Agreement for the Testing of Plant Extracts between the Company and the University (Sri Lanka), dated January 1st, 2000

 

THE PARTIES AGREE AS FOLLOWS:

The University agrees to carry out a research project dealing with the selection of plant extracts in view of their possible utilisation in agribusiness (crop protection and animal health), hereinafter referred to as "the Project".

The University shall provide exclusively to the Company 120 plant extracts (2 g per extract) per year for testing in the field of agribusiness (crop protection and animal health). The University is responsible for acquiring all proper licenses and paperwork to allow the legal transfer of the material to the Company.

The Company agrees to grant the University in connection with the Project a fellowship for the period of 3 (three) years from January 1, 2000, until December 31, 2002. The amount of such fellowship covering salary and consumables shall be US Dollars 15'000 (fifteen thousand) for each calendar year to be paid by in advance in January of each year.

The extracts (obtained according to clause 1 and 2) shall be sent to the Company by air mail. The delivery of a lot shall be announced by the University two weeks in advance and the arrival shall be confirmed by the Company.

At the latest of 12 (twelve) months after receipt of the extracts, the Company shall inform the University about the preliminary biological results of the testing and its decision to continue or discontinue the biological programs.

If the results are considered as promising by the Company, the University will at the request of the Company collect 3 kg of plant material and send 20 g of plant extracts of the "Selected Plant" against a compensation of US Dollars 400 (four hundred) for one plant. The Company will carry out further investigations on Selected Plants. Further investigations means isolation, structure elucidation and biologically testing of the biologically active compounds. Extracts/Plants that are either inactive or uninteresting for the Company, shall, upon the Company's declaration thereof, be at the department's free disposal and shall then no longer be covered by this Agreement.

Where the Company and the University agree, the University may also carry out the investigation on some active plants and provide the results exclusively to the Company. The costs for these investigations shall be covered by the fellowship as pointed out in clause 3.

Should a patentable invention result from the Company's or the University's testing and analytical activity, the Company is free to apply for patents with regard to such invention in its name and at its expense as it wishes. Any such patents will be filed by the Company indicating the name(s) of the University, its collaborator(s) and the representative(s) of the company, as the case may be, as inventor(s). To this end, the University agrees to execute such documents and signatures as may legally be required.

If and as soon as the Company expresses interest in commercialising chemical products on the basis of the natural constituent(s), the University shall grant to the Company, an exclusive and world-wide right to manufacture, formulate, use and sell products on the basis of the natural constituent(s), isolated from "Selected Plants".

In consideration for the right to commercialise the Company shall pay the University the following compensation: A running royalty which shall be no more than 1% of the net sales value of chemical products manufactured by the Company on the basis of natural constituent(s) selected within the Project. The royalty rate will be agreed between the parties in consideration of the situation of the market and development costs of said chemical products provided, however, that the total amount of royalties to be paid by the Company will in no case exceed US Dollars 100'000 per year for each single compound during 10 (ten) years after commercialisation and that royalty payments will be limited to such period of time.

If the Company or any of its licensees do not take up the manufacture of chemical products on the basis of the natural constituent(s) selected within the Project within 10 (ten) years after execution of the grant, the exclusive right of commercialisation as defined in clause 7 shall lapse and the respective industrial property rights applied for in the name of the Company will be offered for assignment to the University free of charge.

With the payments according to clause 3 (fellowship) and clause 7 (royalties) all obligations with regard to the Convention on Biological Diversity of June 5, 1992, which was signed by Sri Lanka and the home country of the Company, are met.

Both parties undertake to treat all technical and commercial information which they receive from each other as strictly secret except for the purposes of this Agreement, The obligation of secrecy shall survive the expiration and/or termination of this Agreement or part of it, for a period of seven (7) years.

This Agreement shall enter into effect on January 1st 2000 and shall remain in force until December 31st 2002. Notwithstanding such termination, the terms of this Agreement shall continue to be applied with respect to any plant and/or extracts which have been handed over to the Company prior to December 31st 2002 and which has not returned to the University by declaration according to clause 5 herein above.

This Agreement shall be governed by the substantive laws of the home country of the Company. All disputes arising in connection with the present Agreement shall be finally settled under the Rules of Conciliation and Arbitration of the home city of the Company.

 

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REPLY TO QUESTIONNAIRE WIPO/GRTKF/IC/Q.2

PRACTICAL GUIDANCE AND LESSONS LEARNED

Question 21: Please share any practical advice that you may have arising out of the drafting, negotiation and conclusion of the contract in question, in particular, any advice relating to the intellectual property aspects of the contract.

Response:

Prior Informed Consent: No government body has played a role. However guidelines being followed to obtain PIC.

Benefit-Sharing: Contract specifies only the University would benefit.

Local or Indigenous Communities: i. No consultative arrangements exist; ii. No intermediaries are used; iii. No register exists, none immediately planned.

Legal Advice: None was obtained by the University.

Model Contracts/Clauses: Original contract offered by the company was modified on representations being made by the University to include a greater involvement of University scientists in research activities.

Lessons Learned: Negotiations between developing country institutions and multinational corporations are not negotiations between equals. Therefore a fair contract cannot be accepted. The multinational corporation has teams of lawyers well experienced in similar contracts and negotiations. The developing country institution can rarely afford to pay for good legal advice and even if consulted developing country lawyers do not much experience in such contracts. Thus it was impossible to change aspects of the contract which were unfavourable to the university: the quantum of royalties offered is low, a limit is placed on the total royalties and the period of payment of royalties. Also disputes will be settled in the home country of the multinational corporation making it almost impossible for a developing country University to be able to afford to pay for the legal costs of a dispute.