JOINT RESEARCH AND DEVELOPMENT AGREEMENT
BETWEEN
UNIVERSITI SAINS MALAYSIA
AND
ABC SDN BHD
IN RELATION TO DEVELOPMENT OF ……………..
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R E S E A R C H A N D D E V E L O P M E N T A G R E E M E N T
T H I S R E S E A R C H A N D D E V E L O P M E N T A G R E E M E N T is made
on the ___________ day of _____________ 20 (hereinafter referred to as “Agreement”);
BETWEEN
UNIVERSITI SAINS MALAYSIA, a public institution of higher learning established under the
Universities and University Colleges Act 1971 which for the purpose of this Agreement is
represented by ……………………. with its main campus at 11800 USM, Pulau Pinang
(hereinafter referred to as “USM”) of the first part;
AND
ABC SDN BHD (Company No. ………………….) a company incorporated under the
Companies Act 1965 [Act 125] and having its business address at
………………………………………………………. (hereinafter referred to as “ABC”) of the
second part.
(USM and ABC shall hereinafter be collectively referred to as "Parties" and individually as
"Party", where the context so requires).
WHEREAS
A. USM has the scientific and technical expertise of the scientists, researchers, students
and facilities as well as the experience to function amongst other things, as technology
consultant and carry out the milestone in relation to the Project as detailed in
Schedule A Part B hereof.
B. ABC has received a grant from ………… to develop and up-scale a new technology on
……….. (hereinafter referred to as “Project”).
C. ABC and USM are desirous of formalizing this collaboration by entering into this
Agreement subject to the terms and conditions as stipulated herein.
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NOW IT IS HEREBY AGREED AS FOLLOWS:
CLAUSE 1 – DEFINITIONS AND INTERPRETATIONS
1.1 In this Agreement, unless the context otherwise requires, the following terms shall
have the following meaning:-
“Intellectual Property” means
(a) Inventions; manner, method or process of manufacture; method or principle
of construction; or design; plan, drawing or scientific, technical or
engineering information or document;
(b) Improvement, modification or development of any of the foregoing;
(c) Patent, application for a patent, right to apply for a patent or similar rights for
or in respect of any intellectual Property referred to in paragraph (a) or (b);
(d) Trade secret, know-how, Confidential Information or right of secrecy or
confidentiality in respect of any information or document or other Intellectual
Property referred to in paragraph (a) or (b);
(e) Copyright or other rights in the nature of copyright subsisting in any works or
other subject matter referred to in paragraph (a) or (b);
(f) Registered and unregistered trademark, registered design, application for
registration of a design, right to apply for registration of a design or similar
rights for or in respect of any work referred to in paragraph (a) or (b);
(g) Any Intellectual Property in addition to the above which falls within the
definition of intellectual property rights contained in Article 2 of the World
Intellectual Property Organisation Convention of July 1967; and
(h) Any other rights arising from intellectual activities in the scientific, literary or
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artistic fields,
whether vested before or after the date of this Agreement and whether existing in
Malaysia or otherwise and for the duration of the rights;
“Confidential Information” either oral or in writing shall mean any and all technical
and non-technical information including patent, copyright, trade secret, and
proprietary information, techniques, sketches, drawings, processes, apparatus,
equipment, algorithms, software programs, software source documents, and
formulae related to a technology or invention, and includes, without limitation, its
respective information concerning research, experimental work, development, design
details and specifications, engineering, financial information, procurement
requirements, purchasing manufacturing, customer list, business forecasts, sales
and merchandising and marketing plans and information designated in writing to be
confidential or by its nature intended to be for the sole knowledge of the receiving
Party or if orally given in the circumstances of confidence or confirmed promptly in
writing as having been disclosed as confidential or proprietary for the business
arrangement and or Project; that is conveyed by the disclosing Party to the receiving
Party, in written, oral, digital, magnetic, photographic and/or whatsoever forms.
However, the term Confidential Information shall not include any information
disclosed by one Party to the other which:-
a) on the date of this Agreement , or thereafter becomes, publicly available
otherwise than through a breach of this Agreement; or
b) is required by law to disclose ( in this event, it must disclose only to the
minimum information required to comply with the law); or
c) is legitimately obtained at any time by either Party from a third party without
restrictions in respect of disclosure or use.
“Development Phase” means the development as stated and identified pursuant to
Clause 4 in this Agreement.
“Project” means the research and development project as set out in Recital A above
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and as further described and detailed in Schedule A Part A hereof.
1.2 Any monetary references shall mean the Malaysian currency.
1.3 Any word (including a word defined or given a special meaning) denoting the singular
shall include the plural and vice versa.
