Partnership Project Agreement STW - Paques
In every Project a “Partnership Project Agreement” will be signed between Paques BV, STW
and the involved University, which contains among others rules and obligations concerning
publications, IPR and confidentiality. The subjoined agreement is developed between Paques
and STW and will be the framework for further negotiations.
PARTNERSHIP PROJECT AGREEMENT
regarding
[_name project_]
THE PARTIES:
1.
Technology Foundation STW, a foundation existing and organized under the laws of
The Netherlands, with registered office at Van Vollenhovenlaan 661, 3527 JP Utrecht,
The Netherlands, hereinafter to be referred to as “STW”, in this matter duly represented
by E.E.W. Bruins,
2.
Paques Holding B.V. , a company existing and organized under the laws of The
Netherlands, with registered office at T. De Boerstraat 24, 8561 EL Balk, The
Netherlands, hereinafter to be referred to as “PAQUES”, in this matter duly represented
by R.J.J. Heim
3.
[_Name_],a research institute existing and organized under the laws of The Netherlands,
with registered office at [_address_], hereinafter to be referred to as “Participant”, in this
matter duly represented by [_name_],
All parties hereinafter together and individually to be referred as “Parties” respectively “Party”.
WHEREAS:
A.
STW enables new technology by funding applied scientific research and promoting
technology transfer.
B.
PAQUES, through its Affiliates (as defined hereinafter), is a technology provider in the
field of integrated water and gas treatment.
C.
STW and PAQUES have concluded a so-called ‘Partnership Agreement’, on the basis of
which they invite Dutch universities and research institutes to submit project proposals in
the field of the volatile fatty acid (VFA) platform for the production of biobased products
from waste streams, with the intention to jointly fund the project proposals that are
approved.
D.
The Participant has submitted the project proposal, titled [_title_], attached as Annex 1
to this Agreement (“Project Proposal”). The Project Proposal has been approved by
decision of [_date_].
Partnership Project Agreement STW - Paques
E.
The Parties now wish to lay down in writing the terms and conditions for the execution of
the Project Proposal.
HAVE AGREED AS FOLLOWS:
Article 1 – Definitions
As used in this Agreement the following terms, either in plural or in the single form, have
the following meaning:
1.
‘Agreement’ shall mean this agreement, including all annexes and amendments hereto.
2.
‘Affiliate’ shall mean any person, corporation, partnership or other business entity, which
is under control of PAQUES, ‘control’ meaning in this context the direct or indirect
ownership of more than fifty percent of the capital stock of a PAQUES, the power to
exercise more than fifty percent of the voting rights in a PAQUES, and/or the power to
determine the policy of a PAQUES in a decisive way.
3.
‘APP Results’ shall mean all information, Know-how, including inventions, software, data
and IPR that is generated or conceived by a Participant in a Project.
4.
‘Background’ shall mean all IPR, information, techniques, know-how, software and
materials (regardless of the form or medium in which they are disclosed or stored) that is
not generated or conceived within this Project provided by a party to the other party
within the Project, with the exception of the CP Results (defined in art. 1.6.).
5.
‘Confidential Information’ shall mean all information of whatever nature or form disclosed
during a Project by a Party or a Participant (the "Discloser ") to any other Party or
Participant (the "Receiver") in connection with that Project as well as the contents of this
Agreement, and any and all results and/or conclusions emanated from the purpose and
which:
a.
if disclosed in tangible form, was marked as confidential at the time of such
disclosure; or
b.
if disclosed orally, was identified as confidential at the time of such disclosure
and confirmed as confidential in writing within 30 days after disclosure;
6.
‘CP Results’ shall mean all inventions, results, materials, methods, processes, products,
programmes, software, findings and discoveries solely and on its own costs generated
by (an Affiliate of) the Commercial Partner (= PAQUES) within the Project,.
7.
“Effective Date” shall mean the date on which the Project formally starts, which is when
the Project leader undertook an initial expenditure of allocated funding or the date of the
first appointment of personnel, whichever is first.
8.
“IPR” shall mean Intellectual Property Rights, including industrial property rights, Knowhow, copyrights, neighboring rights and any similar right recognized from time to time in
jurisdiction, together with all rights of action in relation to the infringement of any of the
above.
