Material Transfer Agreement

Transcription

1 PARTIES UNSW Recipient The University of New South Wales ABN , a body corporate established pursuant to the University of New South Wales Act 1989 (NSW of UNSW Sydney NSW 2052, Australia [insert name] ABN of [address] BACKGROUND 1. UNSW agrees to provide research Material to the Recipient and to licence the Background IP to the Recipient for the Approved Purpose. 2. In consideration of UNSW providing the Research Material, the Recipient agrees to pay the Fees (if any and comply with the terms of this Agreement. DETAILS KEY DATES Commencement Date (clause 10.1 Completion Date (clause 10.1 Collection Date (clause 2.3 CONTACT DETAILS Address for notices (clause 13 UNSW address: Attention: Address: Fax: Recipient address: Attention: Address: Fax: INSURANCE Insurance Required (clause 11.5 [details] MATERIALS Approved Purpose (clause 3 Description Quantity Packaging Collection Location (clause 2 Non-clinical, non-commercial research purposes

2 PAYMENT Fees (clause 2.1 PROJECT Project Description Project Director Other Key Personnel Project Location Reporting Date (clause 4 [insert amount] 2

3 Material Transfer Agreement 1. Interpretation 1.1 In this Agreement: Background IP means all Intellectual Property rights embodied in the Materials owned by or licensed to UNSW at the Commencement Date which UNSW has the right to license to third parties and that are necessary for the Recipient's use of the Materials for the Approved Purpose in accordance with this Agreement; Confidential Information means all know how, financial information and other commercially valuable information in whatever form including unpatented inventions, trade secrets, formulae, graphs, drawings, designs, biological materials, samples, devices, models and other materials of whatever description which a party claims is confidential to itself and over which it has full control and includes all other such information that may be in the possession of a party s employees or management. Information is not confidential if: (d (e (f it is or becomes part of the public domain unless it came into the public domain by a breach of confidentiality; it is obtained lawfully from a third party without any breach of confidentiality; it is already known by the recipient party (as shown by its written records before the date of disclosure to it; it is independently developed by an employee of the recipient party who has no knowledge of the disclosure under this Agreement; required to be disclosed by a court, rule or governmental law or regulation, or the rules of any stock exchange, provided that the party making the disclosure provides prompt notice to the other party of any such requirement; or it is required to be disclosed pursuant to this Agreement; Derivatives means any improvements or modifications of the Materials made by the Recipient, or anything derived by Recipient from or using the Materials, including: structural or functional analogues and homologues and purified or fractionated subsets of the Materials; expression products, replicates and progeny of any of the above; and polynucleotides coding for any of the above; Details means the matters set out in the table on the front page(s of this Agreement; GST means the tax imposed by the A New Tax System (Goods and Services Tax Act 1999 (Cth. Intellectual Property Rights or Intellectual Property means all intellectual property rights, including without limitation: patents, copyright, rights in circuit layouts, registered designs, plant varieties, trade marks (including service marks, all other rights resulting from intellectual activity in the industrial, scientific, literary or artistic fields and the right to have confidential information kept confidential; and any application or right to apply for registration of any of those rights; 3

4 Materials means the Materials specified on the front page(s of this Agreement and all Derivatives; Paper means any proposed manuscript, abstract, paper, journal article, student thesis, or content of any oral, poster or other presentation; Project IP means all Intellectual Property created, conceived, developed or reduced to practice by or on behalf of Recipient using or relating to the Materials, other than Intellectual Property in the Derivatives; Related Body Corporate has the meaning given to that term in section 50 of the Corporations Act 2001 (Cth; and Results means all outcomes of Recipient's use of the Materials, including all information, data, Derivatives and tangible objects arising from Recipient's use of the Materials. 1.2 Unless the context otherwise requires: (d (e (f a term defined in the Details has a corresponding meaning in this Agreement; a word which denotes the singular denotes the plural and vice versa; where a word or phrase is given a particular meaning, other parts of speech and grammatical forms of that word or phrase have corresponding meanings; any use of the verb includes, or of words such as for example or such as, do not limit anything else that is included in general speech; and a reference to any legislation includes that legislation as amended, re-enacted consolidated or substituted; and a reference to a person includes a partnership and a body whether corporate or otherwise. 2. Supply of Materials 2.1 Recipient must pay to UNSW the Fees (if any prior to the collection of the Materials. 2.2 Upon receipt of the Fees (if any, UNSW agrees to make the Materials available for collection by Recipient at the Collection Location in the quantity and packaging specified in the Details (Collection Date. 2.3 Recipient must arrange for collection of the Materials from the Collection Location at its own cost within 60 days of the Commencement Date or as otherwise agreed between the parties. 2.4 If the Materials are not collected by or on behalf of Recipient at Collection Date or as otherwise agreed between the parties, this Agreement will automatically terminate with immediate effect. 2.5 All risk in the Materials transfers to Recipient upon collection. 3. Use of Materials 3.1 The Recipient may use the Materials: during the term of this Agreement; at the Project Location; 4