1.4 Any word denoting one gender only shall include each other gender.
1.5 A reference to a person shall include a corporation as well as a natural person.
1.6 A reference to a Schedule is a reference to a Schedule to this Agreement.
CLAUSE 2 – COMMENCEMENT, TERM AND CONDITION PRECEDENT
2.1 This Agreement shall become effective on ……. and shall be in force for the duration
of …. (…) months thereafter unless subsequent time extensions, supplement,
continuation, or renewal is mutually agreed upon in writing between the Parties.
2.2 Notwithstanding sub-clause 2.1 above, the continuation of the Development Phase of
the Collaboration Programme (as hereinafter defined) is subject to the condition
precedent that ……………. If this condition precedent remains unsatisfied for a
period of six (6) months from the date of this Agreement, USM shall have the full
discretion and right to terminate the Agreement and the Parties hereto shall have no
claim against the other Party except on the Confidential Information clause herein.
CLAUSE 3 – COLLABORATION PROGRAMME
3.1 USM and ABC shall collaborate in the following activities (hereinafter referred to as
“the Collaboration Programme”):-
Funding Phase:
Continuation of the …… grant for the sum of Ringgit
Malaysia …. (RM …….) only
Development Phase: The carrying out of various milestone and/or
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development tasks/activities for the Project as
described in Schedule A Part A and B hereof.
CLAUSE 4 – RESPONSIBILITIES OF THE PARTIES
In consideration of and subject to the terms of this Agreement and all applicable laws, the
Parties shall carry out their respective responsibilities in accordance with the provisions of this
Agreement and within the scope of responsibilities as set out below.
4.1 ABC’s responsibilities shall be as follows:-
Funding Phase (a) to secure the grant on the execution of this
Agreement.
Development Phase: (a) to be responsible for the overall running of the
Project;
(b) to carry out activities of Milestone 1 to
Milestone 9 as set out in Project Milestone and
output in Part B of Schedule A.
(c) to be responsible for all reasonable funding as
stated in sub-clause 3.1 above and as required
for the Project.
(d) to purchase, maintain and service all the
necessary equipment and expenses as per
Schedule B of this Agreement and
consumables for ABC’s Chief Technical Officer
(hereinafter referred to as “ABC CTO”) to carry
out the Project, whereby all the above
equipment and instrument shall be placed at
location to be mutually agreed by both Parties.
(e) to release and disburse the progressive
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payment(s) to USM’s Chief Technical Officer
(hereinafter referred to as “USM CTO”) and/or
USM in accordance to sub clause 5.1 herein.
For the avoidance of doubt, the Schedule of
Payment shall not include the equipment cost to
be purchased and delivered by ABC pursuant
to sub clause 4.1(d) herein.
(f) The first progressive payment on the above
Schedule of Payment shall be released and
disbursed to USM CTO within ….. working days
from the date of execution of this Agreement
and the subsequent progressive payment(s)
shall be made to USM CTO according to
Schedule A project milestone
4.2 USM’s responsibilities shall be as follows:-
Development Phase: (a) to assist ABC in carrying out activities of
Milestone 2 – 9 within USM scope as per
Functional Design Specification document in
delivering the objectives of the Project as
described below;
(i) to assist ABC to develop ……. process
simulator system;
(ii) to assist ABC to develop model for ……
system.
(iii) to assist ABC for communication protocol
for ……..
(b) to assist ABC in the overall running of the
Project through the appointment of a USM
CTO; and
(c) to provide advice, personnel and the resources
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for the successful completion of the Project.
4.3 Joint Responsibilities
Both Parties agree that they shall be jointly responsible for the following:
(a) to ensure that the personnel as identified and nominated by ABC CTO
and USM CTO (hereinafter referred to as “Consultants”) and both
USM’s and ABC’s Principal Consultants (as hereinafter defined) are
given full access to all information and to all areas within both Parties’
sites and Project which are relevant for the Parties to carry out work on
the Project as defined in this Agreement.
(b) Furnish such necessary facilities and equipment available at their
respective sites as necessary for the Project to be carried out.
CLAUSE 5 – COMMERCIAL
5.1 In consideration of USM carrying out its activities under the Development Phase,
ABC shall pay USM a sum of RM ……. (Ringgit Malaysia: … Only) to be disbursed
according to milestone achievement to USM CTO for consultancy fees and related
expenses as per Clause 4.2 above and subject to Clause 2.1 and 4.1(e) and (f)
above, effective from the commencement until completion of the Development
Phase.