Partnership Project Agreement STW - Paques
9
‘Participant’ shall mean a university or other research organisation eligible for STW
funding that participates in the Project.
10.
‘Project’ shall mean the research project for the performance of the activities in the field
of [_description_], as described in the Project Proposal (Annex 1).
11.
‘Project Committee’ shall mean the project committee as described in article 2.4 of this
Agreement.
12.
‘Project Leader’ shall mean an employee of the Participant with ultimate responsibility for
the content and realization of the Project.
13.
‘Results’ shall mean the APP Results and the CP Results.
14.
“User Committee” shall mean a committee established within the Project according to
STW policy, existing of the project leader, researchers, potential users, program offer
and if applicable special invited experts.
Article 2 – Conduct of the Project
1.
The Participant shall conduct the Project in accordance with the Project Proposal, and
the applicable “General Funding Conditions” as attached in Annex 2, to the best of its
knowledge and ability and taking into account the criteria and standards applicable to
scientific and/or technological research. The Participant shall conduct the Project during
the term of this Agreement.
2.
For the performance of the Project, the Participant shall select and appoint personnel
with appropriate qualifications. [_name_] shall be appointed as Project Leader. The
Participant shall ensure that the Project Leader and the other appointed personnel
comply with the obligations imposed on the Participant and its employees in this
Agreement.
3.
In realizing the Project, the Participant will comply with all applicable legislation and will
behave in an ethically acceptable manner as may be expected in scientific and/or
technological research. The Participant shall inform STW and PAQUES immediately if
new information emerges which is relevant to (the conduct of) the Project or the
utilization of the Results.
4.
A Project Committee will be formed, consisting of a maximum of two representatives of
each Party. The Project Leader chairs the Project Committee and a representative of
STW shall act as its secretary. The Project Committee shall meet at least twice a year.
During such meeting, the Project Committee shall discuss the progress of the Project, on
the basis of the written progress report, prepared by the Project Leader. The progress
report shall be sent to the Project Committee at least two weeks before the Project
Committee meeting and shall contain amongst others a description of the Results
obtained so far. The Project Leader shall use the format, as can be found at the
information desk (‘infobalie’) on the website of STW.
5.
If a User Committee is formed with the consent of the parties, the document “Task and
Method of Working of STW User Commitees” (Annex 3) will be applicable.
Partnership Project Agreement STW - Paques
6.
If, according to the Project Proposal, part of the Project will be performed by PAQUES,
PAQUES will ask an Affiliate to perform these activities. PAQUES shall ensure that such
Affiliate shall perform these activities in accordance with and in the manner as described
in this article and the Affiliate will be reimbursed against rates based on full absorption
method. If a Participant is not able to perform certain activities herself in the project or
needs to purchase certain products and or services and wishes to engage third parties in
order to purchase such products and services, Paques will the preferred supplier for
such products and services when it concerns core business of PAQUES such as but not
being limited to; market analyses, marketing plans, feasibility studies, (basic)
engineering studies, business plans and pilot plants.
Article 3 – Funding and payment
1. The Participant is according to the Project Proposal entitled to compensation of
expenses, incurred by the Participant in the execution of the Project. For the
performance of the Project, STW and PAQUES have budgeted an amount of €
[_amount_]. The conditions on the basis of which the Participant can claim its expenses,
are described in the document ‘General Funding Conditions’, attached as to this
Agreement.
2. The Participant is obliged to spend the funds in a lawful fashion and according to the
Project Proposal. In case of doubt, the Participant should allow access to the
administrative project organisation and the internal control system at the request of STW
and/or Paques, via, and in consultation with, STW
Article 4 - Results
1.
STW has funded the Project according to its General Funding Conditions which states
that all results are jointly owned by STW and the Participant, which means under this
Agreement that APP Results are owned jointly by STW and the Participant.
2.
The Participant shall ensure that both its employees as well as any involved third parties
(taking into consideration article 9.5 of this Agreement) who might be able to claim rights
to the APP Results, transfer those rights to the Participant and STW.
3.
According to the rules and regulations as stated on the STW website concerning the
Partnership-instrument, PAQUES shall have the non-exclusive worldwide, irrevocable,
royalty-free right to use the APP Results for research, development and commercial
purposes without the right to sublicense other than to its Affiliates.
