties, can mean that terms are implied into an agreement, even though they
are not actually set out in the agreement. This clause excludes that sort of term. A typical example of
an implied term is that the supplier will use reasonable skill and care or that goods will be fit for
purpose. Only the express terms of the Agreement apply to the Project.
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Warranty of Full Title Guarantee: Where the University is undertaking contract research for the
Sponsor, the Sponsor may want the University to assign ‘with full title guarantee’. If the University
gives that warranty, under English law, it is promising that:
-
it has the right to dispose of the Intellectual Property Rights and that it will, at its own cost,
do all that it reasonably can to give the title (ownership) that it purports to give; and
-
the Intellectual Property Rights are free from all charges and encumbrances (such as a
mortgage) and rights of third parties (except those which the University does not know
about or could not be expected to know about).
The parties will need to discuss whether the University is willing to assign with full title guarantee or
whether the fuller alternative wording in this clause should be amended to fit the circumstances.
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Termination on Breach or Insolvency: Either the University or the Sponsor may terminate the
agreement if the other has not complied with the agreement or if the other is insolvent.
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Loss of Key Personnel: In some projects it may make sense to have a right to terminate if Key
Personnel are unavailable and a suitable replacement is not appointed within a specified period.
The use of this clause should be considered carefully; in practice, if a key academic researcher moves
to another University, it may be possible to novate the Agreement with the new University.
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Provisions Surviving Termination: Some provisions of the agreement, especially confidentiality,
intellectual property rights and limitations of liability should survive the end of the end of the Project
or termination of the Agreement.
Note that if on-going payments are to be made, some of the payment terms may also need to
survive the end of the Project.
The University should consider whether the licence to the Sponsor should survive if the agreement is
terminated because the Sponsor has not paid or is insolvent.
Anti-Bribery and Corruption: Under the UK 2010 Bribery Act, a commercial
organisation in the UK commits a criminal offence if any person associated with it bribes
another person,
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It is a defence if the UK organisation can show that it has ’adequate procedures’
designed to prevent bribery by its associated person. Because the
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Notices: If either party has cause to give a notice under the Agreements, for instance to
terminate, the procedure in this clause must be followed.
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Assignment of the Agreement: If one party bows out of the Project by assigning or transferring
the Agreement to a new party, the other original party and the new party should consider whether
to execute a novation agreement. This would typically release the party that is bowing out of the
Project from its undertakings (but preserve its obligations of confidentiality) and give the parties an
opportunity to sort out any rights they need to use or exploit the Intellectual Property Rights of the
party leaving the Project.
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Entire Agreement: This clause states that the agreement is the entire agreement between the
parties. The parties should think carefully about whether that statement is correct. The effect of this
clause is to remove the possibility that undertakings or understandings given or implied in any other
document have any effect. That may not be appropriate if, for instance, the parties are relying on
what is said in any proposal submitted for external funding. You may also want to include the
Funding Terms if they impose conditions which apply to the relationship between the parties.
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Governing Law: This clause sets out which country’s laws will be used to interpret the agreement,
including the rights and obligations of the parties.
The choice of governing law should be one of the first things to be decided because only a lawyer
qualified in the relevant law will be able to advise on the effect of that law on the interpretation of
the agreement.
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Different Legal Systems: It is important to recognise the differences between the
two legal systems in Indian and England. For instance:
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g) the limitation period under English law is usually 6 years; under Indian law it is 3
years for breach of contract or infringement of copyright;
h) usually commercial disputes to be resolved in India must be brought before the
District Courts where either the cause of action arises or the defendant is situated
(there are over 600 districts in India), although some High Courts (e.g. the High
Courts of Bombay and Delhi) have exclusive (original) jurisdiction in relation to
commercial disputes.
Issues to consider when deciding on the system of law and how disputes are to be resolved include:
xvi) whether the systems of law based on the common law so that the fundamental principles
are broadly analogous;
xvii) Whether the judiciary is impartial;
xviii) is there a long back-log of cases/does it take a long time to obtain a court order;
xix) the duration of protection for Intellectual Property Rights;
xx) the remedies available for infringement of intellectual property rights (e.g. can punitive
damages be awarded and how common are damages for patent infringement.
Insurance: A UK company with litigation insurance should check that its insurance
covers litigation or arbitration in India (or elsewhere) before agreeing to Indian law or to
resolve disputes in any forum except the English courts.
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Jurisdiction and Dispute Resolution: It is equally important to decide how
disputes are to be resolved. This clause provides for two possibilities:
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vii) arbitration in a location chosen by the parties; or
viii)
going to court in England.
Arbitration: Arbitration is seen as the most efficient method of resolving commercial
disputes in India, more so than in the UK. Litigants in India are not keen to file ordinary
civil suits in commercial matters, because of the ad valorem court fees payable in most
cases, and very long delays. In India there is a growing preference for international
arbitration in Singapore.
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The International Chamber of Commerce (ICC) is the most popular organisation for
international arbitrations in India and is frequently used by both the public and private
sectors. The Singapore International Arbitration Centre (SIAC) has become popular
recently.
Service Outside the Jurisdiction: Where a party is outside England and Wales, the
other party should have the right to serve proceedings on an agent within England or
Wales in order to avoid the need to obtain the court's permission to serve English
proceedings outside the jurisdiction.
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Proceedings relating to IPR or Confidential Information: This clause is
important because an infringement of Intellectual Property Rights or breach of
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confidence may take place anywhere in the world, and the owner of those rights needs
to be free to take action in the most appropriate forum.
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Signatures: The agreement should be prepared in duplicate and both the University and the
Sponsor should sign both copies. The signed copies should be kept safely. If there is a dispute it may
need to be produced in court.
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Signatures of The Principal Investigator and the Sponsor's Supervisor: The parties might
consider asking these people to acknowledge the terms of the agreement as a check that the
researchers are aware of its terms and that those terms reflect what they think they are doing. They
are not parties to the agreement and are not liable to the other party is there is a breach of the
agreement.
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The Financial Contribution: The ways in which the Project may be funded by the parties are very
varied and will need to be negotiated.
This Schedule should set out complete details of the Financial Contribution to be paid by each party,
e.g. whether the Financial Contribution is a fixed price or, where it is on a costs basis, the types of
expenditure which will be reimbursed, the maximum amount (if any) which will be paid, any
milestones to be met and any conditions attaching to payment.
The parties may agree that the Sponsor will cover increases in salary (or at least those in line with
national pay awards), superannuation and NI contributions. In that case this Schedule should reflect
this.
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The Project: This Schedule should contain a full description of the Project, clearly setting out
what each party is to do (with a timetable if appropriate), and the human resources, facilities and
equipment which each party is to provide. The list of the matters in this Schedule is not exhaustive
and there may be additional issues which are important to the Project.
Unless this Schedule states otherwise, all equipment bought by the University with the Financial
Contribution or External Funding will belong to the University rather than the Sponsor.
If either party is to recruit any key personnel, and whether the approval of the other party is
necessary, should be clearly stated in this Schedule.
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If any equipment is provided on loan, this Schedule should set out responsibility for keeping it in
good condition, maintaining and insuring it.
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