THIS AGREEMENT is made on the                 day of                                                 two thousand and [year]

[1] Insert the name and address of ABC of the Material.

[2] Insert the name and address of XYZ to which the Material will be provided.

Background:

1. ABC made or lawfully acquired the Material (defined below) in _______ [country].
2. The use and disposition of the Material may be subject to international treaties or conventions and national laws regarding transfer of such Material.
3. XYZ has asked ABC to provide a sample of the Material to XYZ, as well as the Confidential Information (defined below)[3].
4. If transfer of Material to XYZ is approved by applicable authorities, ABC will transfer the Material in accordance with this Agreement.
5. The Material and the Confidential Information have a unique value to ABC and unauthorised use, transfer or disclosure of the Material or the Confidential Information may cause ABC financial or reputational damage.

This agreement provides:

1. Meanings

In this Agreement:

Affiliate means any corporation or non-corporate business entity which controls, is controlled by, or is under common control with a party, and for that purpose control means ownership or direct or indirect control of at least 50% of the voting shares of another corporation, or having directly or indirectly the power to direct or cause the direction of the management and policies of another corporation or non-corporate business entity

 Confidential Information means the Material and all information relating to the Material, including, without limitation, inventions; discoveries; facts; data; ideas; manner, method or process of manufacture; method or principle of construction; chemical composition or formulation; DNA sequences; techniques; products; prototypes; processes; names; know how; routines; specifications; drawings; trade secrets; technology methods; computer programs; works in respect to which copyright subsists; circuit board layouts; and other knowledge. An outline of Confidential Information to be disclosed to XYZ is provided in Appendix 1, but the outline will in no way limit the scope or content of the Confidential Information actually disclosed to XYZ. ^[4]

Material means and includes all biological materials transferred to XYZ by ABC pursuant to this Agreement, including but not limited to the materials described in Appendix 2 to this Agreement, all replicate forms of any such materials, all derivatives made from such materials, and all replicate forms of such derivatives.  Material may be in any form including cells, tissues, seeds, plants and any parts thereof containing any part of the foregoing.

 New Development means any substance and any information or knowhow conceived or generated by or for XYZ after receipt by XYZ of Material and Confidential Information from ABC, including, without limitation, any invention; discovery; fact; data; idea; manner, method or process of manufacture; method or principle of construction; chemical composition or formulation; DNA sequence; technique; product; prototype; process; routine; specification; drawing; trade secret; technology; method; and other knowledge.  New Developments does not include anything that falls within the definition of Material.

 Purpose means use of the Material and Confidential Information:

Choose Alternative

• To determine the potential commercial value to XYZ of the Material in the market for ______________.[5]

Or

• To evaluate whether use or distribution of Material or products containing Material would infringe intellectual property of others.

Or

• To use only for research performed by or under the control of XYZ.

2. Provision of material

3.1       ABC will provide the Material to XYZ within 30 days after the date of this Agreement.  The form and quantity of Material will be as specified in Appendix 2. 

3.2       If ABC requires reimbursement of its expenses of transporting the Material to XYZ, ABC will provide an invoice for those expenses, and XYZ will pay that invoice within 30 days.

3. Possession and use of material 

3.1       In accepting the Material, XYZ agrees to use it only for the Purpose and agrees not to use it for any other purpose.

3.2       XYZ agrees that use of Material will be under the exclusive control of XYZ, and XYZ will be responsible for all consequences thereof.

3.3       XYZ agrees that its use of the Material will be at its own risk.

3.4       XYZ warrants that it has any regulatory approval, license or consent necessary or required by any law, or any government agency or other body, necessary to the possession of the Material and its use for the Purpose.

3.5       XYZ agrees that any import, transport, use, maintenance, or other disposition of any Material will comply with all applicable local, national and international guidelines, regulations and codes of conduct.

3.6       Where any ethics approval of any person or body is required to use the Material, XYZ agrees to obtain that ethical approval and to comply with all conditions of that ethical approval.

3.7       XYZ agrees that all persons having access to Material will be employees of XYZ who are qualified to possess and use Material and who are under contractual obligations of confidentiality to XYZ.

3.8       XYZ agrees not to transfer the Material, or any part of the Material, to another person without ABC’s prior written consent.

3.9       Upon ABC’s written request, XYZ agrees promptly to return all quantities of the Material to ABC.

4. Safety

4.1       XYZ acknowledges that the Material may be toxic, may contain infectious agents, or other substances that are hazardous or dangerous, or harmful or persons or property.

4.2       XYZ is responsible for safe handling and storage of the Material, using generally accepted methods that ensure the Material will not cause harm to any person or to property.

4.3       XYZ warrants to ABC that given the nature and characteristics of the Material, XYZ:

(a)        is aware of all matters that concern the safe handling and storage of the Material, and

(b)        has all facilities that are required for the safe handling and storage of the Material.

Three alternative versions of New Development provision

5. New development - version 1

5.1       Any New Development made or acquired by XYZ, upon its creation, will be owned by ABC, and XYZ agrees to sign all documents required by ABC to record ABC’s ownership of the New Development.