5 (d solely for the Approved Purpose; and under the supervision of the Project Director. 3.2 The Recipient must at all times keep the Materials secure, confidential and under the personal care and control of the Project Director. 3.3 The Recipient must not, without the prior written consent of UNSW: sell, loan, or otherwise provide any Materials to any third party; or use the Materials for any purpose other than for the Approved Purpose or at any location other than at the Location. 3.4 The Recipient must store, transport and use the Materials in accordance with all applicable laws, regulations, codes of practice and ethical principles and all reasonable directions provided by UNSW. 3.5 The Recipient must not use the Materials in any research or trials involving human subjects, human body fluids, extracts of human tissue in plant culture or human cells in cell culture without UNSW s express prior written consent. 3.6 The Recipient acknowledges that its right to use the Materials under this Agreement is nonexclusive and that nothing in this Agreement prevents UNSW from exploiting the Materials or any Derivatives or supplying them to any third party. 4. Reporting On or before the Reporting Date, the Recipient must provide to UNSW a written report setting out the progress of the Project, including details of all Results, Derivatives and Project IP. 5. Access On reasonable notice, the Recipient must grant access to the Project Location at reasonable times to UNSW for the purpose of ascertaining whether the Recipient is complying with this Agreement. 6. Intellectual Property 6.1 Each party retains all rights in Intellectual Property owned by it prior to the Commencement Date. Nothing in this Agreement or the use of the Materials by Recipient grants to Recipient a licence of or other interest in any Intellectual Property of UNSW other than as expressly set out in this Agreement. 6.2 UNSW grants to Recipient during the term of this Agreement a non-exclusive, royalty-free, non-transferable licence to use the Background IP solely to the extent necessary for Recipient's use of the Materials for the Approved Purpose in accordance with this Agreement. 6.3 All Intellectual Property in or relating to the Derivatives vests in and is hereby assigned to UNSW with effect from its creation. 6.4 Notwithstanding any other provision contained in this Agreement, all Intellectual Property created by or on behalf of Recipient as a result of use of the Materials other than in accordance with this Agreement vests in and is hereby assigned to UNSW with effect from its creation. 6.5 All Project IP vests in and is hereby assigned to UNSW with effect from its creation. 5

