Appendix 7.

Intellectual Property Agreement

Between

[company name], a limited liability company duly constituted, formed and registered under the Laws of Malta with Company Registration Number [company registration no.], and having its registered address at [company’s registered address], Malta, represented herein by [name of company's authorised representative], duly authorised for this purpose.

And

University of Malta (UOM) of Msida, MSD 2080, Malta, represented herein by the Rector, Professor Alfred J. Vella, duly authorised for this purpose.

Hereinafter and for the purposes of this Agreement the organisations will be individually referred to as a ‘Party’ and all of them together and jointly, as “Parties”.

WHEREASthe Parties have jointly submitted an application to carry out a project (the “Project’) to be financed by a grant awarded by the Malta Council of Science and Technology, should the Project be awarded.

WHEREAS the Parties are aware and acknowledge that should the Project be awarded and during the course of the Project and thereafter they will be exposed to each other’s know-how, trade names, trademarks, trade secrets, trade technology and other proprietary information.

WHEREAS should the Project be awarded, the Parties will enter into a Grant Agreement (hereinafter the “Original Agreement”) with the Malta Council for Science and Technology

WHEREAS, as a result of the above, the Parties desire to enter into this Agreement as a document labelled “Appendix 7” to the Original Agreement, with respect to the protection of intellectual property rights and disclosure of certain proprietary, secret or confidential information to regulate the rights of the Parties in this respect and to prevent the unauthorized disclosure of secret or confidential information and wish to define their rights and obligations with respect to such intellectual property and secret or confidential information.

Now therefore, the Parties agree to be bound by the following terms and conditions:

  1. The following expressions shall have the following meanings:
  2. Background Intellectual Propertyshall mean Intellectual Property that, either was in existence before the commencement of this Agreement, or is created outside the scope of this Agreement.
  3. Confidential Information shall mean all information of a confidential nature, recorded, preserved or disclosed in whatever manner, by a Party or its employees, agents, officers, representatives or advisers (the “Disclosing Party”) to the other Party and that Party's employees, officers, representatives or advisers (the “Receiving Party”) including but not limited to:

(a)the terms of this agreement;

(b)any information that would be regarded as confidential by a reasonable business person relating to:

  • the business, affairs, customers, clients, suppliers, plans, intentions, or market opportunities of the disclosing party; and
  • the operations, processes, product or service information, know-how, designs, trade secrets or software of the disclosing party;

(c)any information or analysis derived from Confidential Information.

1.3Intellectual Property shall mean all forms of legally recognized intellectual property (of any form, including but not limited to written, oral, electric, digital or otherwise) that shall include but shall not be limited to the following:

(a)Trade secrets, industrial or commercial process, know-how, knowledge, inventions, discoveries, techniques, processes, methods, formulae, ideas, technical data and specifications, testing methods, research and development activities future products; contracts, product plans, sales and marketing plans, business plans;

(b)All information not generally known to the public, regarding the Parties, and their businesses, regardless of whether such information is in written, oral, electronic, digital or other form and regardless of whether such information originates from the Parties or any of their agents, if any

(c)All Patents and Designs registered or registrable under the Patents and Designs Act 2000 (Chapter 417 of the Laws of Malta);

(d)All copyright, neighbouring rights, and sui generis rights conceived or developed and protected under the Copyright Act 2000 (Chapter 415 of the Laws of Malta);

(e)All Intellectual Property Rights registered or registrable under the Intellectual Property Rights (Cross-Border Measures) Act (Chapter 414 of the Laws of Malta);

(f)Trade secrets and trademarks registered or registrable under the Trademarks Act 2000 (Chapter 416 of the Laws of Malta);

(g)And means and includes any new forms of intellectual property that may be added to the above categories during the time this Agreement is in effect; but does not include any moral right.

1.4Intellectual Property Dispute shall mean any and all controversies, disputes or claims arising out of, in connection with, or in relation to the interpretation, performance, non-performance, validity or breach of this Agreement or otherwise arising out of, or in any way related to this Agreement or the Intellectual Property, including, without limitation, any and all claims whether arising in contract or otherwise.

1.5Moral Right has the meaning ascribed to it in the Copyright Act 2000 (Chapter 415 of the Laws of Malta).

1.6Original Agreement means the agreement which will be entered into should the Project be awarded whereby the Parties carrying out the Project will lay out their respective rights and obligations in connection with the Grant and the Project, and in relation to such Original Agreement, this Agreement forms an integral part.

1.7Third Party means any natural or legal person other than the Parties

1.8[company name] Intellectual Property shall mean any Intellectual Property (other than Intellectual Property belonging to UOM prior to the time when the Company began to disclose information to UOM for purposes of the Project) relating to the description of the invention or scope of the Patent application or incorporating a variation, addition or improvement thereof.

1.9UOM Intellectual Property shall mean any Intellectual Property developed by UOM provided it is not [company name] Intellectual Property.

1.10All capitalized terms not otherwise defined in this Agreement shall have the meaning attributed to them in the Original Agreement.

1.11The headings contained in this Agreement are for reference purposes only and shall not affect the meaning or interpretation of this Agreement.

  1. Access Rights and Confidentiality
  2. Each Party hereby grants to each of the other Party a non-exclusive, royalty-free licence to the relevant part or parts of its Background Intellectual Property, and to its Confidential Information, for the sole purpose of carrying out their duties for the successful completion of the Project in terms of the Original Agreement.
  3. In the eventuality a Party either withdraws from the Original Agreement before the conclusion of the Project or, for any other reason, is no longer a party to the Original Agreement, such Party shall continue to grant access rights in terms of Clause 2.1.
  4. No Receiving Party can disclose, divulge or make known to any Third Party any Confidential Information of the other Party, except as may be required by law, or by a court of law, or by parliamentary questions, or by prior written consent of the other Party.
  5. The Parties acknowledge and agree that, without prejudice to Clause 3, the obligations arising from Clause 2.3 shall subsist and survive the termination of this Agreement and the termination of the Original Agreementfor a period of three(3) years from the end of the Project, regardless of the reasons or methods of termination.
  1. Ownership
  2. The Parties hereby acknowledge that any Background Intellectual Property of a Party shall remain the exclusive property of that Party.
  3. The Parties hereby agree that where during the course of carrying out the Project, Intellectual Property is discovered, generated or developed by the UOM and the Company jointly, such joint Intellectual Property shall be jointly and equally owned by the Parties.
  4. Where during the course of carrying out the Project, Intellectual Property is discovered, generated or developed solely by the UOM or solely by the Company, Intellectual Property shall be owned by the respective originator and the other Party shall have no rights of whatsoever nature over that Intellectual Property.
  5. If UOM develops Intellectual Property which it deems in good faith to be useful to improve the products subject matter of the Project, it shall inform [company name] and offer it a license to use such Intellectual Property. If, within a reasonable time, the Parties do not agree on the terms of such license, the same shall be determined by an independent expert appointed by the Parties or, failing agreement, by Court at the request of the most diligent party.
  1. Publication of Research
  2. The Parties shall maintain a running awareness of the state of the knowledge that is being generated and at any time when it appears to either party that knowledge conducive to a publication has been generated; such Party shall notify the other Party of its intention to publish such knowledge by electronic mail only.
  3. Any publication of the results achieved under this Project, included but not limited to publication by academic dissertation in full or by abstract or by publication in learned journals, shall be made on the agreement of the Parties. In particular, all Parties should agree on the list and order of the authors before the submission of the publication.
  4. Each of the other Parties shall review the notification made and within twenty (20) working days from date of receipt shall communicate to the other Party its acceptance for the material to be published; if no communication is received at expiration of such period the Party shall assume that there are no objections to the publication.
  1. Termination or Successful Completion of the Project
  2. Clauses 3 to 4shall survive and continue to bind the Parties in the following circumstances:
  3. The withdrawal of a Party or Parties from the Original Agreement without such Party having assigned its rights and obligations relating to the Project to a Third Party;
  4. An Event of Default as stipulated in the Original Agreement;
  5. Termination of the Original Agreement; or
  6. A situation where for any other reason a Party or Parties is/are no longer a Party/Parties to the Original Agreement.

Provided that, should the Malta Council for Science and Technology fail to award the Project to the Parties, this Agreement shall be automatically terminated in its entirety save for Clauses 3.1 and 4.

  1. Representations and Warranties
  2. All Parties warrant that their obligations under this Agreement shall be legal and binding and that the performance of their obligations hereunder shall neither conflict with any of their obligations under any other agreement nor contravene any applicable laws or regulations.
  1. Relationship between the Parties and Breach of Contract
  2. Nothing contained herein shall be deemed to constitute a partnership, or employer/employee relationship.
  3. In the event of a breach or threatened breach or intended breach of this Agreement by either Party, any and all of the remaining Parties, in addition to any other rights and remedies available to it/them at law, shall be entitled to file precautionary warrants or applications, enjoining and restraining such breach or threatened breach or intended breach.
  1. General
  2. Unless otherwise specified in this Agreement, all notices required to be sent under this Agreement shall be in writing and shall be sent by electronic mail, followed by registered mail to the Party being served. The date of service shall be deemed to be the day following the day on which the email was sent.
  3. This Agreement is personal to the Parties and shall not be assigned or otherwise transferred in whole or in part by either Party without the prior written consent of the other Party which consent shall not be withheld without serious cause.
  4. This Agreement, the Original Agreement and its Appendixes shall constitute the entire Agreement and understanding between the Parties with respect to the subject matter hereof and supersedes all previous agreements, understandings and undertakings in such respect. This Agreement cannot be changed except by written agreement between the Parties.
  5. In the event that any of the terms, conditions or provisions hereunder shall be determined by any competent authority to be invalid, unlawful or unenforceable to any extent, such term, condition or provision shall to that extent be severed from the remaining terms, conditions and provisions which shall continue to be valid to the fullest extent permitted by law. The Parties bind themselves to substitute any terms, conditions or provisions, which may be deemed to be invalid, unlawful or unenforceable.
  6. Failure to exercise any right contained in this Agreement shall not be a waiver of any prior or subsequent right.
  1. Governing Law and Jurisdiction
  2. This Agreement shall be read and construed in terms of the law applicable in Malta.
  3. Subject to agreement between the Parties, any dispute, including an Intellectual Property Dispute, controversy or claim arising out of or relating to this Agreement, or the breach, termination or invalidity thereof shall be settled by arbitration at the Malta Arbitration Centre in accordance with the applicable rules in force at the date on which such dispute, controversy or claim arises.
  4. The number of arbitrators shall be one and shall be appointed by agreement between the Parties. Should no agreement be reached on who shall be appointed arbitrator within a period of fifteen (15) days from the date on which the dispute, controversy or claim arises, the arbitrator shall be appointed by the Malta Arbitration Centre.

AGREED by the Parties through their authorised signatories:

______

For and on behalf of the University of MaltaFor and on behalf of [company name]

By Prof. Alfred J. Vella, RectorBy [signatory name]

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