5.2       XYZ agrees promptly to disclose to ABC any New Development made or acquired by XYZ.

5.3       XYZ agrees not to transfer a New Development or any part thereof to anyone without ABC’s prior written consent.

5.4       XYZ agrees that any New Development made or acquired by XYZ will be ABC’s Confidential Information subject to [option] Article 8 of this Agreement [or] the Confidential Disclosure Agreement attached as Appendix 3.

5.5       ABC may determine, at its discretion, whether intellectual property protection (patents, plant breeders rights, trade secret) should be applied to any New Development. ABC may apply for any intellectual property rights in its own name and at its own cost. Upon ABC´s request, XYZ, at ABC’s expense, will provide all information and assistance reasonably necessary for ABC to apply for and pursue such intellectual property protection. ABC does not have any obligation to offer XYZ any rights to any New Development, whether or not ABC elects to pursue intellectual property rights therefor.

5. New development- version 2

5.1       Any New Development made or acquired by XYZ will be owned by XYZ.

5.2       XYZ agrees promptly to disclose to ABC any New Development made or acquired by XYZ.

5.3       ABC will treat any New Development disclosed to it as Confidential Information owned by XYZ and will comply with [option] Article 8 of this Agreement [or] the Confidential Disclosure Agreement attached as Appendix 3.

5.4       XYZ’s ownership of any New Development does not give XYZ any right to exploit the New Development in violation of any obligation of XYZ under this Agreement or of any industrial or intellectual property right of ABC.

5.5       XYZ will determine, at its discretion, whether intellectual property protection (patents, plant breeders rights, trade secret) should be applied to any New Development. XYZ may apply for any intellectual property rights in its own name and at its own cost.

5.6       In consideration for the transfer of the Material under this Agreement, XYZ hereby grants to ABC an irrevocable, fully paid-up, worldwide, non-exclusive license, with the right to grant sublicenses, to use any New Development in research. XYZ further grants to XYZ an option for a license to commercially exploit any New Development directly or through sublicensees, the terms and conditions of such license to be determined by negotiation between the parties.  For each New Development, the option will expire 6 months after the date it is disclosed to ABC under Section 5.2.

5. New development- version 3

5.1       Any New Development made or acquired by XYZ will be jointly owned by ABC and XYZ in equal shares, and the parties must sign all documents required to record their joint ownership of any New Development.

5.2       XYZ agrees promptly to disclose to ABC any the New Development made or acquired by XYZ.

5.3       Both ABC and XYZ will treat any New Development as Confidential Information and will comply with [option] Article 8 of this Agreement [or] the Confidential Disclosure Agreement attached as Appendix 3.

5.4       ABC and XYZ may use any New Development in any manner that does not deprive the other party of its interest or value in the New Development, but neither ABC not XYZ disclose, distribute or commercially exploit the New Development without the prior written consent of the other.

5.5       Neither ABC nor XYZ may assign or license its interest in the New Development, without the prior written consent of the other.

5.6       The parties will jointly determine whether intellectual property protection (patents, plant breeders rights, trade secret) should be applied to any New Development. Any such intellectual property will be jointly owned. Before seeking any such protection, the parties will agree as to sharing of control and costs thereof.  If the parties cannot agree to pursue intellectual property rights, neither party will act to deprive the other party of the value of the New Development.

5.7       XYZ grants to ABC a right of first refusal, exercisable within three months of the notification in Section 5.2, to negotiate an exclusive, worldwide, royalty-bearing license to commercialise XYZ’s interest in the New Development upon terms that the parties will negotiate in good faith.[6]

6. Publications

             XYZ must not publish, distribute, display, summarize or electronically transfer any paper which in any way refers to the Material or Confidential Information without the prior written consent of ABC, which will not be unreasonably withheld.

7. Confidential Information[7]

7.1       In addition to providing the Material, ABC will disclose ABC’s Confidential Information to XYZ within 30 days after the date of this Agreement.  ABC will mark as confidential to the extent practical all Material or its containers and all information tangibly disclosed.    

7.2       If Confidential Information is disclosed orally or by observation, it must be confirmed in writing by ABC within 30 days after the date of the oral disclosure, and this Agreement will apply in relation to any such disclosure only to the extent to which it is confirmed in writing within that period.[8]

7.3       Information obtained by XYZ from use or observation of Material will be Confidential Information subject to this Agreement to the extent knowledge of such information would disclose any part of the Material.

8. Confidentiality of obligations[9]

Alternative Provisions

8.1       The Confidential Information disclosed to XYZ is subject to the Confidential Disclosure Agreement between the parties dated ______ which is incorporated in this Agreement by reference and attached as Appendix 3 to this Agreement.

Or

8.1       XYZ agrees to keep ABC’s Confidential Information secret and confidential.

• XYZ agrees not to disclose to any person or make known in any manner any part of ABC’s Confidential Information.
• XYZ agrees to keep the Confidential Information in a secure place to ensure that unauthorised persons do not have access to the Confidential Information.
• XYZ acknowledges that damages may be an inadequate remedy to ABC in the event of any breach of this Agreement occurring, and that only an injunction might be adequate to properly protect the interests of ABC.

8.2       XYZ agrees to use ABC’s Confidential Information only for the Purpose and agrees not use that Confidential Information for any other purpose.

8.3       ABC may consent to XYZ making a disclosure or relieve XYZ from complying with the whole or any part of this Article 8. Such a consent can only be in writing.  Any such consent may be subject to conditions, including a condition that the person to whom XYZ proposes to disclose executes in favor of ABC a written confidentiality agreement upon the same terms as this Agreement.

8.4       XYZ may only disclose ABC’s Confidential Information to a director, officer or employee of XYZ who is bound by obligations of confidentiality to XYZ of the same scope as imposed upon XYZ by this Agreement.

8.5       XYZ may not disclose ABC’s Confidential Information to any of XYZ’s Affiliates, consultants or advisers without ABC’s prior written consent.  Any such consent may be subject to conditions including a requirement that XYZ provide to ABC a written agreement signed by such Affiliate, consultant or adviser to be bound by the same confidentiality provisions as in this Agreement.

8.6       If XYZ is required by law to make a disclosure of any part of ABC’s Confidential Information, XYZ must immediately notify ABC of that requirement and provide full particulars relating to the requirement to disclose.  If ABC is unable to secure some relief to XYZ from the legal obligation to disclose ABC’s Confidential Information, XYZ is relieved from its obligations in this Agreement, but only to the extent of the legal obligation to disclose.

Alternative Provisions^[10]

8.7       The obligations of confidentiality upon XYZ in this Agreement will continue for ____ years after the date of this Agreement regardless of expiration or termination of this Agreement.

Or

8.7       The obligations of confidentiality upon XYZ in this Agreement will continue indefinitely and cease only to the extent that any part of ABC’s Confidential Information becomes subject to Section 8.8.

8.8       XYZ will be relieved from XYZ's obligations of confidentiality in this Agreement in respect to any part of ABC’s Confidential Information that XYZ can show:

(a)        was in the possession of XYZ as at the date of the disclosure to it by ABC; or

(b)        is or becomes part of the public domain otherwise than by a breach of this Agreement; or

(c)        was received in good faith from a person entitled to provide it to XYZ without an obligation of confidentiality; or

(d)        was independently developed by XYZ, by employees who did not have access to the Confidential Information.

9. Term and termination

9.1       This Agreement will be effective from the date written on the first page or, if left blank, from the date of signature of the last party to sign it.

9.2       This Agreement will expire on the second anniversary of the effective date unless the parties agree in writing to extend it.

9.3       Either party may terminate this Agreement at any time on 30 days advance written notice to the other party.

9.4       Upon expiration or termination of this Agreement, XYZ will discontinue use of the Material and Confidential Information.

• Within 7 days after the date of expiration or termination, XYZ agrees to deliver to ABC all Material and Confidential Information in its possession together with all copies, replicates and derivatives.
• Any part of the Material or Confidential Information which cannot conveniently be returned by XYZ to ABC will be completely destroyed by XYZ in such manner and at such time as directed by ABC, including by deletion from all storage facilities, computer records and electronic or magnetic storage devices.
• XYZ may retain one copy of Confidential Information and one sample solely for XYZ’s archival record keeping and evidentiary purposes.

10. Governing Law

             This Agreement will be governed by and construed in accordance with the substantive laws (excluding conflicts of laws) of  [state and/or country][11]. The parties agree to submit themselves to the non-exclusive jurisdiction of the courts in that place.

11. Assignment

11.1        XYZ may assign this Agreement to any Affiliate provided the Affiliate agrees in writing to be bound by the terms hereof.  Assignment to any other person will require prior written approval of ABC.

SIGNATURES OF PARTIES

[1] Insert the name and address of ABC of the Material.

[2] Insert the name and address of XYZ to which the Material will be provided.

[3] Delete all references to Confidential Information if only Material is being transferred.

[4] The more accurately Confidential Information is identified, the greater the protection afforded to the Confidential Information. If you do not intend to specify particular Confidential Information, delete this paragraph.

[5] Delete “in the market for ____” if there is no limit to scope of XYZ’s potential commercial use of Material.

[6] Delete this Section if it is not intended to grant an option to negotiate a license.

[7] For a detailed discussion of issues involved in disclosing confidential information, see the Guidelines for Confidentiality Agreement.

[8] ABC risks loss of confidential information disclosed orally because it is rarely confirmed in writing.  The second part of this provision expressly confirms that oral information not confirmed in writing is not confidential.  But, as between the parties, ABC has greater control over disclosure and later confirmation and should bear the risk.

[9] The obligations regarding confidential information may be imposed by a separate confidential disclosure agreement which is incorporated by reference as in the first Section 8.1 or included directly as in Sections 8.1 through 8.9.

[10] The duration of the confidentiality obligations in the Agreement may be a fixed term of time or an indefinite term. A fixed term must be reasonable.  An indefinite term would only apply as long as the information remains confidential.  If a term is not stated, the obligations would expire when the agreement expires, or the information becomes publicly available.

[11] Insert the jurisdiction that you want to govern this Agreement.