6 6.6 Upon request, Recipient must at its cost sign all documents and do all things (including requiring its Project Director and Other Key Personnel to sign documents as may be necessary or desirable to vest, confirm, perfect and record the ownership rights of UNSW under this clause. 6.7 Recipient must not directly or indirectly engage in any conduct which may endanger the capacity of any Project IP to be protected or challenge its ownership or validity. 7. Commercialis ation Except where this Agreement is terminated by UNSW under clause 10.3, if Recipient wishes to commercialise any Intellectual Property in any Derivatives or Project IP, UNSW agrees to negotiate with Recipient on a good faith basis the terms of an agreement for this purpose, provided that no party is under any obligation to enter into any such agreement on any specific terms, or at all. 8. Confidentiality 8.1 Recipient may only use the Confidential Information for the Approved Purpose in accordance with this Agreement. 8.2 Subject to clause 8.1 Recipient must: (d not use, and ensure that its employees, officers and agents do not use, any Confidential Information for any purpose other than the Approved Purpose in compliance with its obligations under this Agreement; take all action necessary to maintain the confidential nature of the Confidential Information, including keeping all records of the Confidential Information under lock and key or password protection; not disclose any of the Confidential Information to any person other than those of its employees who need to have access to that Confidential Information for the Approved Purpose, who are aware of the requirements of this Agreement, and who are bound by an enforceable obligation of confidentiality; and destroy all documents and other materials in whatever form in its possession, power or control which contain or refer to any Confidential Information, on the earlier of termination of this Agreement, demand by UNSW or the time they are no longer required for Recipient's use of the Materials for the Approved Purpose in accordance with this Agreement. 8.3 The Recipient s obligations of confidentiality will survive expiration or earlier termination of this Agreement and will continue until the Confidential Information disclosed to it lawfully becomes part of the public domain. 9. Publication 9.1 Recipient must not publish any Paper containing or referring to any Materials, Derivatives, Results, Background IP or Project IP without the prior written consent of UNSW (Consent. 9.2 In order to obtain Consent for the publication of a Paper, Recipient must provide to UNSW a copy of the Paper at least 30 days before forwarding the Paper to any person not bound by the confidentiality obligations set out in clause UNSW may within 21 days of receipt of a proposed Paper reasonably object to or request a delay of the publication of the Paper in whole or in part, in which case Recipient must not publish, or must delay the publication of, the Paper (as applicable. If UNSW fails to object or 6

7 request a delay within this period, UNSW will be deemed to have consented to the publication of the Paper. 9.4 UNSW must not unreasonably withhold its consent to the publication of a Paper unless it believes the publication will adversely affect the protection or commercialisation of the Materials, Derivatives, Background IP or Project IP. 9.5 Recipient must acknowledge the role of UNSW in any Paper containing or referring to the Materials, Derivatives, Results, Background IP or Project IP, and must, where any significant advice or recommendations have been provided by an employee of UNSW, acknowledge the authorship of that person (if appropriate, in each case in accordance with usual academic practice. 9.6 A party must not use another party's name or logo without the other party's prior written consent. 10. Termination 10.1 This Agreement starts on the Commencement Date and terminates on the Completion Date unless it is terminated earlier in accordance with its terms A party may terminate this Agreement by the provision of 30 days notice to the other party A party may terminate this Agreement immediately by notice to the other if that party: commits a breach of any term of this Agreement and, if the breach is capable of remedy, fails to remedy the breach within 14 days after being required to do so in writing by the non-breaching party; or goes into liquidation, has a receiver or receiver and manager appointed to it or any part of its assets, enters into a scheme of arrangement with creditors or suffers any other form of external administration Upon the earlier of: the termination or expiry of this Agreement for any reason; or the date the Materials are no longer required for the Approved Purpose, Recipient must cease all use of, and return to UNSW or at UNSW s instruction destroy, all Materials and Derivatives Clauses 6, 7, 8, 9, 10.4 and 11 survive expiry or termination of this Agreement. 11. Liability and Indemnity 11.1 UNSW does not warrant that: the Materials are fit for the Approved Purpose, nor that they have any particular qualities or characteristics; the Project will lead to any particular result; or the use of the Materials will not infringe the rights (including Intellectual Property rights of any person Recipient acknowledges that the Materials are experimental in nature, and to the extent permitted by law, UNSW excludes all warranties, express or implied, including without 7

8 limitation warranties of merchantability, fitness for a particular use, safety or quality in relation to the supply of Materials To the extent permitted by law, UNSW will have no liability to Recipient, however arising and under any cause of action or theory of liability, including in respect of special, indirect or consequential damages, loss of profit (whether direct or indirect or loss of business opportunity Recipient releases and indemnifies UNSW and its officers, employees, consultants and agents from and against all actions, claims, proceedings and demands (including those brought by third parties which may be brought against it or them, whether on their own or jointly with Recipient and whether at common law, under tort (including negligence, in equity, pursuant to statute or otherwise, in respect of any loss, death, injury, illness or damage (whether personal or property, and whether direct or consequential, including consequential financial loss, arising out of Recipient s collection, use, storage or disposal of the Materials, and from and against all damages, reasonable costs and expenses incurred in defending, satisfying or settling any such claim, proceeding or demand Recipient must during the term of this Agreement at its cost take out and maintain all necessary or prudent insurances in relation to the Project, including the insurances specified in the Details (if any UNSW may request Recipient to provide written evidence of such insurances at any time (including certificates of currency from the insurer. 12. Taxes If taxes are payable on any supply made under this Agreement (including GST, Recipient must pay an additional amount equivalent to the taxes. UNSW will provide a tax invoice. 13. Notices 13.1 A party giving notice or notifying under this Agreement must do so in writing: directed to the recipient s address specified in the Details as altered by any notice; and hand delivered or sent by prepaid post or facsimile to that address A notice given in accordance with this clause is taken to be received: if hand delivered, on delivery; if sent by prepaid post, seven (7 days after the date of posting; or if sent by facsimile, when the sender s facsimile system generates a message confirming successful transmission of the total number of pages of the notice, unless within 8 business hours after that transmission, the recipient informs the sender that it has not received the entire notice. 14. No waiver 14.1 A party s agreement to waive a right or entitlement under this Agreement is only effective if that party gives written notice of that waiver to the party seeking the benefit of the waiver Waiver by a party of anything that another party must do under this Agreement is not a waiver of any other right or entitlement under this Agreement. 8

9 14.3 A failure or delay in exercising a right arising from a breach of this Agreement is not a waiver of that right. 15. Dispute resolution 15.1 No party may start arbitration, tribunal or court proceedings (except proceedings seeking interlocutory relief in respect of a Dispute unless it has first complied with this clause The parties will use their best endeavours to co-operatively resolve a Dispute A party to this Agreement claiming that a Dispute has arisen out of or in relation to this Agreement must give written notice (Notice to the other party specifying the nature of the Dispute If the parties do not agree within seven days of receipt of the Notice (or such further period as agreed in writing by them as to: the dispute resolution technique (eg expert determination and procedures to be adopted; the timetable for all steps in those procedures; and the selection and compensation of the independent person required for such technique, the parties must mediate the Dispute in accordance with the Mediation Rules of the Law Society of New South Wales, and, the President of the Law Society of New South Wales or the President s nominee will select the mediator and determine the mediator s remuneration. 16. General 16.1 This Agreement may only be varied in writing, signed by all the parties A party must not assign its rights or obligations under this Agreement without the prior written consent of the other party This Agreement constitutes the entire agreement between the parties in relation to its subject matter and supersedes any previous agreement of the parties, or any other communication or representation made, in relation to its subject matter If a provision of this Agreement is invalid, illegal or unenforceable, then to the extent of the invalidity, illegality or unenforceability, that provision must be ignored in the interpretation of this Agreement. All other provisions of this Agreement remain in full force and effect A party may execute this Agreement by signing a counterpart. All counterparts constitute one document, when taken together Each party must: do or cause to be done all acts and things necessary or desirable to give effect to; and refrain from doing all acts and things that could hinder performance by any party of, this Agreement Each party is to pay its own costs, charges and expenses in entering into this Agreement This Agreement binds and benefits the parties, their respective successors and permitted assigns. 9

10 16.9 Unless this Agreement provides otherwise, a party has no right of set-off against a payment due to another party This Agreement is governed by and must be construed in accordance with the laws of New South Wales. Each party: irrevocably and unconditionally submits to the non-exclusive jurisdiction of the courts of New South Wales and all courts that have jurisdiction to hear appeals from them; and waives any right to object to proceedings being brought in those courts for any reason. 10

11 Executed as an agreement Signed for and on behalf of the University of New South Wales by an authorised person in the presence of: Signature Signature Name (please print Name (please print Date of signing Signed for and on behalf of the [Recipient] by an authorised person in the presence of: Signature Signature Name (please print Name (please print Date of signing By signing this Agreement, each signatory warrants that they have authority to enter into this Agreement on behalf of the party they are stated to represent. 11