Get documents about "Ktp Agreement V11 30 06 08
Shared by: lizzy2008
-
Stats
- views:
- 2
- posted:
- 10/27/2012
- language:
- English
- pages:
- 10
Document Sample
West of Scotland KTP Centre
For the convenience of both company and academic partners in a Knowledge Transfer Partnership, we provide a shell KTP
Agreement and this is attached. This KTP Agreement has been drafted to reflect the financial make up of the project, i.e. the
fact that the company’s contribution will be between 33% to 50% of the project costs, dependent on the company’s size, with
the remainder being provided by government sources.
As a company partner, we suggest that, at your earliest convenience, you make contact with the appropriate person in the
Knowledge Baser Partner (University or College) and discuss the contents before finally reaching a mutually acceptable
agreement. The Agreement is for the protection of both partners and is required to be signed before any funded KTP project
can start.
The Agreement deals with a number of issues including confidentiality, reporting requirements, publication, termination
provisions, liability/indemnity etc. However, the issue which provokes most discussion is that of that of intellectual property.
We think it would help if we explain the reasoning behind the intellectual property clauses as they currently stand.
The intellectual property clauses state that each party owns what it brings to the project (Background IP), and that each party
owns what it generates in the course of the work (Foreground IP). It goes on to state that the company will be offered the
opportunity to take a licence to the KBP's Foreground IP. While it may be reasonable for a company to expect to own all the
Foreground IP of a project that it fully funds, this expectation would not be realistic in a project in which is it only paying a
portion of the costs. The option to obtain a licence both affords the company an opportunity to pursue the project
commercially, and the KBP to satisfy Momenta that the benefits are shared.
What the KTP Agreement seeks to do is to ensure that if the Associate and/or Knowledge Base Supervisor makes a useful
contribution that results in down-stream benefit to the company, then the Knowledge Base Partner (KBP) would be entitled to
derive some benefit commensurate with its contribution. It is clearly understood that ideas, which may arise in the course of
the project, are likely to be generated jointly between the Associate and the company employees with whom he/she is
working. Any benefit the KBP derives would take into account the fact that the idea was jointly generated, and any other
pertinent factor, such as the amount of time and money the company may invest in bringing the idea to market.
The precise details of such an arrangement would be spelled out in a subsequent licence agreement. The KTP Agreement is,
in effect, an agreement to agree. It offers the company the option of taking a licence to the KBP’s intellectual property. If the
Associate generates nothing of consequence, then the company can elect not to exercise its option. If something useful is
produced the licence agreement would be negotiated, in good faith, between the parties.
We would emphasise that this shell Agreement is a draft on which the KBPs are happy to base discussions. We do need to
put an Agreement in place before the project can commence. The contact person below will be happy to answer any
questions you have.
Thank you for your assistance.
Wilf Allison, Central College Glasgow (0141 552 3941 wallison@central-glasgow.ac.uk)
Michael Cannon, University of Strathclyde (0141 548 2456 michael.cannon@strath.ac.uk)
Lorraine Dymond, University of the West of Scotland (0141 848 3918 lorraine.dymond@uws.ac.uk)
Elizabeth Gray, University of Glasgow (0141 330 3940 e.gray@enterprise.gla.ac.uk)
Eliot Leviten, Glasgow School of Art (0141 353 4519 e.leviten@staff.gsa.ac.uk)
Janette McAlpine, Glasgow Caledonian University (0141 331 8877 j.mcalpine@gcal.ac.uk)
Alan Smith, RSAMD (0141 332 4101 a.smith@rsamd.ac.uk)
Michael Smith, Scottish Agricultural College (0131 535 4074 mike.smith@sac.ac.uk)
Graham Hills Building, 50 George Street, Glasgow G1 1QE Facilitating Knowledge Transfer Partnerships
for Higher and Further Education in the West of Scotland
t: 0141 548 3733 f: 0141 548 4774 w: www.ktp.strath.ac.uk
KNOWLEDGE TRANSFER PARTNERSHIP AGREEMENT
This Agreement is made between:
THE UNIVERSITY COURT OF THE UNIVERSITY OF Name, Address (hereinafter referred to as the
"University") OF THE FIRST PART; and
[ ] having its Registered office at [ ] (hereinafter referred to as the
“Company”) OF THE SECOND PART.