5.2 In consideration of USM carrying out its activities under the Development Phase,
ABC shall ……
CLAUSE 6 – PERSONNEL
6.1 For the purposes of carrying out their responsibilities under this Agreement, USM
and ABC shall designate and nominate the Party’s own personnel as Consultants for
the Project. For avoidance of doubt, USM’s Principal Consultant will be ……. of the
…….., USM, (herein referred to as “USM’s Principal Consultant” and/or “USM
CTO” interchangeably), and ABC’s Principal Consultant will be …….. (herein referred
to as “ABC’s Principal Consultant” and/or “ABC CTO” interchangeably). The
Parties shall be entitled to nominate alternate personnel to act as the Parties’
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respective Principal Consultant and/or Consultants in the event the named Principal
Consultant or Consultants become unavailable to carry out such duties on the
Project.
6.2 The Parties agree that USM’s Principal Consultant shall also act as the Principal
Researcher for the Project.
CLAUSE 7 – INTELLECTUAL PROPERTY
7.1 7.2 7.3
Any Project Intellectual Property created, developed, commercialized or reduced to
practice jointly by USM and ABC shall be jointly owned by the Parties at ratio of
..............
Any Project Intellectual Property created, developed, commercialized or reduced to
practice solely by one Party’s Consultant but through the significant use of the other
Party’s resources such as facilities, equipment or funds will be jointly owned by the
parties as set out in Sub Clause 7.1 hereof.
Notwithstanding the above, both Parties may negotiate on the ratio and percentage
of the ownership of the further improvements of the Project Intellectual Property
jointly created or developed by the Parties subject to the condition that USM’s shall
hold a percentage not less that what USM owns at the commencement of the
Project.
7.4 7.5 7.6
Each Party shall be responsible for the cost related to any application for the
registration of patents or any other intellectual property rights in relation to their
respective Project Intellectual Property.
Where the Project Intellectual Property is jointly owned by the Parties pursuant to the
operation of this Agreement, the Parties shall equally share the costs related to any
application for the registration of patents or any other intellectual property rights
related thereto.
All rights, titles and interests over the background Intellectual Property of either Party
and used to produce any product which forms the Project’s Intellectual Property,
shall continue to belong to that Party; and the other Party shall not have any claim on
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them.
CLAUSE 8– PROGRESS REPORTS
8.1 Both Parties through their Consultants shall furnish the other Party with written
reports as to the progress of works carried out for the Project on a quarterly basis.
8.2 Each Party shall respond promptly to any queries from the other Party from time to
time in respect of the progress of the works in relation to the Project and any other
matters in relation thereto by such means as are agreed from time to time by the
Parties hereto.
8.3 Notwithstanding the above, both Parties shall collaborate to produce and deliver all
reports in relation to the Projects as may be required by the Parties from time to time.
CLAUSE 9 – CONFIDENTIALITY
9.1 The Parties including its officers, agents and authorised representatives shall not
disclose, use or communicate to persons any information which is confidential to the
other party and not otherwise publicly available nor known by the recipient at the time
of disclosure.
9.2
9.3
Each Party undertakes that it shall at all times keep confidential (and procure that its
Consultants, employees and agents shall keep confidential) any Confidential
Information which it or they may acquire in relation to the Project and the business
and affairs of the other Party to this Agreement and shall not use or disclose such
Confidential Information except as permitted under this Agreement or with the
express written consent of the other Party or in accordance with the order of a court
of competent jurisdiction or in compliance with any applicable law or regulation.
Each Party hereto further undertakes:
a) to use its best endeavours to protect such confidential information;
b) to limit its disclosure of the Confidential Information it receives from the
disclosing Party to its employees and agents on a a-need-to-know basis and
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9.4
only to the extent necessary for them to carry out the Project;
c) to immediately notify the disclosing Party upon learning of any unauthorised
use or disclosure of any confidential information;
d) not to make copies, publish, reproduce or otherwise reduce into writing or into
any other tangible or intangible form all or any part thereof of the Confidential
Information save for the purposes contemplated in this Agreement and each
Party agrees that the ownership to any copies, publications or reproductions
of the Confidential Information so made remains with the disclosing Party;
e) to be accountable for the compliance and performance of the undertakings
enumerated herein on the part of each Party’s employees, officers, agents or
any permitted person to whom the Confidential Information is disclosed;
f) to exercise a degree of care and diligence no less than that which the
receiving Party applies to its own Confidential Information of a similar
character.
The obligations of confidentiality herein shall not apply to any information which the
receiving Party can show by written records:
i. was already in the public domain when it was imparted to the receiving Party
by the disclosing Party;
ii. is in or subsequently comes into the public domain through no fault on the
receiving Party;
iii. is received by the receiving Party without restriction on disclosure or use from
a third party lawfully entitled to disclose to the receiving Party without such
restriction;
iv. is developed by any of the receiving Party’s employees who have not had any
direct or indirect access to, or use or knowledge of, the information imparted
by the disclosing Party; or
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9.5 9.6 9.7
v. the communication of which is required by law, a valid order issued by a court
or such other governmental body, or was otherwise necessary to establish the
rights of either Party under this Agreement.
The obligations of each of the Parties contained in this sub clause shall become
effective as of the date the Confidential Information is first made available by one
Party to the other Party and shall survive the termination of this Agreement and shall
continue in force until such time as the Confidential Information becomes public
knowledge other than by breach of this Agreement or as otherwise agreed to
between the Parties.
Without prejudicing the foregoing provisions, any information sent or received orally,
via electronic means or information disclosed without confidentiality notices shall be
deemed to be Confidential Information and the obligation of confidentiality applies
accordingly.
Both Parties specifically warrant and undertake that where the Confidential
Information of both Parties continue to be utilised for research, teaching or
educational purposes as may expressly be permitted under this Agreement, the
Parties shall ensure that the obligation of confidentiality binds all such third parties
that the Confidential Information are made available to.
CLAUSE 10 – RIGHT TO PUBLISH
10.1 The data and information accruing from the Project, which are of academic
importance for the enrichment of knowledge, may be published by USM’s Principal
Consultant/USM’s Consultants in accordance with USM’s policy. ABC shall be
provided with a copy of any such proposed publication and ABC may have no more
than twenty-one (21) days or such mutual extended period to be agreed upon by
both Parties from the date of ABC being provided with the copy of such proposed
publication, for review of data and information deemed confidential as defined in
Clause 9 above relating to confidentiality or patentable items (hereinafter referred to
as the “Review Period”). The purpose of this clause is to protect the rights of USM
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and ABC with respect to any contemplated publication concerning details of an
invention or ABC’s Confidential Information, etc.
10.2 If deemed necessary by USM and/or ABC with the view to protect their interests, any
contemplated publication containing details of an invention, etc. shall be withheld
until a patent application is filed or other appropriate steps to protect commercial
value have been completed. All publications shall not include any Party’s Confidential
Information.
CLAUSE 11– RELATIONSHIP OF THE PARTIES
Nothing in this Agreement shall be construed as establishing or creating a
partnership or a relationship of a partnership between the Parties, master and
servant between any of the Parties hereto or as constituting any party as an agent or
representative of the other Party for any purpose or in any manner whatsoever or an
authority to a Party to represent or bind or pledge the credit of the other Party in
anyway.
CLAUSE 12– TERMINATION
12.1 If USM or ABC (as the case may be) commits any of the conditions stated below,
then, the aggrieved Party shall be entitled to terminate this Agreement by serving a
notice to that effect:
12.1.1 Either Party becomes insolvent or is unable to pay its debts when due or
admits in writing its inability to pay its debts; or
12.1.2 Either Party enters any arrangement or composition with its creditors
generally, or a receiver or manager is appointed; or
12.1.3 Either Party goes into liquidation or passed a resolution to go into
liquidation, otherwise than for the purpose of reconstruction; or
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12.1.4 Either Party ceases to carry on an eligible activity under the grant; or
12.1.5 Either Party fails to comply with any of the obligations, terms and
conditions under this Agreement.
12.2 The notice to terminate in the case of subclauses 12.1.1 to 12.1.4 shall not be less
than thirty (30) days’ written notice. In the case of sub-clause 12.1.5, the non-
defaulting Party shall first give a fourteen (14) days’ notice in writing to the defaulting
Party to remedy such default, and where such default is not remedied within that
period, the non-defaulting Party shall then give a fifteen (15) days’ written notice to
the defaulting Party to terminate the Agreement;
12.3 Upon termination of this Agreement, both Parties shall have no obligation to each
other save and except for payments still outstanding and payable by ABC to USM,
for activities already undertaken prior to the date of such termination.
CLAUSE 13 - FORCE MAJEURE
Both Parties shall not be held liable for delays or failures to perform that result from
events or circumstances beyond the reasonable control of either Party and in
particular, any failure by either Party to carry out its obligations as set out in Clause 4
above.
