JOINT RESEARCH AND DEVELOPMENT
AGREEMENT
BETWEEN
UNIVERSITI SAINS MALAYSIA
AND
ABC SDN BHD
IN RELATION TO THE DEVELOPMENT OF ……………..
JOINT RESEARCH AND DEVELOPMENT AGREEMENTTHIS JOINT RESEARCH AND DEVELOPMENT AGREEMENT is made on the ______day of ______20 (hereinafter referred to as “Agreement”);
BETWEEN
UNIVERSITI SAINS MALAYSIA, a public institution of higher learning established under the Universities and University Colleges Act 1971 which for the purpose of this Agreement is represented by …………………….with its main campus at 11800 USM, Pulau Pinang (hereinafter referred to as “USM”)of the first part;
AND
ABC SDN BHD(Company No.………………….) a company incorporated under the Companies Act 1965 [Act 125] and having its business address at……………………………………………………….(hereinafter referred to as “ABC”) of the second part.(USM and ABC shall hereinafter be collectively referred to as "Parties" and individually as "Party", where the context so requires).
WHEREAS
A. / USM has the scientific and technical expertise of the scientists, researchers, students and facilities as well as the experience to function amongst other things, as technology consultant and carry out the milestone in relation to the Project as detailed in Schedule A Part B hereof.
B. / ABC has received a grant from ………… to develop and up-scale a new technology on ……….. (hereinafter referred to as “Project”).
C. / ABC and USM are desirous of formalizing this collaboration by entering into this Agreement subject to the terms and conditions as stipulated herein.
NOW IT IS HEREBY AGREED AS FOLLOWS:
CLAUSE 1 – DEFINITIONS AND INTERPRETATIONS
1.1 / In this Agreement, unless the context otherwise requires, the following terms shall have the following meaning:-
“Intellectual Property” means
(a) / Inventions; manner, method or process of manufacture; method or principle of construction; or design; plan, drawing or scientific, technical or engineering information or document;
(b) / Improvement, modification or development of any of the foregoing;
(c) / Patent, application for a patent, right to apply for a patent or similar rights for or in respect of any intellectual Property referred to in paragraph (a) or (b);
(d) / Trade secret, know-how, Confidential Information or right of secrecy or confidentiality in respect of any information or document or other Intellectual Property referred to in paragraph (a) or (b);
(e) / Copyright or other rights in the nature of copyright subsisting in any works or other subject matter referred to in paragraph (a) or (b);
(f) / Registered and unregistered trademark, registered design, application for registration of a design, right to apply for registration of a design or similar rights for or in respect of any work referred to in paragraph (a) or (b);
(g) / Any Intellectual Property in addition to the above which falls within the definition of intellectual property rights contained in Article 2 of the World Intellectual Property Organisation Convention of July 1967; and
(h) / Any other rights arising from intellectual activities in the scientific, literary or artistic fields,
whether vested before or after the date of this Agreement and whether existing in Malaysia or otherwise and for the duration of the rights;
“Confidential Information” either oral or in writing shall mean any and all technical and non-technical information including patent, copyright, trade secret, and proprietary information, techniques, sketches, drawings, processes, apparatus, equipment, algorithms, software programs, software source documents, and formulae related to a technology or invention, and includes, without limitation, its respective information concerning research, experimental work, development, design details and specifications, engineering, financial information, procurement requirements, purchasing manufacturing, customer list, business forecasts, sales and merchandising and marketing plans and information designated in writing to be confidential or by its nature intended to be for the sole knowledge of the receiving Party or if orally given in the circumstances of confidence or confirmed promptly in writing as having been disclosed as confidential or proprietary for the business arrangement and or Project; that is conveyed by the disclosing Party to the receiving Party, in written, oral, digital, magnetic, photographic and/or whatsoever forms. However, the term Confidential Information shall not include any information disclosed by one Party to the other which:-
a)on the date of this Agreementor thereafter, becomespublicly available otherwise than through a breach of this Agreement; or
b)is required by law to disclose (in this event, it must disclose only to the minimum information required to comply with the law); or
c)is legitimately obtained at any time by either Party from a third party without restrictions in respect of disclosure or use.
