UNFUNDED RESEARCH COLLABORATION AGREEMENT
This Research Collaboration Agreement is made and is effective this ____________ day of __________________, 2007 (the “Effective Date”) between The Regents of the University of California, a California corporation, on behalf of its Los Angeles campus, acting through its offices located at 10920 Wilshire Blvd, Suite 1200, Los Angeles, California 90024-1406, (“The Regents”) and _______________________, a ___________ corporation with offices at _______________________________________ (“Collaborator”), under the following terms and conditions. Background Collaborator and The Regents desire to undertake collaborative research activities for the purpose of studying _________________________________________________________. This study may require the parties to transfer to each other certain tangible materials to be used in the course of the collaborative research. The parties agree as follows: 1. 1.1 Definitions. “Collaborator Materials” means materials developed solely by Collaborator and specified in Attachment A and utilized in the Research Project described in Attachment A. Collaborator Materials includes any Progeny and Unmodified Derivatives of such Collaborator Materials made by Collaborator or by The Regents in the course of the Research Project under this Agreement. “Regents Materials” means materials developed solely by The Regents and specified in Exhibit A and utilized in the Research Project described in Attachment A. Regents Materials includes any Progeny and Unmodified Derivatives of such Regents Materials made by Collaborator or by The Regents in the course of the Research Project under this Agreement. “Progeny” means unmodified descendants from Collaborator Materials or Regents Materials. “Unmodified Derivatives” means substances created by Collaborator or by The Regents in the course of the Research Project that constitute an unmodified functional subunit or product expressed by the original Collaborator Material specified in Attachment A or the original Regents Material specified in Attachment A. “Modifications” means substances developed by The Regents that contain or incorporate Collaborator Materials or substances developed by Collaborator that contain or incorporate Regents Materials.
1.2
1.3
1.4
1.5
Unfunded Collaboration Agreement – For-Profit Collaborator
1
1.6
“Research Materials” means Modifications, collectively.
Collaborator
Materials, Regents Materials and
1.7
“Research Project” means the collaborative research study described in Attachment A, which is incorporated herein by reference. “Principle Investigators” means the individuals specified in Attachment A who will direct the Research Project at Collaborator and The Regents. “Subject Inventions” means any patentable invention or discovery that is made in the performance of the Research Project by a party, either solely or jointly. “Confidential Information” means all proprietary information disclosed by a party in writing and marked as confidential, or if disclosed orally identified at the time of disclosure by a party as confidential and reduced to writing within thirty (30) days and marked as confidential, that is related to Collaborator Materials, Regents Materials or the Research Project. Confidential Information specifically excludes the Research Materials themselves as well as the results and data generated in the performance of the Research Project. Research Project. The Research Project will not exceed the scope of work set forth on Attachment A, provided that the Principal Investigators may agree to modifications of Attachment A that do not alter its scope, as they believe appropriate. Any significant changes must be in writing and must be approved in advance by Collaborator and The Regents. Transfer of Materials between Parties. The following terms will govern any transfer of Research Materials between Collaborator and The Regents pursuant to the Research Project. In General. All transfers of Research Materials between the parties will be reflected in a Material Transfer Record in the form set forth in Attachment B to this Agreement. The terms of this Agreement will apply to all such transfers. No Warranties. All Research Materials and data transferred in connection with the Research Project are experimental in nature and will be used with prudence and appropriate caution, since not all of their characteristics are known. Research Materials may have hazardous properties. A party receiving Research Materials will promptly inform the providing party of any test results that suggest: (a) a significant risk for humans, (b) mutagenicity, (c) teratogenicity or (d) carcinogenicity. ALL RESEARCH MATERIALS ARE PROVIDED WITHOUT WARRANTY OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE OR ANY OTHER WARRANTY, EXPRESS OR IMPLIED. A PARTY PROVIDING RESEARCH MATERIALS TO ANOTHER PARTY MAKES NO REPRESENTATION OR WARRANTY TO THE RECEIVING PARTY OF ANY
1.8
1.9
1.10
2.
3.