CLAUSE 14 – PUBLIC STATEMENT
Both Parties shall, in making any public statement on the Project, or in relation to any
products, processes or inventions developed as a result of the Project, include in
such public statement, an acknowledgement of the financial assistance received
from the grant pursuant to this Agreement. All such public statements shall be
approved by both Parties prior to its release of the same to the public.
CLAUSE 15- ASSIGNMENT
This Agreement shall not be assigned in whole or in part by either Party without the
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prior written consent of the other Party.
CLAUSE 16 – WAIVER
16.1 The waiver by a Party in respect of any breach of a term of this Agreement by the
other party shall not be deemed to be a waiver in respect of any other term or of any
subsequent breach of that term.
16.2 The failure of a Party to enforce at any time any term of this Agreement shall in no
way be interpreted as a waiver of such term.
CLAUSE 17 – APPLICABLE LAW
This Agreement shall be governed by and construed in accordance with the laws of
Malaysia.
CLAUSE 18 – NOTICES
18.1 Any notice required to be given pursuant to this Agreement shall be in writing and
may be delivered or posted by ordinary mail, postage prepaid, to the Party to which
such notice is required to be given under this Agreement at the address set out in
Schedule C hereto.
18.2 Any change of address of either Party shall be notified in writing to the other Party.
18.3 Any notice given under this clause by post shall be deemed to have been duly
served at the expiration of three (3) clear days (i.e. excluding weekends or public
holidays) after the time of such posting and production of any official post office
receipt showing the time and date of posting shall be conclusive evidence of the time
and date of posting.
CLAUSE 19 – ENTIRE AGREEMENT
The terms of the Agreement between the Parties are those set out in this Agreement
and the Schedules and no written or oral agreement or understanding made or
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entered into prior to the date of this Agreement shall in any way be read or
incorporated into this Agreement.
CLAUSE 20 – SUCCESSORS-IN-TITLE
This Agreement shall be binding on the respective heirs, personal representatives,
receivers, successors-in-title and assigns of the Parties hereto.
CLAUSE 21 – AMENDMENT/MODIFICATION
Any provision of this Agreement may be amended or modified by mutual consent
between the Parties and such amendment/modification shall be in writing and signed
by the duly authorised representative of the Parties.
CLAUSE 22 – NAME, OFFICIAL EMBLEM AND LOGO
22.1 Neither Party shall use, nor permit any person or entity to use the name, acronym,
official emblem, logo, trade mark (or any variation thereof) or other Intellectual
Property (hereinafter referred to as “Brand Materials”) that is/are identified with or
belongs to the other Party on any publication, document, paper, audio or visual
presentation, or for publicity purposes.
22.2
Any use of the Brand Materials for the purposes stated in clause 22.1 above shall
first obtain the written consent of the other Party and shall comply with all reasonable
instructions as to the use of the other Party’s Brand Materials.
CLAUSE 23 – E-COMMUNICATION AND SIGNATURE
The Parties hereby consent to electronic communication and electronic signatures
being equal to signatures inked on paper. The Parties acknowledge and agree that
electronic communication is an acceptable method of communicating information
from a Party to the other party without having to communicate the same on paper.
Any communication and subsequent electronic signature that has been sent or
signed in the past, present, or future between the Parties will hold the same force
and effect as a document signed and inked on paper.
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(the remainder of this page is intentionally left blank)
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IN WITNESS WHEREOF the Parties hereto have caused this Agreement on the day and
year first above written.
SIGNED BY For and on behalf of UNIVERSITI SAINS MALAYSIA ………………………………………............. PROFESSOR DATO’ DR. OMAR OSMAN Vice-Chancellor
SIGNED BY For and on behalf of ABC SDN BHD …….…………………………..……… [ name & designation ]
WITNESSED BY: …………..……………………… [ name & designation ]
WITNESSED BY: ………………..…………………..… [ name & designation ]
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Schedule A
PART A: PROJECT DETAILS
No Item Description
a. Project Description
b. Project Objectives
PART B: PROJECT MILESTONE AND OUTPUT
NO. MILESTONES ACTIVITIES DELIVERABLES DISBURSEMENT TARGET DATE
1.
2.
3.
4.
5.
6.
7.
8.
9.
10.
NOTE : Target date is subject to mutual agreement between ABC and USM.
Project Duration Months
SCHEDULE B
NO EXPENSES ITEMS
1. Equipment
2. Market Testing of Commercial Ready Prototype
3. Contract Expenditure
4. Expenditure of Services
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SCHEDULE C
NOTICE
For USM: [ address of School ] Universiti Sains Malaysia 11800 USM Pulau Pinang. Tel: Fax: Contact person: Email:
For ABC: [ address ] Tel: Fax: Contact person: Email: