co-ownership by ashrafp

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									                 CO-OWNERSHIP PATENTS AGREEMENT



BY AND BETWEEN
-   X
           Name
           Address
           Legal form (status)
           Representative
AND
-   Y
           Name
           Address
           Legal form (status)
           Representative
        Hereinafter called individually the «Party» and collectively the «Parties»
WHEREAS
-   the Parties have entered into a common research agreement leading to results potentially
    patentable or protectable under the Intellectual Property (I. P.) systems;
-   it was agreed upon between the Parties that any I. P. resulting from the common work of both
    of the Parties will be co-owned by the Parties;
-   it was further agreed upon between the Parties that a co-ownership agreement should be
    negotiated and settled by the Parties concerning such co-owned I. P. results.
NOW THEREFORE THE PARTIES HEREBY AGREE ON THE FOLLOWING
ARTICLE 1
1.1. Except otherwise agreed upon between the Parties, any patent application or other I. P.
title shall be filed under the name of both Parties.
1.2. The Parties shall select among them one Party (hereinafter referred to as the
“Administering Party“) which receives accordingly a full proxy from the other Party and will be
responsible for the operating of the present Agreement.
1.3. The Administering Party will, after consultation and agreement from the other Party:
- file the priority patent application in its country;
- extend said application in foreign countries;
- prosecute the patent applications resulting from said filing and extension until the granting of
    the corresponding patents, or abandon said applications when advisable;
- maintain the patents by paying the annual fees;
- keep informed the other Party of the details of the filing, the prosecution and the maintenance
    of the I. P. titles.
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1.4. The Parties undertake:
- to communicate on a reciprocal basis any administrative or technical document which is
    necessary for the filing and the prosecuting of the co-owned patent applications ;
- to give the names of the inventors in order to have them dully mentioned on the co-owned
    patent applications in accordance with the legal provisions ;
- to take the necessary steps in order to get the signature of said inventors enabling the
    Administrating Party to file and to prosecute the co-owned patent applications, to maintain
    the co-owned patents and to defend them against any infringement, and to file any deed of
    assignment in favour of their employers, when and where necessary, such as in the United
    States of America, and more generally to fulfil any requirement under the Intellectual
    Property systems in the world.
ARTICLE 2
2.1. Unless otherwise agreed upon between the Parties, and as long as the I. P. titles are co-
owned by the Parties, the expenses covering the filing, prosecuting and maintaining of the I. P.
titles shall be shared equally among the Parties; they will be borne in a first step by the
Administering Party which will ask for the reimbursement of its share to the other Party.
2.2. Upon request of the other Party, the Administering Party shall provide the other Party
with a justification for said request of reimbursement.
2.3. Each Party shall be responsible for the payment of any consideration which is due to its
own inventors in accordance with the legal provisions applicable in its country.
ARTICLE 3
3.1. The Administrating Party will evaluate whether it is appropriate to file a patent
application in order to protect adequately the results of the common research leading to such
results. It will inform accordingly without delay the other Party, in written form, and will
communicate to the other Party the text of the envisaged application to be filed.
3.2. In case both Parties agree on the filing of a co-owned patent application, the above
Articles 1.3 and 1.4 shall apply.
3.3. When the Administering Party or the other Party finally decide not to proceed with the
filing of a patent application, they shall keep informed each other in due time, in order to allow
the interested Party to file such a patent application; in that case the patent application will be
filed under the sole name of the interested Party and at its own expense.
3.4. When the Administering Party or the other Party decide not to prosecute the co-owned
patent application or to maintain the co-owned patent, they shall keep informed each other in due
time, in order to allow the remaining interested Party to prosecute the application and/or to pay
the annuities of the patent; in that case the prosecution and/or the payment of annuities will be
done under the sole name of the interested Party and at its own expense, the other Party
undertaking to assign, free of charge, its share of co-ownership to the remaining interested Party.
3.5. The Administering Party shall inform, in due time, the other Party of its intent to extend
the priority co-owned patent application, listing the countries covered by this envisaged
extension. When both Parties agree upon a list of countries where said extension will lead to co-
owned applications, the above Articles 1.3 and 1.4 shall apply.
3.6. In case the other Party decides not to follow the envisaged extension, or only partly, it
will inform without delay the Administering Party, in order to allow it to proceed with the
extension in those countries where the other Party decided not to extend the priority application ;
in that case, said extension shall be done under the sole name of the Administering Party and at
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its own expense and the other Party undertakes to assign, free of charge, its share of co-
ownership to the Administering Party.
3.7. In case the other Party decides to extend the priority co-owned patent application in
countries which do not interest the Administering Party, or in case the Administering Party
decides not to extend the co-owned priority patent application, the other Party is entitled to
extend said application in said countries or where it decides to do so, under its sole name and at
its own expense, and the Administering Party undertakes to assign, free of charge, its share of
co-ownership to the other Party.
ARTICLE 4
4.1. At any time and under the provisions of this Article, each Party can assign its share of
co -ownership on the co-owned patent applications and patents to a third party.
4.2. The Party intending to assign its share shall notify the other Party, mentioning the name
of the third party as well as the financial conditions of said assignment.
4.3. Within a two month period, the other Party has a right of pre-emption, provided the
financial conditions proposed by said Party are at least equal to those of the third party, and shall
accordingly notify in writing the Party intending to assign its share. At the expiration of said
period, the Party intending to assign its share is free in doing so if it has not received a due
confirmation that the other Party will exercise its pre-emption right
4.4. In the deed of assignment, the Party assigning its rights shall inform the assignee of the
rights and obligations contained in the present Agreement, as well as the agreements already
signed with third parties concerning the exploitation of the results deriving from the common
research executed by the Parties ; the Party assigning its rights undertakes to get from the
assignee its acceptance of said rights and obligations and its respect for said agreements.
4.5.   A copy of the deed of assignment shall be delivered to the other Party.
ARTICLE 5
5.1. The Parties shall inform each other, without delay:
- of any act realized by a third party which could be deemed as an infringement act of the co-
    owned patent applications or of the patents;
- of any claim or action initiated by a third party considering that the exploitation of the
    results derived from the common research executed by the Parties is an infringement of its
    rights;
- of any action concerning the ownership of the co-owned patent applications or co-owned
    patents.
5.2    The Parties will consult each other in order to determine a strategy concerning any of the
actions described in Article 5.1 above, and will exchange any document, information, signatures
enabling the implementation of said strategy.
5.3     In case a common decision has been taken by the Parties, the Administering Party shall
be responsible to execute said decision and will receive a full power from the other Party to act
accordingly including to settle the case on an amicable basis ; the Administering Party will act
on its behalf and that of the other Party. The other Party undertakes to give full assistance to the
Administering Party upon its request.
5.4     Unless otherwise agreed upon by the Parties, the cost of any action according to Article
5.1 above and initiated according to Article 5.2 above shall be shared equally between the
Parties.
                                                  4