3.1
3.2
Unfunded Collaboration Agreement – For-profit Collaborator
2
KIND OR THAT THE USE OF SUCH RESEARCH MATERIALS WILL NOT INFRINGE ANY PATENT OR OTHER PROPRIETARY RIGHT OF A THIRD PARTY. 3.4 Legal Title to Tangible Materials. Legal title to any Collaborator Materials or Regents Materials transferred hereunder will be unaffected by this Agreement or the transfer of materials made hereunder. The transfer of Collaborator Materials to The Regents and the transfer of Regents Materials to Collaborator give the recipient no rights in such materials other than those specifically set forth in this Agreement. Collaborator retains ownership of Collaborator Materials, including any Collaborator Materials contained or incorporated in Modifications. The Regents retains ownership of Regents Materials, including any Regents Materials contained or incorporated in Modifications. Ownership of Modifications will follow from inventorship, subject to the preceding two sentences. Use and Distribution of Research Materials. 3.5(a) Collaborator Materials. The Regents will use Collaborator Materials only in work done in the course of the Research Project and only in the laboratory of The Regents’ Principal Investigator in research by laboratory personnel under that Principal Investigator’s immediate and direct control. The Regents will not transfer Collaborator Materials to anyone not under the direct supervision of The Regents’ Principle Investigator without the consent of Collaborator. The Regents will not use Collaborator Materials for any commercial purpose without the written consent of Collaborator. Following expiry or termination of this Agreement, The Regents will, at the request of Collaborator, return or properly destroy Collaborator Materials and Collaborator’s Confidential Information received under this Agreement by The Regents. 3.5(b) Regents Materials. Collaborator will use Regents Materials only in work done in the course of the Research Project and only in the laboratory of Collaborator’s Principal Investigator in research by laboratory personnel under that Principal Investigator’s immediate and direct control. Collaborator will not transfer Regents Materials to anyone not under the direct supervision of Collaborator’s Principle Investigator without the consent of The Regents. Collaborator will not use Regents Materials for any commercial purpose without the written consent of The Regents. Following expiry or termination of this Agreement, Collaborator will, at the request of The Regents, return or properly destroy Regents Materials and Regents’ Confidential Information received by Collaborator under this Agreement. . 3.5(c) Modifications. During the term of this Agreement, the parties will use Modifications solely for the Research Project. Following expiry or termination of this Agreement, neither party may use or distribute Modifications for any purpose without the other party’s written consent, except that either party may distribute Modifications to third parties to the extent necessary to comply with the National Institutes of Health "Principles and Guidelines for Recipients of NIH Research
3.5
Unfunded Collaboration Agreement – For-profit Collaborator
3
Grants and Contracts on Obtaining and Disseminating Biomedical Research Resources" set forth in 64F.R. 72090 (Dec. 23, 1999), if applicable, under a separate agreement at least as protective as this Agreement of the rights of the party whose materials (i.e., Collaborator Materials or Regents Materials) are contained or incorporated in Modifications. 3.6 Limitations. Research Materials transferred under this Agreement are provided only for use in laboratory animals or in vitro. Any animals that receive Research Material in the course of the Research Program or products derived from these animals such as eggs or milk must not be used as food for humans or any other animals. RESEARCH MATERIALS TRANSFERRED UNDER THIS AGREEMENT MUST NOT BE USED IN HUMANS FOR ANY PURPOSE, INCLUDING IN CLINICAL TRIALS OR FOR PURPOSES OF DIAGNOSTIC TESTING. Any use of Collaborator Materials by The Regents or of Regents Materials by Collaborator other than in accordance with this Section 3 (Transfer of Materials between Parties) is a material breach of this Agreement for purposes of the termination provisions of Section 13 (Term), below. Confidentiality. If either party discloses Confidential Information to the other party, the disclosing party will designate this information as confidential by appropriate legend or instruction, and the receiving party will: 4.1(a) Use the same degree of care to maintain the secrecy of the Confidential Information as it uses to maintain the secrecy of its own information of like kind. 4.1(b) Use the Confidential Information only to accomplish the purposes of this Agreement and subject to management and audit review. 4.2 Neither party will disclose Confidential Information received from the other party except to its employees, customers, distributors and other agents who agree to be bound by similar obligations of confidence and only as required to accomplish the purposes of this Agreement. Neither party will have any confidentiality obligation with respect to the Confidential Information belonging to or disclosed by the other party that: 4.3(a) the receiving party can demonstrate by written records was previously known to it. 4.3(b) the receiving party lawfully obtained from sources under no obligation of confidentiality. 4.3(c) is or becomes publicly available other than through an act or omission of the receiving party or any of its employees.
4. 4.1
4.3
Unfunded Collaboration Agreement – For-profit Collaborator
4
4.3(d) is independently developed without reliance upon Confidential Information received from another party, as shown by written record. 4.3(e) is required to be disclosed under the California Public Records Act, governmental audit requirement or other requirement of law. 4.4 The provisions of this Section 4 will continue in effect for three (3) years after expiration or termination of this Agreement. Results of Research Project. Each party will keep the other party informed of research results obtained from its work on the Research Project subject to Sections 7.1 and 8.2. During and after the term of this Agreement, each party will have an unrestricted right to use, solely for its own internal research purposes, research results delivered hereunder. Ownership and Patenting of Subject Inventions. Inventorship of Subject Inventions will be determined in accordance with U.S. Patent Law and ownership will follow from inventorship. All rights to Subject Inventions made solely by employees of The Regents will belong solely to The Regents. All rights to Subject Inventions made solely by employees of Collaborator will belong solely to Collaborator. All rights to Subject Inventions made jointly by employees of The Regents and employees of Collaborator will belong jointly to The Regents and Collaborator. The parties will not enlist or use the services of agents or consultants in connection with the Research Project who do not have an affirmative obligation to assign all right, title and interest in any Subject Inventions by them to the parties. The Regents has the exclusive right, but not the obligation, to file, prosecute, maintain, enforce and defend all patents and patent applications claiming Subject Inventions solelyowned by The Regents. Collaborator has the exclusive right, but not the obligation, to file, prosecute, maintain, enforce and defend all patents and patent applications claiming Subject Inventions solely owned by Collaborator. Unless previously agreed by the parties, neither party is obligated to reimburse the other for costs incurred in filing, prosecuting or maintaining jointly-owned Subject Inventions. The parties will cooperate in discussing the handling of jointly-owned Subject Inventions, including patent applications to be filed, the choice of patent counsel, payment of expenses, and the decision as to which party will take the lead in patent prosecution activities (the "Lead Party"). The Lead Party must provide the other party with copies of each patent application, office action, response to office action, request for terminal disclaimer, and request for reissue or reexamination of any jointly-owned patent or patent application. The Lead Party will consider any comments or suggestions by the other party. The Lead Party is entitled to take action to preserve rights and minimize costs whether or not the other party has commented.
5.
6. 6.1
6.2
6.3
Unfunded Collaboration Agreement – For-profit Collaborator
5
7. 7.1
Licensing of Subject Inventions. Notification. Each party will promptly disclose any Subject Inventions developed or codeveloped by it to the other party. The receiving party will hold such disclosure on a confidential basis and will not disclose the information to any third party without written consent of the disclosing party. Licenses to Collaborator. To the extent it is legally able to do so and subject to any overriding obligations to the United States Federal Government under 35 U.S.C. §§200212 and applicable governmental implementing regulations, and subject to the National Institutes of Health "Principles and Guidelines for Recipients of NIH Research Grants and Contracts on Obtaining and Disseminating Biomedical Research Resources" set forth in 64F.R. 72090 (Dec. 23, 1999), if applicable, The Regents will grant to Collaborator the royalty-free, nonexclusive right to use Subject Inventions solely-owned by The Regents that necessarily use or incorporate Collaborator Materials for Collaborator’s own internal research purposes. [Optional: 7.2(a) The Regents will grant to Collaborator a time-limited first right to negotiate in good faith for an exclusive, worldwide (or such lesser territory as Collaborator will elect), royalty-bearing license to Regents’ interest in Subject Inventions that necessarily use or incorporate Collaborator Materials. Collaborator will advise The Regents in writing within sixty (60) days of such disclosure to Collaborator whether or not it wishes to secure an option or commercial license ("Election Period"). Collaborator will have ninety (90) days from the date of election to conclude an option or license agreement with The Regents ("Negotiation Period"). Said license will contain reasonable terms, will require diligent performance by Collaborator for the timely commercial development and early marketing of Subject Inventions, and include Collaborator’s obligation to reimburse Regents’ patent costs for all Subject Inventions subject to the license. In the event it is necessary in the opinion of The Regents to file any patent applications to protect a Subject Invention during the Election or Negotiation Periods, Collaborator will reimburse patent costs incurred by The Regents during such period. If such option or license is not concluded within the Negotiation Period, neither party will have any further obligations to the other with respect to such Subject Invention. If Collaborator does not elect to secure such option or license, rights to such Subject Invention will be disposed of in accordance with Regents’ policies, with no further obligation to Collaborator with respect to such Subject Invention, subject only to Collaborator’s right to use research results (as set forth in Section 5 Results of Research Project) and to Collaborator’s rights under Section 7.2.]
7.2
7.3
Licenses to The Regents. Collaborator will grant to The Regents the right to use Subject Inventions solely-owned by Collaborator that necessarily use or incorporate Regents Materials for Regents’ research and education purposes.
