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Inventors, transfer a half-interest in ownership of technology to a developer with this Co-Ownership Agreement for Intellectual Property. - This type of arrangement is typically used by inventors who need to partner with a developer who will help develop the technology and bring it to market. - The developer will become a co-owner in the intellectual property, in exchange for providing development services. - The developer will be responsible for ongoing improvements to the technology, and for developing training documentation. - Revenues generated by the technology will be the joint property of the co-owners. - License fees will be assessed when the technology is used by third parties. - The relationship between the parties is not to be construed as a partnership. - Procedure to allow one co-owner to buy out the other in order to terminate the relationship. This Co-Ownership Agreement for Intellectual Property is generic in nature and is not specific to any country or region. The template is downloadable and fully editable.
CO-OWNERSHIP OF INTELLECTUAL PROPERTY MEMORANDUM OF AGREEMENT THIS AGREEMENT made effective the ____ day of ______, ____. BETWEEN: INVENTOR (hereinafter “the Inventor”) OF THE FIRST PART - and - DEVELOPER (hereinafter “the Developer”) OF THE SECOND PART WHEREAS : A. The Inventor is the original creator, inventor and developer of certain _________________________________________ (description of property) known as ______________ (hereinafter [collectively] referred to as the “Technology”); B. The Developer has undertaken to contract with the Inventor to manage and to undertake the ongoing improvements and necessary redevelopment of the Technology and related reference and training documentation; C. The product of the joint efforts of the Inventor and the Developer will result in more improved versions of the Technology on an ongoing basis; D. The parties hereto are desirous of establishing the respective ownership of the Technology and to provide for the orderly use and licensing of the Technology to third parties; NOW THEREFORE in consideration of these presents, and other good and valuable consideration, the receipt and sufficiency of which is mutually acknowledged, the parties agree as follows: ARTICLE 1 - TITLE TO THE TECHNOLOGY 1.1 Representation as to Prior Ownership: As of the date hereof, the Inventor represents and warrants to the Developer that the Inventor is the sole creator, developer, and legal and beneficial owner of the Technology, and that all title and interest in and to the said Technology vests in the Inventor alone, free and clear from any claims or interest of any third party. 1.2 Transfer of Ownership/Declaration of Joint Interest: Effective on the date hereof, in consideration of ONE DOLLAR ($1.00) and other good and valuable consideration, the Inventor does hereby transfer to the Developer a one-half (1/2) undivided interest in the Technology; and the Inventor hereby declares the Technology as it exists as at the date of execution hereof to be owned in equal undivided shares by the Inventor and the Developer. 1.3 “Interest” of a Party: Any reference in this Agreement to the “Interest” of a party means the interest of such party in the Technology together with the right to receive any revenue in respect thereof, -2- whether from licensing fees, or the sale of the Technology, but excluding consulting fees, and any fees earned by either of the parties by virtue of the activities listed in paragraph 3.2 hereof. ARTICLE 2 - FUTURE DEVELOPMENT OF THE TECHNOLOGY 2.1 Joint Development: The parties hereto shall jointly develop and improve the Technology in order to increase its usefulness, and to make the Technology suitable for licensing to third parties. ARTICLE 3 - PURPOSE 3.1 Intended Uses of the Technology: The parties hereto acknowledge that unless otherwise mutually agreed, the joint use of the Technology shall be limited to the following: (a) Independent Contracting – Each party may use the Technology for their own purposes, including, without limitation, the use of the Technology in conjunction with any consulting contract each of them may enter into with third parties, without obligation to the other party except as set out herein; (b) Joint Contracting – The parties may, in accordance with a written Agreement between them, enter jointly into contracts with third parties whereby both parties together shall provide services employing the Technology; (c) Licensing – The parties may, by mutual agreement, license the Technology to third parties on such terms as may be mutually agreed upon, in contractual relations that do not involve either party or both parties as contractor/consultants. 3.2 No Restriction on Use: For greater certainty, neither party shall be restricted from using the Technology for the purposes of written publications, public speaking engagements, books, seminar hand- outs, or any related activity and no license fees, royalties, or charges of any kind shall be payable in respect thereof. ARTICLE 4 - LICENSING FEES 4.1 Scheduling Fees: In any case where the Technology is used by either one or both parties in the course of a Consulting Contract, or where the Technology is licensed to third parties through a Licensing Agreement, a licensing fee component shall be charged in accordance with the tariff set out in Schedule “A” of this Agreement. 4.2. Distribution of Revenues: Any revenues earned from the licensing of the Technology shall become the joint property of the parties and shall be divided into equal parts and distributed to the parties monthly after deductions for payment of all current expenses (hereinafter “Expenses”) including depreciation or amortization but excluding capital expenditures associated with the development of the Technology incurred in that month. 4.3 Deduction of Expenses from Revenue: Expenses incurred by either or both parties in improving the Technology shall be borne equally by the parties and, where Revenues are earned and received from licensing fees in a given month, the expenses shall be deducted from the revenues prior to any distribution to the parties. In the event that expenses earned for a given month exceed the revenues for that month, the expenses shall be borne in equal parts and settled by the parties within thirty (30) days following at the end of such month. 4.4 Unpaid Expenses: In the event that one party shall bear all or a portion of the Expenses of the other party (whether by reason of voluntary assumption of the said expense, or by reason of the refusal of -3- one party to pay his or her share of the Expenses as set out herein), then the amount owing to the party that has borne such Expense shall constitute a debt by the party who fails or refuses to pay, which debt shall in accordance with Article 9 hereof be deemed a charge against the Interest of the party who fails or refuses to pay. ARTICLE 5 - TERMINATION OF JOINT OWNERSHIP 5.1 Termination by Consent: This Agreement may be terminated at any time by the mutual agreement of the parties or by the merging of the ownership interest of the parties. 5.2 Termination by Purchase of Interest: Either party may terminate this Agreement by making an offer to purchase the Interest of the other party in accordance with this Article 5. Any such offer to purchase by one party shall be deemed to include the entire Interest of the other party, and not a portion thereof. 5.3 Buy-Out Notice : Either party shall be entitled to give notice to the other stating his or her intention to terminate this Agreement and to purchase the Interest of the other (the “Buy-Out Notice”). 5.4 Stated Value : The Buy-out Notice shall state what the offering party considers to be the value of the Technology (the “Stated Value”), and for the purposes of this Article 5, the offering party shall be bound thereby. Once delivered, the Buy-Out Notice shall be deemed to constitute an offer by the offering party either to purchase the Interest of the other party at a price equal to a percentage of the Stated Value in proportion to the Interest of the party receiving the notice, or alternatively, an offer by the offering party to sell his or her Interest at a price equal to a percentage of the Stated Value in proportion to the Interest of the offering party (the “Deemed Purchase Price”). 5.5 Election: Upon receipt of the Buy-Out Notice, the party receiving the same shall, within Fifteen (15) days of the receipt of the same, be entitled to elect either to sell its Interest, or instead, to purchase the Interest of the offering party. 5.6 Failure to Elect: In the event that the party receiving the Buy-Out Notice shall fail to elect pursuant to paragraph 5.5, the party receiving the same shall be:
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