5.5     In case only one Party is willing to initiate any action according to Article 5.1 above, said
Party will bear all the cost related to said action and will receive all benefit from said action; the
other Party undertakes to sign any document required in the development of said action and to
give a full assistance to the Party initiating said action, upon its request.
5.6    The Party initiating any action according to Article 5.1 above shall keep informed the
other Party, on a regular basis, of the development and, if any, of the conclusion, either through
the decision of a court or through an amicable settlement, of said action.
ARTICLE 6
6.1. The Administering Party is fully empowered by the other Party to find industrial
partner(s), to negotiate license agreements and to sign said agreements on behalf of both Parties.
6.2. The Adminitering Party shall keep informed the other Party of the choice of the
partner(s), of the development of the negociations and of their conclusions; the other Party will
sign the license agreement(s) in order to acknowledge its future obligations deriving from said
agreement(s).
6.3. The Administrating Party is responsible, and fully empowered by the other Party, for the
registration of said agreement(s) before any National Authority according to the regulations of
said Authorities and for the follow-up of said agreement(s); it shall keep informed the other Party
of the execution of such operations, and, if any, of difficulties arising from the licensee(s) in the
execution of said license agreement(s).
6.4. Unless otherwise agreed upon between the Parties, the revenues derived from the
exploitation of said license agreement(s) shall be shared equally between the Parties.
ARTICLE 7
        This Agreement is governed by the laws of (Country).
        In the event of disputes arising on the interpretation or in the terms of this Agreement, the
Parties shall endeavour to settle their differences out of court.
       Any dispute which cannot be settled in accordance with the above provision shall be
submitted to the jurisdiction of the court of (Court).




                                                      Signed in two (2) original copies,
                                                      At <Location>, on <Date>




For X                                                                        For Y

								
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