“Development Phase” means the development as stated and identified pursuant to Clause 4 in this Agreement.
“Project” means the research and development project as set out in Recital A above and as further described and detailed in Schedule A Part A hereof.
1.2 / Any monetary references shall mean the Malaysian currency.
1.3 / Any word (including a word defined or given a special meaning) denoting the singular shall include the plural and vice versa.
1.4 / Any word denoting one gender only shall include each other gender.
1.5 / A reference to a person shall include a corporation as well as a natural person.
1.6 / A reference to a Schedule is a reference to a Schedule to this Agreement.
CLAUSE 2 – COMMENCEMENT, TERM AND CONDITION PRECEDENT
2.1 / This Agreement shall become effective on …….and shall be in force for the duration of …. (…) months thereafter unless subsequent time extensions, supplement, continuation, or renewal is mutually agreed upon in writing between the Parties.
2.2 / Notwithstanding sub-clause 2.1 above, the continuation of the Development Phase of the Collaboration Programme (as hereinafter defined) is subject to the condition precedent that ……………. If this condition precedent remains unsatisfied for a period of six (6) months from the date of this Agreement, USM shall have the full discretion and right to terminate the Agreement and the Parties hereto shall have no claim against the other Party except on the Confidential Information clause herein.
CLAUSE 3 – COLLABORATION PROGRAMME
3.1 / USM and ABC shall collaborate in the following activities (hereinafter referred to as “the Collaboration Programme”):-
Funding Phase: / Continuation of the …… grant for the sum of Ringgit Malaysia …. (RM …….) only
Development Phase: / The carrying out of various milestone and/or development tasks/activities for the Project as described in Schedule A Part A and B hereof..
CLAUSE 4 – RESPONSIBILITIES OF THE PARTIES
In consideration of and subject to the terms of this Agreement and all applicable laws, the Parties shall carry out their respective responsibilities in accordance with the provisions of this Agreement and within the scope of responsibilities as set out below.
4.1 / ABC’sresponsibilitiesshall be as follows:-
Funding Phase / (a) / to secure the grant on the execution of this Agreement.
Development Phase: / (a) / to be responsible for the overall running of the Project;
(b) / to carry out activities of Milestone 1 toMilestone 9 as set out in Project Milestone and output in Part B of Schedule A.
(c) / to be responsible for all reasonable funding as stated in sub-clause 3.1 above and as required for the Project.
(d) / to purchase, maintain and service all the necessary equipment and expenses as per Schedule B of this Agreement and consumables for ABC’sChief Technical Officer (hereinafter referred to as “ABC CTO”) to carry out the Project, whereby all the above equipment and instrument shall be placed at location to be mutually agreed by both Parties.
(e) / to release and disburse the progressive payment(s) to USM’s Chief Technical Officer (hereinafter referred to as “USMCTO”) and/or USM in accordance to sub clause 5.1 herein. For the avoidance of doubt, the Schedule of Payment shall not include the equipment cost to be purchased and delivered by ABC pursuant to sub clause 4.1(d) herein.
(f) / The first progressive payment on the above Schedule of Payment shall be released and disbursed to USMCTOwithin …..working days from the date of execution of this Agreement and the subsequent progressive payment(s) shall be made to USMCTO according to Schedule A project milestone
4.2 / USM’sresponsibilities shall be as follows:-
Development Phase: / (a) / to assist ABC in carrying out activities of Milestone 2 – 9 within USM scope as per Functional Design Specification document in delivering the objectives of the Project as described below;
(i)to assist ABC to develop ……. process simulator system;
(ii)toassist ABC to develop model for …… system.
(iii)toassist ABC for communication protocol for……..
(b) / to assist ABC in the overall running of the Project through the appointment of a USM CTO; and
(c) / to provide advice, personnel and the resources for the successful completion of the Project.
4.3 / Joint Responsibilities
Both Parties agree that they shall be jointly responsible for the following:
(a) / to ensure that the personnel as identified and nominated by ABC CTO and USM CTO (hereinafter referred to as “Consultants”) and both USM’s and ABC’s Principal Consultants (as hereinafter defined) are given full access to all information and to all areas within both Parties’ sites and Project which are relevant for the Parties to carry out work on the Project as defined in this Agreement.
(b) / Furnish such necessary facilities and equipment available at their respective sites as necessary for the Project to be carried out.
CLAUSE 5 – CONSIDERATION
5.1 / In consideration of USM carrying out its activities under the Development Phase, ABCshallpay USM a sum of RM ……. (Ringgit Malaysia: … Only) to be disbursed according to milestone achievement to USM CTO for consultancy fees and related expenses as per Clause 4.2 above and subject to Clause 2.1 and 4.1(e) and(f) above, effective from the commencement until completion of the Development Phase.
CLAUSE 6 – PERSONNEL
6.1 / For the purposes of carrying out their responsibilities under this Agreement, USM and ABC shall designate and nominate the Party’s own personnel as Consultants for the Project. For avoidance of doubt, USM’s Principal Consultant will be …….of the …….., USM, (herein referred to as “USM’sPrincipal Consultant” and/or “USM CTO” interchangeably), and ABC’s Principal Consultant will be…….. (herein referred to as “ABC’s Principal Consultant” and/or “ABCCTO” interchangeably). The Parties shall be entitled to nominate alternate personnel to act as the Parties’ respective Principal Consultant and/or Consultants in the event the named Principal Consultant or Consultants become unavailable to carry out such duties on the Project.
6.2 / The Parties agree that USM’s Principal Consultant shall also act as the Principal Researcher for the Project.
CLAUSE 7 – INTELLECTUAL PROPERTY
7.1
7.2
7.3 / Any Project Intellectual Property created, developed, commercialized or reduced to practice jointly by USM and ABC shall be jointly owned by the Parties at ratio of ......
Any Project Intellectual Property created, developed, commercialized or reduced to practice solely by one Party’s Consultant but through the significant use of the other Party’s resources such as facilities, equipment or funds will be jointly owned by the parties as set out in Sub Clause 7.1 hereof.
Notwithstanding the above, both Parties may negotiate on the ratio and percentage of the ownership of the further improvements of the Project Intellectual Property jointly created or developed by the Parties subject to the condition that USM’s shall hold a percentage not less that what USM owns at the commencement of the Project.
7.4
7.5
7.6 / Each Party shall be responsible for the cost related to any application for the registration of patents or any other intellectual property rights in relation to their respective Project Intellectual Property.
Where the Project Intellectual Property is jointly owned by the Parties pursuant to the operation of this Agreement, the Parties shall equally share the costs related to any application for the registration of patents or any other intellectual property rights related thereto.
All rights, titles and interests over the background Intellectual Property of either Party and used to produce any product which forms the Project’s Intellectual Property, shall continue to belong to that Party; andthe other Party shall not have any claim on them.
CLAUSE 8– PROGRESS REPORTS
8.1 / Both Parties through their Consultants shall furnish the other Party with written reports as to the progress of works carried out for the Project on a quarterly basis.
8.2 / Each Party shall respond promptly to any queries from the other Party from time to time in respect of the progress of the works in relation to the Project and any other matters in relation thereto by such means as are agreed from time to time by the Parties hereto.
8.3 / Notwithstanding the above, both Parties shall collaborate to produce and deliver all reports in relation to the Projects as may be required by the Parties from time to time.
CLAUSE 9 – CONFIDENTIALITY
9.1 / The Parties including its officers, agents and authorised representatives shall not disclose, use or communicate to persons any information which is confidential to the other party and not otherwise publicly available nor known by the recipient at the time of disclosure.
9.2
9.3
9.4
9.5
9.6
9.7 / Each Party undertakes that it shall at all times keep confidential (and procure that its Consultants, employees and agents shall keep confidential) any Confidential Information which it or they may acquire in relation to the Project and the business and affairs of the other Party to this Agreement and shall not use or disclose such Confidential Information except as permitted under this Agreement or with the express written consent of the other Party or in accordance with the order of a court of competent jurisdiction or in compliance with any applicable law or regulation.
Each Party hereto further undertakes:
a) to use its best endeavours to protect such confidential information;
b) to limit its disclosure of the Confidential Information it receives from the disclosing Party to its employees and agents on a a-need-to-know basis and only to the extent necessary for them to carry out the Project;
c) to immediately notify the disclosing Party upon learning of any unauthorised use or disclosure of any confidential information;
d) not to make copies, publish, reproduce or otherwise reduce into writing or into any other tangible or intangible form all or any part thereof of the Confidential Information save for the purposes contemplated in this Agreement and each Party agrees that the ownership to any copies, publications or reproductions of the Confidential Information so made remains with the disclosing Party;
e)to be accountable for the compliance and performance of the undertakings enumerated herein on the part of each Party’s employees, officers, agents or any permitted person to whom the Confidential Information is disclosed;
f)to exercise a degree of care and diligence no less than that which the receiving Party applies to its own Confidential Information of a similar character.
The obligations of confidentiality herein shall not apply to any information which the receiving Party can show by written records:
- was already in the public domain when it was imparted to the receiving Party by the disclosing Party;
- is in or subsequently comes into the public domain through no fault on the receiving Party;
- is received by the receiving Party without restriction on disclosure or use from a third party lawfully entitled to disclose to the receiving Party without such restriction;
- is developed by any of the receiving Party’s employees who have not had any direct or indirect access to, or use or knowledge of, the information imparted by the disclosing Party; or
- the communication of which is required by law, a valid order issued by a court or such other governmental body, or was otherwise necessary to establish the rights of either Party under this Agreement.
Without prejudicing the foregoing provisions, any information sent or received orally, via electronic means or information disclosed without confidentiality notices shall be deemed to be Confidential Information and the obligation of confidentiality applies accordingly.
Both Parties specifically warrant and undertake that where the Confidential Information of both Parties continue to be utilised for research, teaching or educational purposes as may expressly be permitted under this Agreement, the Parties shall ensure that the obligation of confidentiality binds all such third parties that the Confidential Information are made available to.
CLAUSE 10 – RIGHT TO PUBLISH
10.1 / The data and information accruing from the Project, which are of academic importance for the enrichment of knowledge, may be published by USM’s Principal Consultant/USM’s Consultants in accordance with USM’s policy. ABC shall be provided with a copy of any such proposed publication and ABCmay have no more than twenty-one (21) days or such mutual extended period to be agreed upon by both Parties from the date of ABC being provided with the copy of such proposed publication, for review of data and information deemed confidential as defined in Clause 9 above relating to confidentiality or patentable items (hereinafter referred to as the “Review Period”). The purpose of this clause is to protect the rights of USM and ABC with respect to any contemplated publication concerning details of an invention or ABC’s Confidential Information, etc.
10.2 / If deemed necessary by USM and/or ABC with the view to protect their interests, any contemplated publication containing details of an invention, etc. shall be withheld until a patent application is filed or other appropriate steps to protect commercial value have been completed. All publications shall not include any Party’s Confidential Information.
CLAUSE 11– RELATIONSHIP OF THE PARTIES
Nothing in this Agreement shall be construed as establishing or creating a partnership or a relationship of a partnership between the Parties, master and servant between any of the Parties hereto or as constituting any party as an agent or representative of the other Party for any purpose or in any manner whatsoever or an authority to a Party to represent or bind or pledge the credit of the other Party in anyway.
CLAUSE 12– TERMINATION12.1 / If USM or ABC(as the case may be) commits any of the conditions stated below, then, the aggrieved Party shall be entitled to terminate this Agreement by serving a notice to that effect:
12.1.1 / Either Party becomes insolvent or is unable to pay its debts when due or admits in writing its inability to pay its debts; or