Pilot Research Grants Research Agreement

Enterprise Partnerships Scheme

Pilot Research Grants Research Agreement

Parties / Macquarie University ABN 90 952 801 237 of North Ryde, NSW 2109 (Macquarie)
[insert name ] ABN / ACN [ insert ABN or ACN ] of [ insert address ] (Partner Organisation)
Agreement / The parties agree to conduct the Project on the terms set out below and in the attached document headed ‘General Terms’. These General Terms and Annexures form part of this agreement.
Details
Commencement Date / [insert Commencement Date]
Agreement End Date / The date 12 months from the Commencement Date.
Project / [insert title of Project]
Address for Notices / Macquarie
Director, Research Office,
Level 3, Building C5C
17 Wally's Walk, Central Campus
Macquarie University NORTH RYDE NSW 2109
Telephone: +61 2 9850 7737
email:
Partner Organisation
[insert contact details: role, address, email and phone number]
Cash Contributions / Macquarie / [Insert amount]
Partner Organisation / [Insert amount]
In-kind Contributions / Macquarie / [Insert amount]
Partner Organisation / [Insert amount]
Option Period (Clauses 5.4 and 5.5) / 30 days from the date of disclosure of the Project Intellectual Property.
Field (Clause 5.5) / [insert field for Option].
Territory (Clause 5.5) / [insert territory for Option]
Special Terms / This agreement is subject to the following special terms.
[insert any special terms (see suggested terms below) or if none applicable, state “Not Applicable”]

EPS Agreement (template 1.02.2017) 4 of 13

RECITALS

A.  The Partner Organisation and Macquarie wish to enter into a collaborative research project entitled: “[insert project title from question 1 in the Application]” (the Project), and more particularly described in Annexure A (the Application).

B.  [ ] of the Macquarie's Department of [ ], has applied for, and been awarded, a Macquarie University Enterprise Partnerships Scheme Pilot Research Grant for 2017-18 in respect of the Project (the Grant).

C.  It is a condition of a successful Grant application that Macquarie and the Partner Organisation enter into this written agreement.

EPS Agreement (template 1.02.2017) 4 of 13

GENERAL TERMS

1.  INTERPRETATION

1.1  Definitions

The following definitions apply throughout this agreement.

Application means the Application Form which is attached as Annexure A to this agreement.

Asset means personal, real or incorporeal property, but shall not include Intellectual Property.

Background Intellectual Property means Intellectual Property in existence at the date of this agreement or created independently of the Project which a party owns or is licensed to use.

Cash Contribution means the cash from the Partner Organisation for the Project which is transferred to and managed by Macquarie.

Confidential Information means information belonging to a party, whether existing prior to the commencement of the Project, or created in the course of the Project, which is disclosed by one party to the other for the purposes of the Project, and includes all technical, proprietary and operational information, drawings, techniques, processes, know-how and other commercially valuable information in any form. Confidential Information does not include information that is in the public domain, is already lawfully known to the Receiving Party or that has been independently developed by the Receiving Party.

Funding Rules means the Enterprise Partnership Scheme Pilot Funding Rules as updated from time to time accessible on the Macquarie website (www.mq.edu.au).

Intellectual Property means all copyright and neighbouring rights, all rights in relation to inventions (including patent rights), plant varieties, registered and unregistered trademarks (including service marks), registered designs, Confidential Information (including trade secrets and knowhow and circuit layouts), and all other rights resulting from intellectual activity in the industrial, scientific, literary or artistic fields.

Personal Information means information or an opinion (including information or an opinion forming part of a database), whether true or not, and whether recorded in a material form or not, about a natural person whose identity is apparent, or can reasonably be ascertained, from the information or opinion.

Project Intellectual Property means Intellectual Property arising from or developed in the course of the Project by the employees and, in the case of Macquarie, by Students, of either party.

Student means an individual enrolled as a candidate for a postgraduate research degree at Macquarie.

Term means the period from and including the Commencement Date to and including the Agreement End Date.

Term Sheet means a document outlining the material terms and conditions of the licence contemplated under clause 5.5.

Other capitalised terms have the meaning given to them in the Details.