(hereinafter referred to collectively as the “Parties” and each a “Party”)
WHEREAS:-
The Parties to this Agreement have made a proposal to Momenta (part of AEA Technology plc)
(“Momenta”), and have signed a Joint Commitment Statement (as hereinafter defined) and will be in
receipt of a Grant Offer (the “Grant Offer”) from Momenta in respect of the KTP Grant Application and
Proposal Form (as hereinafter defined), which award will be accepted by the University.
NOW therefore the parties hereby CONTRACT and AGREE as follows:-
1. DEFINITIONS AND INTERPRETATION
“Associate”: the individual (normally a recent graduate) selected jointly by the University and
the Company. The Associate will be an employee of the University, but will undertake the
Project work within the Company.
"Background Intellectual Property": all and any Intellectual Property excluding the Foreground
Intellectual Property belonging to either Party as at the Commencement Date or which either
Party has the right to disclose to the other and any Intellectual Property developed independently
by either Party during the course of the Project (as hereinafter defined) which is not included in
the definition of Foreground Intellectual Property.
“Confidential Information”: any results, commercial, financial or technical information
including but not limited to designs, drawings, reports, specifications, procedure instructions,
software and other technical information or data in visual or electronic form disclosed by one
Party to the other and identified by a suitable legend or marking as being “Confidential” or
“Proprietary” as well as information disclosed orally by one Party to another which was described
as being proprietary or confidential at the time of disclosure and all other information that is
regarded by either Party as being confidential.
"Department": the Department of [ ] of the University.
“Foreground Intellectual Property": all and any Intellectual Property created or developed in
the course of and relating to the Project including but not limited to copyright in the final report.
"Intellectual Property": shall mean all intellectual property including but not limited to, trade
secrets, know-how, information, data, discoveries, improvements, inventions, specifications,
diagrams, expertise, techniques, technology, patents, patent applications, copyright, database
1
rights, inventions, designs and design rights (both registered and unregistered), research,
information, methods of formulation, results of tests and field trials, specifications of materials,
composites of materials, formulae, trade marks whether recorded in any manner or otherwise
and all rights pertaining thereto.
“Joint Commitment Statement”: the Joint Commitment Statement signed by both Parties and
dated [ ].
"Project": the Project as defined, to be carried out in accordance with the framework detailed in
the KTP Grant Application and Proposal Form.
“KTP Grant Application and Proposal Form”: the proposal form submitted jointly by the
Parties to MOMENTA and any mutually agreed amendments thereto, dated [ ].
2. COMMENCEMENT AND DURATION
2.1 This Agreement is conditional upon the Parties receiving the Grant Offer from Momenta and
accepting the Grant Offer within thirty (30) days of the Grant Offer being made.
2.2 The Project shall commence on the later of : (i)the[1st ]day of [ ]; or (ii) the date on
which the Associate begins work on the Project (notwithstanding the date or dates hereof) ("the
Commencement Date") and subject to the termination provisions contained herein shall continue
for a period of two years (the "Project Term").
2.3 This Agreement shall commence on the Commencement Date (notwithstanding the date or
dates hereof) and subject to the termination provisions contained herein shall continue until 3
months following submission of the final report under Clause 8.2 (the “Contract Term”).
3. SERVICES TO BE PROVIDED BY THE PARTIES
3.1 The University and the Company shall use their reasonable endeavours to carry out the Project
at the Department and at the Company’s premises subject to the appointment of the Associate.
The Parties agree to provide such training, personal development, and other support for the
Project as is set out in the KTP Grant Application and Proposal Form and Joint Commitment
Statement.
3.2 The University's work in relation to the Project shall be undertaken by the Associate under the
direction of [ ] ("the Academic Supervisor"). The Company's work in relation to the
Project shall be carried out under the direction of [ ] ("the Industrial
Supervisor").
3.3 If either the Academic Supervisor or the Industrial Supervisor is unable or unwilling to continue
with the work of the Project the University or the Company will endeavour to appoint a successor
as appropriate.
4. EQUIPMENT REQUIREMENTS AND FACILITIES
4.1 The University and the Company undertake to provide facilities and to purchase or procure
where appropriate, such special equipment as shall be agreed in advance by the Parties to be
2
necessary for the purposes of the Project, the cost of which is included in the cost summary of
the Project, as detailed in the Joint Commitment Statement and KTP Grant Application and
Proposal Form.
5. FINANCIAL PROVISIONS
5.1 The Company shall pay to the University the required contribution towards the project grant as
detailed in the Joint Commitment Statement and KTP Grant Application and Proposal Form.
5.2 In addition to the foregoing, the Company shall also reimburse the University and/or the
Associate for any unanticipated travel and accommodation expenses incurred by the Associate
or the Academic Supervisor in connection with the Project subject to prior notification and
agreement by the Company of such expenses.
5.3 The University shall invoice the Company in respect of the above payments [define pattern of
payments] and the Company shall make payment of such sums within thirty days of the date of
invoice. Interest at the rate of 4% per annum above the bank base rate of the Clydesdale Bank
shall be due and payable on all Funding due from the due date of payment until settlement in full.
5.4 Value Added Tax will be added at the rate ruling at the date of invoice.
6. REPORTING
6.1 Preparation of Reports shall be carried out by the Parties in accordance with the provisions of
the KTP Grant Application and Proposal Form submitted to Momenta.
6.2 Management of the Project shall be carried out by the Parties in accordance with the provisions
of the Joint Commitment Statement.
7. INTELLECTUAL PROPERTY
7.1 For the avoidance of doubt, it is acknowledged that all and any Background Intellectual Property
which belongs to either Party and which may be contributed to or disclosed by that Party in
connection with the Project, shall at all times remain the sole and exclusive property of that
Party.
7.2 Foreground Intellectual Property will be made freely available between the Parties for the
purposes and duration of the Project, but the Foreground Intellectual Property shall be owned by
the Party generating such information.
7.3 In the event that two or more Parties are by operation of law joint owners of Foreground
Intellectual Property Rights (“Joint Owners” and “Joint Foreground IPRs” respectively) then:-
7.3.1 each Joint Owner may use such Joint Foreground IPRs for the purposes of carrying out
further research and for teaching;
7.3.2 no Joint Owner may commercialise the Joint Foreground IPRs or sell products
manufactured with, or incorporating the Joint Foreground IPRs, or sell services using the
3
Joint Foreground IPRs without the prior written consent of all other Joint Owners, such
consent not to be unreasonably withheld; and
7.3.3 no Joint Owner may either grant a licence to the Joint Foreground IPRs, or assign its
interest in the Joint Foreground IPRs to any third party without the prior written consent of
all other Joint Owners, such consent not to be unreasonably withheld.
8. EXPLOITATION OF FOREGROUND AND LICENSING OPTION
8.1 In the event that the Company wishes to exploit the University’s Foreground Intellectual Property
and in consideration of the Company’s contribution to the costs of the Project, the University
hereby grants the Company an option to the following licenses:
8.1.1 a licence to the University’s Foreground Intellectual Property; and
8.1.2 subject to any pre-existing third party rights, a non-exclusive non-transferable licence on
commercial terms to such University owned Background Intellectual Property as the Company
may reasonably require for the purpose of exploiting the Foreground Intellectual Property.
8.2 The Company may exercise its option at any time during the Project and for a period of 3
months from the completion of the Project (completion of the Project for the purposes of this
Agreement shall be deemed to be when the final report on the Project is submitted to Momenta
in accordance with Clause 8 of the Grant Offer) by serving a written notice on the University.
8.3 In the event of the Company exercising its option as provided under Clause 8.2, the licence
shall be negotiated between the Parties and shall be on commercial terms to be agreed in
advance of commercialization and shall recognize the obligations placed on the Parties by the
Grant Offer to ensure that Foreground Intellectual Property is not exploited, licensed or sub-
licensed outwith the European Economic Area for a period of five years after the date on which
the Associate was deemed to be available for work on the Project, unless the Parties, in
consultation, have previously obtained the written consent of the Secretary of State. For the
avoidance of doubt the exploitation of the Foreground Intellectual Property shall not be deemed
to include the sale outside the European Economic Area of goods manufactured within it.
8.4 If the Company does not exercise such option as above provided (or if agreement is not reached
between the Company and the University as to the terms of the Licence on the expiry of a period
of three months from the date of exercise of such option) then the University shall be at liberty to
enter into any licence or other agreements or arrangements with any third party or parties to
exploit the University’s Foreground Intellectual Property entirely at its discretion, (subject always
to the University's obligation of confidentiality as provided in Clause 9.1 hereof).
9. CONFIDENTIALITY
9.1 The Company shall at all times both during the Contract Term and thereafter maintain
confidentiality in respect of the University's Confidential Information and shall not make any
disclosure concerning any aspect of the same to any third party except in so far as may be
necessary to facilitate the exploitation of Foreground Intellectual Property by the Company as
4
provided in Clause 8.
9.2 The University shall at all times both during the Contract Term and thereafter maintain
confidentiality in relation to the Company's Confidential Information (except in so far as
disclosure shall have been authorised by the Company).
9.3 Neither Party shall disclose any of the terms of this Agreement to any third party without the prior
written consent of the other.
9.4 Each Party shall use all reasonable endeavours to ensure that its researcher(s), staff, agents,
distributors and all other parties to whom disclosure of any Confidential Information is permitted
hereunder shall maintain confidentiality on the foregoing terms.
9.5 The above obligations of confidentiality shall not apply to (i) information which is in the public
domain or enters the public domain otherwise than by virtue of a breach of this Agreement, (ii)
information which was already known by the receiving Party prior to disclosure by the disclosing
Party, provided that such prior knowledge can be substantiated and proved by documentation or
(iii) information which was made available to the receiving Party during the period of this
Agreement or thereafter by a third party without breach of any obligation of confidence; (iv)
information independently generated by either Party outwith the scope of the Project and (v) the
receiving Party is required by law to disclose to any regulatory authority or court of competent
jurisdiction..
9.6 The terms of this Clause 9 shall not prevent the University from using the Foreground Intellectual
Property for its normal internal academic, teaching and non-commercial research purposes.
10. PUBLICITY
Any announcement or publicity in relation to the Project by either of the Parties shall first be
approved in writing by each of the Parties hereto and either Party shall unless otherwise
requested acknowledge by name the other Party in all publicity relating to the Project.
11. PUBLICATION OF RESULTS
11.1 The University agrees that if it wishes to submit any results of the Project for publication or other
disclosure during the course of the Project it shall submit details and text of such proposed
publications and/or disclosure to the Company at least 30 days prior to the intended date of such
publication and/or disclosure for approval by the Company.
11.2 The Company shall have a period of thirty days from receipt of such details and/or text within
which to notify the University of its approval thereof or to request amendment to protect the
Company's commercial interests. If no such notification is received by the University within such
thirty day period the Company shall be deemed to have given its approval as aforesaid. The
publication of any article may be delayed at the Company's request for a period of three months
(or longer if agreed by the Parties) to enable patent applications to be filed.
12. THE RESULTS OF PROJECT
5
No warranty is given by the University in relation to the Project or the uses to which the
Foreground Intellectual Property and/or the Final Report may be put by the Company or their
fitness or suitability for any particular purpose or under any special conditions notwithstanding
that such purpose or conditions may have been made known to the University and the Company
will be deemed to have satisfied itself in this regard.
13. LIABILITY/INDEMNITY
13.1 The Company hereby agrees to indemnify the University, the Academic Supervisor and/or the
Associate ("the Indemnified Parties") against the Indemnified Parties' costs, claims, liabilities,
damages and expenses in respect of Indemnified Parties' liability at law arising directly out of (a)
the negligence of the Company and/or any persons for whom the Company is responsible and/or
(b) any actions, claims, proceedings or demands which may be brought by any third party
against the University in respect of any loss, injury, death or damage arising from the
manufacture, use or sale of any products or services developed by the Company based in whole
or in part on, or which in any way utilise, the results of the Project. The indemnity given by the
Company under this Clause 13.1 shall not apply to any loss, liability, or damage to the extent that
such loss, liability or damage is attributable to the negligence or wilful misconduct of the
University or any of its employees or agents in carrying out the Project. For the avoidance of
doubt the provisions of this Clause 13.1 are intended to create legal rights for the Academic
Supervisor and/or the Associate which they can enforce against the Company by way of a Court
action in their own name(s).
13.2 Each Party shall give the other prompt notice of any claim or potential claim which may be
brought by a third party arising in connection with this Agreement. The Parties shall consult in
good faith and use all reasonable endeavours mutually to determine the manner in which such
claim is to be defended or settled and to act in accordance with the mutual decision taken on
how best to proceed.
14. FORCE MAJEURE
No failure or omission by either Party to carry out or observe any of the stipulations, conditions or
obligations to be performed hereunder shall give rise to any claim against such Party or be
deemed to be a breach of this Agreement if such failure or omission arises from any cause
reasonably beyond the control of that Party.
15. TERMINATION
15.1 Without prejudice to any other rights, either Party shall be entitled to terminate this Agreement
forthwith by written notice to the other Party if that other Party commits a material breach of any
provision of this Agreement or any other agreement or undertaking between the Parties and (in
the case of a breach capable of remedy) fails to remedy the same within 30 days of the service
of a written notice giving full particulars of the breach and requiring it to be remedied. For these
purposes a breach shall be considered capable of remedy if the Party in breach can comply with
the provision in question in all material respects other than as to the time of performance
(provided that time of performance is not of the essence).
15.2 This Agreement may be terminated by the University by written notice to the Company on the
occurrence of either of the following:
6
(i) in the event of the liquidation or receivership of the Company or the appointment of an
administrator or the Company ceasing to trade or the sale of the Company's business or
all its assets.
(ii) in the event of any sum due from the Company to the University hereunder remaining
unpaid for more than thirty days after due demand from the University.
15.3 Termination shall be without prejudice to accrued rights and liabilities of the Parties.
15.4 Other than as set out in Clause 15.5 termination or expiry of this Agreement shall not affect the
rights or obligations of the Parties which due to nature thereof are due to be performed after
such termination or expiry, including (but not limited to) Clause 7 (Intellectual Property), Clause 8
(Licensing Option), Clause 9 (Confidentiality), Clause 11 (Publication of Results), Clause 12
(The Results) and Clause 13 (Liability).
15.5 Where this Agreement is terminated under this Clause 15 then:-
15.5.1 Clauses 7.2 (Intellectual Property) and 8 (Licensing Option) shall not survive such termination;
and
15.5.2 Both Parties shall have an obligation to return any papers, correspondence, or documentation
which they have obtained as a result of participation in the Project, and hold at the date of
termination, to the originating Party; and
15.5.3 The Company shall within 30 days of receipt of the University’s invoice pay the University the
greater of
15.5.3.1 The balance of the total contribution due by the Company during the Project Term under
Clause 5.1; or
15.5.3.2 A sum equivalent to 3 months [salary of the Associate/contribution due under Clause 5.1].
16. CONTRACTS WITH THE ASSOCIATE
The Company hereby acknowledges that the Associate is an employee of the University and as
such (i) Intellectual Property generated by the Associate during the course of his/her
employment shall be subject to the provisions of Clause 7; and ii) the Associate is subject to the
provisions of Clause 9 (Confidentiality). The Company shall not contract directly with the
Associate in relation to the Project, including (without limitation) any contract purporting to
transfer Intellectual Property and/or impose confidentiality restrictions on the Associate without
the prior written consent of the University, and any such contract shall be void unless such prior
written consent has been given. For the avoidance of doubt the Associate shall have no
authority contractually to bind the University or give consent for or on behalf of the University.
17. ARBITRATION
All disputes or questions between the parties to the Agreement with respect to any matter or
thing arising out of or relating to the Agreement, other than to the extent to which special
provision for arbitration is made elsewhere in the Agreement, shall be referred to a single arbiter
7
to be mutually chosen by the parties or, failing agreement, nominated by the President of the
Law Society of Scotland for the time being on the application of either party. Any such reference
to arbitration shall be deemed to be an agreement to refer to arbitration within the meaning of the
Arbitration (Scotland) Act 1894.
18. APPLICABLE LAW
This Agreement shall be governed by and construed according to the Law of Scotland and
insofar as not already subject thereto, the parties hereby prorogate the jurisdiction of the Scottish
Courts: IN WITNESS WHEREOF these presents consisting of this and the preceding 7 pages
with the Schedule annexed as relative hereto are executed by the parties in duplicate as
follows:-
Subscribed for and on behalf of the said
UNIVERSITY COURT of the UNIVERSITY OF
Name by
duly authorised in that behalf at on the
day of 200 .............................................................................
in the presence of this witness:-
Witness: ...............................................................
Name: ..................................................................
Address: ...............................................................
.............................................................................
.............................................................................
............................................................................
Subscribed for and on behalf of the Director
said [ ]
by
And ............................................................................
of the Company at Director/Secretary
on the day of 200
8
SCHEDULE
This is the schedule referred to in the foregoing Agreement between The University Court of the
University of Name and [ ].
KTP Grant Application and Proposal Form and
Joint Commitment Statement
*************************************
9