4.
In the event PAQUES wishes to be granted exclusive rights to a particular Result in a
particular application field with the right to sublicense, PAQUES will inform STW in
written notice within three (3) months of being notified of the existence of such Result. In
that case, PAQUES shall be granted exclusive rights to such Result upon –at least- the
following conditions:
a.
PAQUES pays via STW to STW and the Participant that generated the Result a
remuneration based on a market price. This remuneration shall be a royalty
payment based on the revenues generated by the Results or a lumpsum. In the
negotiation about the market price Parties shall take into account the financial
Partnership Project Agreement STW - Paques
b.
c.
d.
contribution and remaining development effort of PAQUES to the Programme
and the particular Project and the application field. Such negotiations on the
market price shall be conducted in good faith by the Parties.
PAQUES shall make reasonable endeavours to commercialise the Results.
STW and the Participant that generated the Result retain at all times a royaltyfree right to use the Results for further non-commercial internal research and
education.
Parties shall indemnify and hold harmless each other from any claims from third
parties due to damage caused by the application of the Results by or through a
Party.
In any event, neither Party shall be liable to the other Party for any loss of profit, indirect or
consequential loss or damage which may be suffered by the other Party in connection with
this Agreement to the maximum extent permitted by law. The limitations of liability shall
not apply to claims or damages caused by wilful misconduct or gross negligence and
breach of confidentiality on the side of the Participants’ researchers.
5.
As long as the option to grant exclusive rights as meant in paragraph 4 is not being
executed by PAQUES, STW and the Participant shall be entitled to grant (user) rights
with regard to the APP Results to third parties.
6.
If the in article 4.5. mentioned third party is considered to be a competitor of PAQUES,
PAQUES will have a right of first refusal to obtain an exclusive license and/or purchase
the ownership of the Results under the conditions mentioned in article 4.4. In case STW
and the Participant enter into an agreement with a third party in accordance with article
4.5., Parties will negotiate a remuneration for PAQUES as a payoff for the non-exclusive
rights PAQUES has obtained with this Agreement
7.
The Project Leader shall inform STW and PAQUES immediately if APP Results are
generated which are eligible for protection by a patent. The Project Leader shall then
complete an invention disclosure form, the format for which can be found on the website
of STW. Based on said invention disclosure form, PAQUES shall decide within three (3)
months whether the APP Results will be patented. In case of a positive decision, the
Parties shall agree on the details for the patent application procedure. The patent
application shall be filed on behalf of STW and the Participant. The costs related to the
patent application shall be borne by PAQUES.
8.
The application of a patent shall not affect the rights of PAQUES and its Affiliates, as
described in paragraph 3 above.
9.
The CP Results and all (user)rights pertaining thereto shall be owned solely by
PAQUES. These rights include amongst others the right to transfer the CP Results to
third parties and to apply for patent rights on the CP Results. STW and the Participant
shall be entitled to use the CP Results only for the execution of the Project.
10.
If Results are generated by a Participant and PAQUES jointly and if the contributions to
such Results form an indivisible part thereof such that it is not possible to separate them
for the purpose of obtaining Intellectual Property Rights protecting such Results, they
shall be jointly owned by the Participant, PAQUES and STW (“Joint Results”).
Ownership of Intellectual Property Rights for Joint Inventions (“Joint IPR”) shall be
equally shared between Participant, PAQUES or its relevant Affiliate and STW. All cost
Partnership Project Agreement STW - Paques
related to applications for and maintenance of Joint IPR will be shared equally between
the owners. Each joint owner of Joint IPR and its Affiliates shall have the non-exclusive,
irrevocable and royaltyfree right to use the invention for research, development and
education purposes. PAQUES and its Affiliates shall have the non-exclusive,
irrevocable and royaltyfree right to use the invention for commercial purposes PAQUES
and its relevant Affiliates and STW/Participants shall only grant jointly non-exclusive
licenses under Joint IPR, without the right to grant sublicenses and provided that the
other owner at its request is notified on such licenses being in force and effect. Direct net
monetary revenues from licenses under Joint IPR shall be shared – on conditions to be
agreed upon – between PAQUES on one hand and STW and Participants on the other
hand.
11.