Unfunded Collaboration Agreement – For-profit Collaborator
6
7.4
No Implied License. Nothing contained in this Agreement will be deemed to grant either directly or by implication, estoppel, or otherwise, any rights under any patents, patent applications or other proprietary interests, whether dominant or subordinate, or any other invention, discovery or improvement of either party, other than the specific rights covering Subject Inventions and Research Materials under this Agreement. Publication. The parties acknowledge that results of the Research Project will be published or otherwise publicly disclosed. Although the parties expect to jointly publish the results, The Regents and Collaborator each reserve the right to publicly disclose its own information and data generated by it in the performance of the Research Project. The parties agree to abide by the policies of journals in which the publications will appear on such matters as the public release or availability of data or biological materials relating to the publication. Authorship of results of the Research Project will be determined in accordance with academic standards and custom. Proper acknowledgment will be made for the contributions of each party to the research results being published. The party proposing a public disclosure will provide a copy of the proposed written or oral publication (including manuscripts, abstracts and oral presentations) to the other party at least thirty (30) days prior to submission for publication in order to allow the other party an opportunity to protect proprietary information or Subject Inventions that may be encompassed by the proposed public disclosure. Upon written notification by reviewing party, the party proposing such public disclosure agrees to delete any of reviewing party’s Confidential Information. If the reviewing party determines that the proposed public disclosure contains subject matter for which patent protection should be sought, the reviewing party may require the delay of the public disclosure for a maximum of an additional thirty (30) days for the purpose of allowing the pursuit of such patent protection. Responsibility for preparing and filing any patent application prior to public disclosure will be determined in accordance with Section 7 (Ownership and Patenting of Subject Inventions) above. In addition, a party will not publish Confidential Information received from the other party without such other party’s prior written consent. Representations and Warranties; Indemnification. Each party has the full right, power, and authority to execute and deliver this Agreement and to perform its terms. Each party represents and warrants that the person or persons executing this Agreement on its behalf are duly authorized and empowered to do so. The Regents will indemnify, defend and hold harmless Collaborator, its trustees, officers, agents, and employees from and against any and all liability, loss, expense (including reasonable attorney's fees), or claims for injury or damages arising out of the performance of this Agreement, but only in proportion to and to the extent such liability, loss, expense, attorney's fees, or claims for injury or damages are caused by or result from the negligent or intentional acts or omissions of The Regents, its trustees, officers, agents or employees.
8. 8.1
8.2
9. 9.1
9.2
Unfunded Collaboration Agreement – For-profit Collaborator
7
9.3
Collaborator will indemnify, defend and hold harmless The Regents, its trustees, officers, agents, and employees from and against any and all liability, loss, expense (including reasonable attorney's fees), or claims for injury or damages arising out of the performance of this Agreement, but only in proportion to and to the extent such liability, loss, expense, attorney's fees, or claims for injury or damages are caused by or result from the negligent or intentional acts or omissions of Collaborator, its directors, officers, agents or employees. Compliance with Laws and Regulations. All research done in connection with the Research Project, including all use of Research Materials transferred hereunder, will be done in compliance with all laws, governmental regulations and guidelines, including without limitation those governing disposal of hazardous materials and current NIH guidelines and any regulations or guidelines pertaining to research with recombinant DNA that may be applicable. Term. This Agreement is effective as of the Effective Date and expires in _______year(s) unless (a) it is extended by mutual written consent of all parties or (b) it is terminated. Any party may terminate the Research Project and this Agreement at any time upon sixty (60) days’ written notice to the other party, regardless of whether the Research Project has been completed. In addition, in the event of a material breach of this Agreement by a party, the other party may terminate the Research Project and this Agreement immediately upon written notice to both other parties. The terms of Sections 3, 4, 5, 6, 7, 8, 9 and 12 will survive expiration or termination of this Agreement. Assignment. Neither party will assign its rights or duties under this Agreement to another without the prior express written consent of the other party; provided, however, that Collaborator may assign this Agreement to a successor in ownership of all or substantially all its business assets in the field to which this Agreement relates. Such successor will expressly assume in writing the obligation to perform in accordance with the terms and conditions of this Agreement. Any other purported assignment will be void. Independent Contractor. Neither The Regents nor anyone employed by The Regents will be, represent, act, or purport to act as, or be deemed to be, the agent, representative, employee, or servant of Collaborator. Neither will Collaborator nor anyone employed by it be, represent, act, or purport to act as, or be deemed to be, the agent, representative, employee, or servant of The Regents. Neither Collaborato, nor The Regents has authority to make any statement, representation, or commitment of any kind or to take any action binding upon the other party without the other party’s prior written authorization. Notices. All notices hereunder will be delivered (i) personally, (ii) by registered or certified mail, postage prepaid, or (iii) by overnight courier service to the addresses of the respective parties below. Notices will be effective upon receipt if personally delivered, on the fifth (5th) business day following the date of mailing, if mailed, and upon receipt if sent by overnight courier service.
10.
11.
12.
13.
14.
Unfunded Collaboration Agreement – For-profit Collaborator
8
If to The Regents:
UCLA Office of Intellectual Property Administration 10920 Wilshire Boulevard, Suite 1200 Los Angeles, CA 90095-1406
With a copy to:
Dr. ______________________________
If to Collaborator:
_______________________ _______________________ ________________________ _________________________________
With a copy to: 15.
_________________________________________
Advertisements or Publicity. Neither party will use the name, trade name, trademark or other designation of the other party in connection with any products, promotion, advertising, press release, or publicity without the prior written permission of the other party. Miscellaneous Entire Agreement. This Agreement together with Attachments A and B constitute the entire agreement between the parties concerning the subject matter hereof and supersedes all prior written or oral agreements or understandings with respect thereto. Modifications; Waiver. No amendment or modification of this Agreement will be valid or binding upon the parties unless made in writing and signed by each party. Failure by a party to enforce any rights under this Agreement will not be construed as a waiver of such rights nor will a waiver by a party in one or more instances be construed as constituting a continuing waiver or as a waiver in other instances. Separability. If any part of this Agreement is for any reason found to be unenforceable, all other parts nevertheless remain enforceable as long as a party’s rights under this Agreement are not materially affected. In lieu of the unenforceable provision, the parties will substitute or add as part of this Agreement a provision that will be as similar as possible in economic and business objectives as was intended by the unenforceable provision. Headings. The section and paragraph headings in this Agreement are inserted for convenience only and will not constitute a part hereof.
16. 16.1
16.2
16.3
16.4
Unfunded Collaboration Agreement – For-profit Collaborator
9
16.5
Counterparts. This Agreement may be executed in one or more counterparts, each of which will for all purposes be deemed to be an original and all of which will constitute the same instrument.
Both Collaborator and The Regents have executed this Agreement in duplicate originals by their authorized officers on the dates written below:
THE REGENTS OF THE UNIVERSITY OF CALIFORNIA, on behalf of its Los Angeles campus By: Name: Title: Date: Read and Understood: ________________________________________________ (Name) Date Principal Investigator COMPANY By: Name: Title: Date: Read and Understood: ________________________________________________ (Name) Date Principal Investigator
Unfunded Collaboration Agreement – For-profit Collaborator
10
Attachment A to Research Collaboration Agreement
1. 2. 3. Collaborator Materials: Regents Materials: (If applicable) Modifications (which contain or incorporate Collaborator Materials or Regents Materials): Collaborator’s Principle Investigator: The Regents’ Principle Investigator: Research Project:
4. 5. 6.
Unfunded Collaboration Agreement – For-profit Collaborator
11
Attachment B to Research Collaboration Agreement MATERIAL TRANSFER RECORD
The Regents of the University of California, on behalf of its Los Angeles campus Indicate “Providing or Receiving Party” COLLABORATOR NAME Indicate “Providing or Receiving Party”
The Material described below is supplied by the providing party to the receiving party subject to the terms and conditions of the Research Collaboration Agreement between The Regents of the University of California, on behalf of its Los Angeles campus (“The Regents”) and _____________, a _______________ corporation with offices at _______________________ (“Collaborator”), and dated _________________________(“Agreement”). Duplicate originals of this form will be executed and one fully-executed form will be given to the providing party and one to the receiving party. Description of Material:
In signing below, the Principal Investigators acknowledge that they understand and will abide by the terms and conditions under which the Research Material is provided.
Providing Party Principal Investigator (Name/Signature)
Date Material Sent/Provided to Receiving Party
Receiving Party Principal Investigator (Name/Signature)
Date Material Received by Receiving Party
Unfunded Collaboration Agreement – For-profit Collaborator
12
Disclaimer: The terms and conditions shown are for discussion purposes only and are not intended as an offer of terms and conditions to a specific scope of work. It will be the prerogative of the Industry Contract Officer and the sponsor’s authorized representative to determine which clauses are applicable for the proposed relationship and scope of work.
Unfunded Collaboration Agreement – For-profit Collaborator
13