Universität Ulm Zentrale Verwaltung Abteilung III-2, Recht und Struktur Magic Phrases And Terms Formulierungsvorschläge für englische Vertragsverhandlungen Die Universitätsverwaltung hat in einem Merkblatt für Vertragsverhandlungen im Rahmen von Forschungsaufträgen Erläuterungen und Formulierungsvorschläge für die Verhandlung von Forschungsverträgen mit der Industrie gemacht. Das Merkblatt Magic Phrases And Terms soll ergänzend für die immer wieder vorkommenden englischsprachigen Verträge entsprechende Formulierungsvorschläge anbieten. Hinweis: dem anglo-amerikanischen Recht ist die ergänzende Vertragsauslegung, wie wir sie kennen, fremd. Englischsprachige Verträge sind daher oft sehr viel ausführlicher als vergleichbare deutsche Verträge dies wären. Vergütung des Forschungsauftrags Vergütung: During the term of the Agreement, Partner shall provide a total of xx.xxx,- (plus any statutory value-added tax) due to the payment conditions set out below: (z.b. Meilensteine)... Mehrwertsteuer... plus any statutory value-added tax (VAT). Kosten für Transport und Entsorgung (z.b. Gefahrgut) Partner will reimburse University for costs arising from delivering or disposing of study materials. Reisekostenabrechnung The allowance for travel costs is based on the guidelines laid down for the acceptance and use of the third party resources according to paragraph 8 and 59 of university law (Universitätsgesetz Baden- Württemberg). Arbeitsergebnisse (1) University will notify the Partner in writing as soon as possible of all important results obtained pertaining to the subject matter of the project, including any inventions made, and/ or technical improvements made ( results ). University shall assign and transfer to Partner any and all assignable rights for, interests in and title to, any of and all of the results. (2) As far as patentable inventions made in the research programme are concerned, the following provisions shall apply: a) University undertakes to notify Partner in writing as soon as possible of any report of an invention, as University receives such report from her employees under the German Employees Invention Act. b) Partner will be granted the sole right to negotiate on the rights at the invention (and possible patent rights) and the conditions under which they may be granted, as far as University can legally dispose of them. The conditions for using the in-
vention or transferring the rights to the invention will be agreed on in a separate contract. The conditions shall correspond to comparable license agreements (market value). c) Within four (4) weeks after receiving the notification, Partner will declare in writing, whether it makes use of the right to negotiate. In case Partner wishes to negotiate, it will cover the costs which may be necessary for patenting the invention. d) The sole right to negotiate will be granted no longer than five (5) months after receiving the notification. Should there be no agreement within this period, University is free to exploit the invention otherwise. e) The contractors agree to negotiate in a constructive and speedy way. The contractors declare to proceed in a way which will ensure that deadlines of the German Employees Invention Act may be kept. f) Mandatory provisions of the Employee Invention Act (e.g. 42 No. 2) shall not be affected by this Agreement. In begründeten Fällen ist die Universität bereit, folgende Formulierung zu akzeptieren: (1)... (2)... (3) As far as patentable inventions made in the research programme are concerned, the following provisions shall apply: (a) University shall assign to Partner all assignable rights relating to protective rights, including inventions, or parts thereof, including but not limited to any and all rights to or arising from proprietary rights, as far as university can legally dispose of them. (b) Partner shall have the right to apply for protective rights in any country Partner, at its sole discretion, deems necessary or of interest with respect to any and all inventions. (c) Partner will compensate University reasonably. The amount will be agreed on in a separate contract. The conditions shall be oriented according to comparable license agreements (market value). (d) Mandatory provisions of the Employee Invention Act (e.g. 42 No. 2) shall not be affected by this Agreement. In Ausnahmefällen kann abweichend von Variante 2 (d) eine pauschale Vergütung je übertragene Erfindung vereinbart werden: Partner will compensate University for each invention with a lump sum of xx.xxx,- plus VAT per transfer to Partner. Für den Fall der Schutzrechtsaufgabe: If Partner is no longer interested in retaining exclusive rights to the results, University shall have a right to request a royalty-free, permanent, world-wide, nonexclusive licence on the each patent, including all filed countries thereof. If Partner is not interested in filing a patent application covering any invention resulting from Universities services or if Partner is no longer interested in keeping a patent, Partner
will inform University thereof. University may then file or keep such patent application or patent at its own expense. Nutzungsrechte der Universität University shall have a royalty-free, permanent, nonexclusive licence for purposes of research and teaching. Inventors shall have a royalty-free, permanent, nonexclusive licence in accordance with the conditions of 42 No. 3 ArbEG (German Employees Invention Act). Außervertragliche Ergebnisse Each party hereto has and shall retain ownership of its intellectual property (both protected and unprotected) existing at the time this Agreement is concluded. Each party hereto shall grant the other party a non-exclusive right of use of this preexisting intellectual property free of charge limited to the scope of this Agreement, insofar as this is required for the execution of the Agreement and insofar as there are no third-party rights precluding such right of use. Insofar as preexisting intellectual property of University is required for commercialization of the study results, University provides Partner with a non-exclusive right of use on the terms and conditions of comparable license agreements (market value), provided that there are no third-party rights precluding such right of use. Details thereto shall be agreed between the parties in a separate agreement. Insofar as the parties hereto are aware of third-party rights, they shall notify the other party without delay. Ausschließlichkeit So long as University is performing any part of the work under this agreement, University shall not perform the same or similar work as that described in the attached program, for any other party. Geheimhaltung The parties hereto undertake to maintain secrecy and confidentiality with respect to all business secrets and to information, documents and experience of the other party which they acquire knowledge of in connection with this Agreement and which are marked as confidential or which are to be treated as confidential on the basis of the circumstances, and shall only disclose such information to third parties to the extent absolutely required for the performance of this Agreement and provided that these third parties have been bound by the recipient of confidential information, prior to the disclosing, up to the terms of this article. This obligation surviving the term of the contract for a period of three years. The duty to maintain secrecy shall not apply if it can be demonstrated that this information : a) was at the time of disclosure to the Party published or otherwise generally available to the public, or b) has after disclosure to the Party been published or become generally available to the public otherwise than through any act or omission on the part of the receiving Party, or c) was already in the possession of the receiving Party at the time of disclosure to the Party, or
d) was developed by the receiving Party independently of the work under the Agreement or acquired it by lawful means. The parties may depart from the duty to maintain secrecy by mutual written agreement. Nothing in this section shall prevent the communication of information as is needed to be communicated to comply with applicable laws or regulations or with a court of administrative order provided that insofar as reasonably possible the complying Party shall have informed the owner of the information of such need and shall have complied with such owner's reasonable instructions designed to protect the confidentiality of such information. Veröffentlichung Partner acknowledges the fundamental right of publication held by University. University shall have the right to publish results or disclose them to third parties only with the consent of Partner. Partner shall be informed at least four (4) weeks prior to such publication or disclosure. Partner may withhold agreement for a maximum period of three (3) months if required in order to protect intellectual property rights. After this period University is free to publish or disclose. Any mandatory right of disclosure accruing to the inventor and existing under the Employee Invention Act shall remain unaffected by this Agreement. University will inform Partner as soon as possible of any notification she may receive according to 42 No. 1 ArbEG (German Employees Invention Act). Haftung Gewährleistung University shall use its best efforts to perform the Work diligently. University shall perform the Work in conformance with recognised scientific standards and in compliance with the requirements of all applicable laws and regulations. By virtue of the research nature of the study, University does not represent or warrant that that a particular result will be obtained or that the result of the work may be used for a specific purpose or may be commercialized or that it is free of any third-party rights. University shall assume no responsibility for any kind of injury of damage unless such injury or damage has been caused by wilful intent or a grossly negligent act or omission. Universities responsibility shall not extend to claims from indirect or consequential loss or damages such as but not limited to loss of profit, revenue, contracts or the like. The total limit of liability of Universities in respect of any and all claims shall not exceed the sum of agreed costs of the project. Mandatory law shall not be affected by limitation of liability as mentioned above. Kündigung Where this agreement is terminated without fault on behalf of University, University is entitled to claim compensation of inevitable costs. Gerichtsstand Anwendbares Recht This agreement shall be governed by and construed in all respects according to German law, excluding principles of conflict of laws. The courts of Ulm shall have exclusive jurisdiction.
Schlussbestimmungen This contract constitutes the entire agreement between the parties in respect of the project, and supersedes all previous negotiations, commitments and writings concerning the project. Amendments or changes to this contract shall be valid and binding only if made in writing and signed by an authorised signatory of each of the parties. In the event that individual provisions contained in this Agreement shall be invalid, illegal or unenforceable in any respect, the validity or enforceability of the remaining provisions contained herein shall not thereby be affected. Any such invalid provision shall be replaced by a provision which best reflects what the parties hereto intended or would have intended if they had been aware of the invalidity of the provision. The same shall hold for any omissions in the Agreement.