1.2  Rules for interpreting this agreement

In this agreement, headings are for guidance only and do not affect the interpretation of the clauses. The following rules apply unless the context requires otherwise:

(a)  words importing the singular include the plural and vice versa;

(b)  words importing one gender include all other genders;

(c)  reference to a person includes a body politic, a body corporate, a partnership, an unincorporated association and a natural person, and the person's executors, administrators, successors, transferees, substitutes (including persons taking by novation) and assigns;

(d)  reference to a statute, ordinance, code or other law includes regulations, directions and other instruments under it and consolidations, amendments, re-enactments or replacements of any of them;

(e)  reference to $, dollar or AUD is to Australian currency;

(f)  any agreement, obligation, representation, right or warranty on the part of or in favour of two or more persons binds or is for the benefit of them severally and not jointly or jointly and severally;

(g)  a term or definition incorporated by reference into this document remains in force even if the document from which it was referred may be no longer in force;

(h)  reference to a clause is a reference to a clause of this agreement and includes all sub-clauses, paragraphs and parts of that clause;

(i)  where a word or phrase has a particular meaning, other parts of speech and grammatical forms of that word have corresponding meanings;

(j)  any reference to “insurance”, “insurance policy” or “insurer” in this agreement includes, mutual risk cover held with a mutual risk provider designed to cover similar insurable risks to insurance and the providers of that risk cover; and

(k)  a reference to an office, department or faculty whose functions are assumed by another office, department of faculty includes the office, department of faculty that assumes all or substantially all of those functions.

2.  OBLIGATIONS OF PARTIES

2.1  Project Conduct

The parties must conduct the Project in accordance with the terms of this agreement and must use reasonable endeavours to carry out the Project within the Term:

(a)  diligently and competently;

(b)  in accordance with this agreement and the Application; and

(c)  in compliance with all applicable laws and regulations.

2.2  Ethics/Biosafety Approval

If the Project requires approval by a party’s Ethics and/or Biosafety Committees (or equivalent), the relevant party must use reasonable endeavours to obtain that approval. The parties acknowledge that the Project cannot commence until the required approvals are obtained.

2.3  General obligations

Each party agrees to:

(a)  provide any other related assistance, information, data, equipment, facilities, resources or materials as may be reasonably required to satisfactorily perform the Project; and

(b)  comply with all safety, security and other procedures notified to it by another party while on that other party’s site.

2.4  Records

Each party must maintain reasonable, up to date and accurate records regarding the conduct and conclusions of the Project.

3.  PAYMENT AND GST

3.1  Cash Contributions

Macquarie must invoice the Partner Organisation for its Cash Contributions on or about the Commencement Date. The invoice must be in the form of a tax invoice.

3.2  Payment Terms

The Partner Organisation must pay Macquarie’s tax invoice within 30 days of the date on which Macquarie submits the invoice.

3.3  GST wording

Words defined in A New Tax System (Goods and Services Tax) Act 1999 (Cth) have the same meaning in this clause 3.

3.4  Payment of GST

If any supply under this agreement is a taxable supply, the party making the supply may, in addition to any payment for the supply, recover the amount of the GST applicable to the supply. Any amount of GST payable is payable at the same time as the payment for the supply to which it relates.

4.  PUBLICATION

4.1  Publication Request

Should a party wish to publish Project material in a scientific journal, or academic paper, the party (Publishing Party) must send a written request accompanied by the proposed publication material to each other party (Reviewing Party) at least 30 days prior to the proposed submission date (the Approval Period) asking for permission to publish the material. Such approval may only be withheld in accordance with clause 4.2.

4.2  Approval Period

If, during the Approval Period, the Reviewing Party reasonably requests that the material not be published or submitted for publication in the form provided, the Publishing Party must:

(a)  where the Reviewing Party requests that the material be amended to remove any of its Confidential Information, the Publishing Party remove all such Confidential Information; and

(b)  if requested, delay publication of the material or submission of the material for publication for a period not exceeding 30 days and will seek appropriate registration of any Project Intellectual Property at the Reviewing Party’s expense.

4.3  Reasons and Deemed Approval

If the Reviewing Party withholds approval or requests changes under this clause 4 it must provide reasons. The Reviewing Party is deemed to have approved the publication of material under this clause 4 if the Reviewing Party does not communicate to the Publishing Party its decision regarding approval of the publication with reasons within the Approval Period.

4.4  Student Thesis

Despite clauses 4.1 - 4.3 above, nothing is to delay the submission of a Student thesis, nor require the excision of material from a thesis that represents an essential or significant part of the Student’s work, nor prevent the assessment of a thesis under Macquarie’s usual procedures. If applicable, public access to a thesis may be restricted for a limited period (not exceeding 12 months) to enable the parties to arrange for protection of any commercial Intellectual Property arising from the results of the Project.

4.5  Acknowledgement

Any publication must acknowledge the role of the Partner Organisation in the Project.

EPS Agreement (template 1.02.2017) 4 of 13

5.  INTELLECTUAL PROPERTY AND COMMERCIALISATION

5.1  Ownership and Licence

The parties agree that

(a)  any Background Intellectual Property remains the property of the relevant party;

(b)  each party grants to the other parties a non-exclusive, royalty-free, non-transferable, worldwide, perpetual licence to use its Background Intellectual Property for the purposes of the conduct of the Project;

(c)  any Project Intellectual Property will be owned by Macquarie and (to the extent necessary) the Partner Organisation assigns to Macquarie any Intellectual Property rights in the Project Intellectual Property to Macquarie. If requested by Macquarie, the Partner Organisation agrees to draft, sign, execute or otherwise deal with any document which may be necessary or desirable to give effect to this clause 5.1(c); and

(d)  Macquarie grants the Partner Organisation for the Term a non-exclusive, non-transferable royalty-free licence to use the Project Intellectual Property for non-commercial, internal business and research purposes.

5.2  Student Intellectual Property

Before a Student carries out any part of the Project, Macquarie must ensure that the Student has assigned any of their rights in the Project Intellectual Property (other than copyright in their thesis) to Macquarie.

5.3  Copyright in Student Thesis

Despite anything to the contrary in this agreement, the parties agree that a Student retains copyright in their thesis.

5.4  Disclosure of Project Intellectual Property

Macquarie must provide the Option Holder with a written, confidential disclosure of any Project Intellectual Property that is reported to Macquarie’s Office of Commercialisation and Innovation within 3 months of completion of the Project for the purpose of allowing the Option Holder to consider the Option under clause 5.5. The Option Period, as specified in the Details, commences from the date of disclosure of the Project Intellectual Property.

5.5  Grant of Option

Subject to the Option Holder not being in breach of any provision of this agreement, Macquarie grants to the Option Holder the option during the Option Period to negotiate a commercial licence (Licence) to exploit the Project Intellectual Property in the Field and Territory on fair and commercial terms (Option). Those terms must include the reservation by Macquarie of the right to use the licensed Project Intellectual Property for teaching, publication and research, including research funded by a third party. If the negotiating parties are unable to agree on the terms of a Term Sheet for a Licence within 90 days from the Option being exercised, the negotiations with respect to the Licence may be terminated by either party to the negotiation in which case the Option Holder’s Option immediately expires. Within 7 days of expiry of any Option, the Option Holder must return to Macquarie all Confidential Information relating to the Project Intellectual Property.

5.6  Responsibility for Maintaining Registration

In respect of Project Intellectual Property, Macquarie will determine what, if any, registration applications will be made. Subject to sub-clause 5.7, Macquarie is responsible for such registration and maintenance. The parties must use reasonable endeavours not to engage in any act or omission that will prejudice the grant of patent or similar rights in registrable Project Intellectual Property.

5.7  Payment of registration costs

If the Option Holder acquires a Licence to the Project Intellectual Property, unless otherwise agreed, the Option Holder must pay all costs of registration and maintenance of any registrable Project Intellectual Property. If at any time the Option Holder elects not to continue to pay registration costs then the Option Holder immediately ceases to have any interest in that item of Project Intellectual Property. Macquarie will immediately have the right to deal with that item of Project Intellectual Property as it sees fit (including abandoning any registrations for the Project Intellectual Property and/or granting rights to the Project Intellectual Property to third parties).

EPS Agreement (template 1.02.2017) 4 of 13