SAMPLE INDUSTRIAL PARTNER AGREEMENT[1]
UNIVERSITY NAME
ERC NAME
This Industrial Partner Agreement (hereinafter called Agreement) is made on this ____ day of ________________, by and between XXX (hereinafter called UNIVERSITY), and __________________ (hereinafter called MEMBER).
WHEREAS, the parties to this Agreement intend to join together in a cooperative effort to support ERC FULL NAME (hereinafter called ERC) at UNIVERSITY to establish a mechanism whereby the educational and research environment can be used to develop better understanding of GENERAL FIELD OF RESEARCH and stimulate industrial innovation.
AND WHEREAS, this program will strengthen ERC’s and MEMBER's, technological and service capabilities.
NOW, THEREFORE, for the mutual premises and covenants contained herein, the parties hereto agree as follows:
Any corporation, company, partnership, sole proprietorship, or any other legally recognized business entity, or any agency of government, government office, or government organization duly authorized by the United States Government or government of any State or Nation may become a MEMBER of the IPP.
The rights and obligations of MEMBER under this Agreement shall extend only to MEMBER’s affiliates or subsidiaries who routinely share in a free flow of MEMBER’s internal technical information.
The annual fee for a MEMBER is based upon the number of full time employees within the MEMBER’s corporate entity as defined in Section 3, Paragraph 3:
Number of Employees Annual Fee
Less than 100 $XX
Between 100 and 500 $XX
More than 500 $XX
Payments shall be made annually, with the first payment being due within thirty (30) days of the execution of the Agreement. The initial term of the membership will be from execution of the Agreement through the following 12 months with subsequent terms continuing for 12 months thereafter.
Checks shall be made payable to: XX
Checks shall be mailed to: XX
UNIVERSITY ADDRESS
Invention Disclosure to ERC UNIVERSITIES and MEMBERS – UNIVERSITY researchers supported by ERC core funds are required to submit invention disclosures and/or copyrightable materials disclosures (Federal copyright registrations) to ERC UNIVERSITIES and ERC in a timely fashion. When ERC receives an invention disclosure and/or copyrightable materials disclosure, a copy will be provided to MEMBERS for their review, through either direct mail or the ERC Secure Web Site. UNIVERSITY agrees to a delay in licensing to non-partner companies for a period of 90 days following the disclosure of patentable inventions or copyrightable materials to MEMBERS.
Rights of MEMBER for Non-Exclusive, Royalty Free License for In-House Use of Inventions - All patentable inventions and copyrightable materials conceived or first actually reduced to practice by ERC supported researchers in the course of research conducted at the ERC shall have title vested in the researcher’s home university. MEMBERS shall have a right to a non-exclusive, royalty-free license for in-house use of patentable inventions or copyrightable materials developed under the auspices of the ERC. For clarity, in-house use is limited to in-house research and development purposes only and specifically excludes commercial application(s) of the subject invention. If a MEMBER exercises its right to a non-exclusive license, the MEMBER shall inform UNIVERSITY of their intentions within 90 days of receiving or accessing the subject invention disclosure, and MEMBER shall pay its pro rata share, divided evenly among all MEMBERS who choose to exercise their rights to a non-exclusive license of the subject patent, of patent application, prosecution, and maintenance costs, or copyright registration costs quarterly, as defined in a separate agreement with UNIVERSITY to be negotiated at that time. MEMBER rights to a non-exclusive license to patentable inventions and copyrightable materials shall be subject to the conditions of MEMBER exclusive or exclusive for a defined field of use license rights as defined below.
Rights of Member for Negotiation of Exclusive License - All patentable inventions and copyrightable materials conceived or first reduced to practice by ERC personnel in the course of research conducted at ERC shall have title vested in the home university(ies) of ERC supported researcher(s). MEMBER may request an exclusive or exclusive for a defined field of use, royalty-bearing license for patented or patent pending inventions or copyrighted materials developed hereunder within 90 days of receiving or accessing the invention disclosure. UNIVERSITY agrees to consider such requests to negotiate with MEMBER(S) on exclusive or exclusive for a defined field of use, royalty-bearing license(s). Should such license(s) be granted, granting of all other non-exclusive licenses for in-house use to other MEMBERS shall be with-held to the extent that exclusive license(s) require. MEMBER shall pay its prorata share, divided evenly among all MEMBERS who choose to exercise their rights to a license of the subject patent, of patent application, prosecution, and maintenance costs, or copyright registration costs quarterly, as defined in a separate agreement with UNIVERSITY to be negotiated at that time. UNIVERSITY will not unreasonably withhold granting said exclusive or exclusive for a defined field of use license(s).
All exclusive licenses granted in accordance with this provision shall include the right for MEMBER to sublicense to its subsidiaries in accordance with any and all applicable State or Federal laws and/or statutes. Each such sublicense shall be subject to the terms and conditions of the license granted to MEMBER by UNIVERSITY. ERC agrees to promptly notify all MEMBERS of any request for an exclusive or exclusive for a defined field of use license to use any patentable invention or copyrightable material developed by the ERC.
Sublicense to a Third Party - The issuing of a sublicense by MEMBER to a third party to use any patented invention or copyrighted material developed under the auspices of the ERC will be subject to a royalty bearing license agreement to be negotiated with the appropriate ERC UNIVERSITY.
Use of Patented Inventions or Copyrighted Materials by UNIVERSITY - UNIVERSITY shall be free at all times to use patented inventions or copyrighted materials for educational and university research purposes only.
Reasonable Commercialization Efforts - Because of the public interest that pervades UNIVERSITY research programs, any license entered into by UNIVERSITY will embody a clause permitting cancellations thereof if reasonable commercial use of the licensed invention or copyrighted material is not being made or diligently attempted by the licensee.
Publication of Research Results - Publication of ERC created research results is of fundamental importance to universities, faculty members and their research programs. Therefore, UNIVERSITY reserves the right to publish in scientific journals the results of all research performed at the ERC (excluding proprietary information received from MEMBERS), giving due consideration to scheduling such publications in order to allow time for obtaining appropriate patent or copyright protection for any patentable invention or copyrightable materials that might result from the research. UNIVERSITY agrees to provide a copy of all experimental data resulting from research in ERC program to MEMBER representatives on the IAB for review prior to publication. MEMBER may request delay of the proposed publication of said data for a period not to exceed 90 days from the date of submission or presentation to MEMBER. MEMBER agrees to request said delay only in order to permit the filing of appropriate documents (i.e., patent application, copyright registration, etc.) on any patentable invention or copyrightable materials made by ERC, and MEMBER must make said request in writing, including justification thereof, within 30 days from the date the experimental data was presented or transmitted to MEMBER. Should the proposed publication be a student thesis or dissertation, UNIVERSITY and MEMBER hereby agree to use their best efforts to complete all reviews of material contained therein and any necessary intellectual property protection filings so as to not impede the completion of activities satisfying graduation, degree, or publication requirements by such a student.
Rights to Future Developments - MEMBERS who develop a specific technology based on basic data provided by UNIVERSITY are entitled to any derived patent(s) or copyright(s) without compensation to UNIVERSITY.
IN WITNESS WHEREOF, this Agreement is effective as of the last date of signing set forth herein below, which day and month in subsequent years in which MEMBER adheres to the terms of this Agreement shall be called the anniversary date of this Agreement.
UNIVERSITY MEMBER
Authorized signature Authorized signature
Title Title
Date Date
Initial to indicate appropriate partnership category:
MEMBER $XX; $XX; $XX
[1] While this sample agreement is intended to an example of the structural framework of an agreement, the actual language in the agreement should be developed in conjunction with the university’s legal counsel.