In extraordinary cases PAQUES has the right to extend the period as mentioned in
article 4.4 and 4.7 with three (3) months. PAQUES will inform STW and the Participant
about such extension within two (2) months after being notified of the Result concerned.
Notwithstanding the given right to an extension, PAQUES recognizes the interests of
STW and the Participant and therefore always strives for a swift decision.
Article 5 – Confidentiality and publication
1
Each Party undertakes to observe the Background of another Party as well as the
Results, in whatever form, as to be Confidential Information. Each Party undertakes to
hold the Background of another Party as well as the Results, both during the term of this
Agreement as well as for an indefinite period of time thereafter, in strictest confidence
and not to disclose or allow the disclosure of the Background of another Party or the
Results to any third party, or to make the Background of another Party, the Results, or
any part thereof, publicly available. A Party shall treat the Background of another Party
as well as the Results with the same degree of care that it applies to its own Confidential
Information (but in any case not less than reasonable care).
2.
Each Party undertakes to use the Background of another Party solely for performance of
the Project, and not for any other purpose. Each Party shall furthermore undertake to
use the Results only in accordance with the terms of this Agreement.
3.
The aforementioned obligations and prohibitions are not applicable to the Background,
the Results, or any part thereof that:
(a) has come into the public domain prior to, or after the disclosure thereof and in
such case through no wrongful act of the receiving Party;
(b) was already known to the receiving Party, as evidenced by written documentation
in the files of the receiving Party;
(c) has been lawfully received by a Party without restrictions or breach of this
Agreement;
(d) has been or is published without violation of this Agreement;
(e) is independently developed in good faith by employees of the receiving Party
who did not have access to the confidential information.
Partnership Project Agreement STW - Paques
The burden of proof lies with the receiving Party.
4.
Each Party is entitled to give its employees and the employees of its Affiliates access to
the Background of another Party as well as the Results, as far as such is necessary for
them to fulfill their tasks. Each Party will ensure that its employees and the employees of
its Affiliates will hold the Background of another Party as well as the Results in strictest
confidence and use the Background of another Party as well as the Results in
accordance with the provisions of this Agreement.
5.
PAQUES recognizes the desire from STW and the Participant to publish results and/or
details of academic research in scientific journals, and/or present these at scientific
meetings. STW and the Participant recognize PAQUES desire to preserve the IPR
arising out of the Project. Therefore, STW and the Participant shall have the right to
publish scientific results of the Project, subject to the provisions in this article. PAQUES
shall be furnished with a copy of any proposed publications for review and comment,
prior to the submission for publication, for manuscripts at least thirty (30) days prior to
submission, and for abstracts at least ten (10) days prior to submission.
6.
STW and the Participant agree to give good faith consideration to any comments or
suggestions which are offered by PAQUES within the time limits set forth in this article.
In addition, at PAQUES request, STW and the Participant shall delay any proposed
publication disclosing inventions, ideas, or other IPR for which PAQUES intends to
obtain patent protection, until such time that proper submission of patent application(s)
has been completed. PAQUES shall limit any such delay to a maximum period of three
(3) months, with the possibility of an extension as mentioned in article 4.10.
7.
If the publication or presentation of results and/or details of academic research
would necessitate the simultaneous disclosure of Confidential Information, as
mentioned in paragraph 3, of PAQUES, STW and the Participant shall provide
PAQUES with a written request for permission to disclose said information.
8.
The Participant shall ensure that all publications or any other dissemination related to
the Programme, Project(s) and Result(s) shall include the following statement:
“This research is supported by PAQUES and Technology Foundation STW”.
Where possible, the publications, including scientific posters and prototypes, should also
contain the STW and PAQUES logo.
9.
For the purposes of reporting to the government and the society, STW may publish nonenabling summaries of the Project following consultation with the Project Leader. STW
shall ensure that such summaries shall not affect the possibility of applying for patent
rights with regard to the Results or disclose any CP Results.
Partnership Project Agreement STW - Paques
Article 6 – Liability and warranties
1.
Each Party is responsible for its own actions and omissions under this Agreement.
2.
Parties shall not hold each other liable for damage to property or injury arising out of the
performance of the Project and/or the Agreement, unless the damage or injury was
caused by negligence or wilful intent of the Party causing the damage or injury.
3.
The Participant agrees to indemnify STW and PAQUES for any claims and damages
arising out of the execution of this Agreement to the extent such claims or damages are
caused by or result from the negligent acts or omissions or intentional misconduct of the
Participant including but not being limited to research fraud. In these cases the paid
amounts will be returned to STW and PAQUES by Participant notwithstanding the right
to claims other damages.
4.
Notwithstanding article 2.1 above, the Participant makes no representation and extends
no warranty of any kind, either express or implied, with regard to the effectiveness,
merchantability or fitness for a particular purpose of the APP Results. The same applies
for PAQUES with regard to the CP Results.
Article 7 – Term and termination
1.
This Agreement shall become effective on the Effective Date and shall thereafter remain
into force until the end of the Project. The end of the Project is the last day of service of
the last researcher funded by STW.
2.
After this Agreement has ended, the articles 4, 5, 6, 8 and 9 shall remain in full force and
effect.
3.
If the participation of a Party in the Agreement is terminated prematurely on the basis of
the law, the other Parties shall discuss if they wish to continue the Agreement and on
what conditions. In case as a result of prematurely termination PAQUES is the no longer
considered to be a Party under this Agreement, PAQUES will be compensated against
market value for the Results up to that moment but with a maximum to the amount of the
paid funding up to the moment of termination of the participation. Should the
participation of the Participant be terminated and the other Parties decide that they
nevertheless want to continue the Project, the Participant will, at the request of STW and
PAQUES, cooperate to the best of its ability in transferring the Project to the selected
new research institute.
4.
When the participation of a Party has been terminated as meant in paragraph 3 above,
paragraph 2 above shall apply, with the understanding that said Party shall not acquire
any rights with regard to the Results, generated after the termination of its participation.
5.
Each Party is entitled to terminate this agreement by written notice sent by
registered mail to the other party if the other party is in breach of this agreement
and the breach is not remedied within thirty (30) days of the other party receiving
written notice specifying the breach and requiring its remedy.
Partnership Project Agreement STW - Paques
6.
STW and the Academic Partner have the right to terminate this agreement
prematurely by registered mail if PAQUES becomes insolvent or if an order is
made or a resolution is passed for the winding up of PAQUES or if PAQUES is
granted suspension of payment.
Article 8 - Governing law and jurisdiction
1.
This Agreement shall be governed by the laws of The Netherlands.
2.
If any dispute should arise between any of the Parties, such Parties shall use reasonable
effort to settle such dispute before pursuing any remedy they may have at law.
3.
Any dispute, resulting from this Agreement, or further agreements resulting there from
which do not stipulate otherwise, which has not been solved by the Parties in
accordance with the previous provision, shall be submitted to the competent court in
Utrecht, The Netherlands.
Article 9 - Miscellaneous
1.
None of the Parties shall be entitled to transfer, by means of assignment, sale or
otherwise, or to encumber any and all of the rights granted under and obligations
deriving from this Agreement, either in whole or in part, to a third party without the prior
written consent of the other Parties.
2.
Unless explicitly agreed otherwise in writing, none of the Parties is entitled to act or
make legally binding declarations on behalf of any of the other Parties. Nothing in this
Agreement shall be deemed to constitute a joint venture, agency or any other kind of
formal business grouping or entity between the Parties.
3.
Any amendments or additions made to the Agreement shall only be valid and binding
between the Parties if made in writing and executed by all Parties.
4.
This Agreement contains 3 annexes which form an integral part of this Agreement:
Annex 1
Project Proposal ‘[_title_]’
Annex 2
General Funding Conditions
Annex 3
Task and Method of Working STW User Committees
5.
In the event that during the course of this Agreement the Parties agree to use material
from PAQUES, PAQUES is entitled to ask for the signing of a material transfer
agreement prior to the exchange of said material, which material transfer agreement has
to be in accordance with this Agreement.
6.
None of the Parties grants any rights and/or licenses to the other Parties, either explicit
or implicit, nor waives any of its existing rights, unless explicitly mentioned in this
Agreement.
Partnership Project Agreement STW - Paques
Signed in threefold,
____________________
Technology Foundation STW
By: E.E.W. Bruins
Place:
Date:
_____________________
[________________]
By:
Place:
Date:
____________________
PAQUES
By:
Place:
Date: