Joint Venture Agreement
[as of June 2004]
This Joint Venture
Agreement (JVA) is entered into by and between the Parties identified
in the attached Exhibit A.
Whereas, the Parties have been selected for participation in the Advanced
Technology Program (ATP) administered by the National Institute of
Standards and Technology (NIST) as a joint venture (JV) to conduct
certain specified research;
Whereas, the Parties wish to enter into a JVA to define their respective
roles and responsibilities and thus successfully satisfy the objectives
of the ATP research project; and
Whereas, the Parties have selected _____________________________ to
serve as the JV Administrator (Administrator) for the JV and wish to
authorize that organization to perform certain functions, specifically
including executing the NIST Cooperative Agreement Award issued by
the NIST Grants Officer and thereby binding all the Parties to the
terms and conditions of that award;
Now, therefore, the Parties agree as follows:
from assistance provided by the ATP includes
both the ATP funding and the parties' cost
Technology means technical information
not generated in the course of the ATP research
Use License means a nonexclusive, nontransferable,
irrevocable, paid-up license to practice or have
practiced by or on behalf of the United States
throughout the world any Subject Invention.
Property means an invention patentable
under Title 35, United States Code, or any patent
on such an invention.
Agreement or JVA means this
Joint Venture Agreement.
Cooperative Agreement Award means the financial-assistance
funding instrument entered into between the NIST
Grants Officer and the Parties (as executed by
the JV Administrator) for the conduct of the ATP
||Party or Parties means
the parties identified in the attached Exhibit A.
all patents and applications relating thereto resulting
from Subject Inventions.
the ATP research proposal submitted by the Parties to ATP
Project means the ATP research project
set forth in the ATP Proposal entitled "______________________________________" submitted
by the JV to ATP.
Invention means any invention conceived
or first reduced to practice in the course of the
ATP research project.
all technical information generated in the course of the
ATP research project.
2: Administration and Governance.
of the Parties. The parties agree to work together
to accomplish the objectives of the ATP research project
by performing research directly, including through
the use of subcontractors, if applicable, and the Parties
agree to carry out their responsibilities as set forth
in the NIST Cooperative Agreement Award and the ATP
Proposal, including, but not limited to, the statement
of work. The Parties agree to contribute cost share
in the amounts set forth in the approved budget contained
in the NIST Cooperative Agreement.
Party is responsible for meeting its committed cost
share throughout the award in accordance with its approved
budget. No Party is responsible for the cost-share
commitment of any other Party. However, with the written
consent of all other Parties and upon written notification
thereof to the NIST Grants Officer, a Party that has
exceeded its cost-share commitment may allow its excess
cost share to be applied to the cost-share deficit
of another Party.
to any additional withdrawal requirements in the NIST
Cooperative Agreement Award, specifically in its ATP
General Terms and Conditions, any Party to this JVA
may withdraw from this JVA upon written __-day notification
to the JV Administrator. The JV Administrator shall
provide a copy of any such notification to the NIST
Grants Officer within seven (7) calendar days of Administrator's
the event that a Party is terminated as a JV member
in the NIST Cooperative Agreement Award, said Party
shall then also be terminated as a Party to this JVA
at that time.
Management. The JV Administrator shall perform
the day-to-day management and administration of the
ATP research project in accordance with all legal and
regulatory requirements, including the NIST Cooperative
Committee. The Management Committee, composed of
one representative of each Party, shall direct the
conduct of the ATP research project in all respects,
through the JV Administrator.
3: Proprietary Information.
the Parties agrees that it will not, either during the
term of this JVA or at any time after its termination,
use Technology or Background Technology of another Party
for any purpose except the ATP research project and the
commercial exploitation of the results of the development
work of the ATP research project and it will not divulge
such Background Technology to any person without the prior
written consent of the disclosing Party; provided, however,
Background Technology shall not be considered proprietary
the public domain at the time of disclosure or thereafter
enters the public domain other than through a breach of
this JVA; or
|| Is in
the possession of the receiving Party prior to its receipt
from the disclosing Party; or
|| Is lawfully
obtained from a third party under circumstances permitting
the receiving Party to use or disclose the information
without restrictions; or
developed by the receiving Party; or
to be disclosed as a result of government or judicial action.
4: Intellectual Property .
protection of intellectual property rights, including Subject
Inventions, Technology and trade secrets, under the ATP
research project will be in accordance with the NIST Cooperative
Agreement Award and the ATP Proposal. The Intellectual
Property Plan is summarized and attached to this JVA as
Exhibit B and includes provisions effecting the required
Government Use License.
JVA shall continue in full force and effect until the Parties'
obligations as set forth in this JVA and the NIST Cooperative
Agreement Award have been completed, or until the NIST
Cooperative Agreement Award has been terminated. An individual
Party may cease participation in the ATP research project
only in a manner consistent with the NIST Cooperative Agreement
6: Liability, Warranty, Insurance.
Party acknowledges that it shall be responsible for any
loss, cost, damage, claim, or other charge that arises
out of or is caused by the actions of that Party or its
employees or agents. No Party shall be liable for any loss,
cost, damage, claim, or other charge that arises out of
or is caused by the actions of any other Party or its employees
or agents. Joint and several liability will not attach
to the Parties; no Party is responsible for the actions
of any other Party, but is only responsible for those tasks
assigned to it and to which it agrees in the statement
of work contained in the ATP Proposal, or in the NIST Cooperative
Agreement Award. The Parties agree that in no event will
consequential or punitive damages be applicable or awarded
with respect to any dispute that may arise between or among
the Parties in connection with this JVA.
Majeure. No Party shall be liable, in respect to
any delay in completion of work hereunder or of the
non-performance of any term or condition of this JVA
directly or indirectly resulting from delays by Acts
of God; acts of the public enemy; strikes; lockouts;
epidemic and riots; power failure; water shortage or
adverse weather conditions; or other causes beyond
the control of the Parties. In the event of any of
the foregoing, the time for performance shall be equitably
and immediately adjusted, and in no event shall any
Party be liable for any consequential or incidental
damages from its performance or non-performance of
any term or condition of this JVA. The Parties shall
resume the completion of work under this JVA as soon
as possible subsequent to any delay due to force majeure.
Party agrees to obtain and maintain appropriate public
liability and casualty insurance, or adequate levels of
self-insurance, to insure against any liability caused
by that Party's obligations under this JVA and the NIST
Cooperative Agreement Award.
notice or request with reference to this JVA shall be made
by first class mail postage prepaid, telex, or facsimile
to the addresses shown in Exhibit C.
8: General Provisions.
No amendment or modification of this JVA shall be valid
unless made in writing and signed by all parties and approved
JVA shall not be assigned by any Party without the express
written consent of the other Parties, which consent shall
not be unreasonably withheld. This provision shall not
apply in the event a Party changes its name or as part
of the sale of the Party's business. However, all Parties
acknowledge that any assignment or other transfer requires
prior written NIST approval.
Date. This JVA shall be effective as of the date
of the last signature below.
Law. This JVA shall be governed by and interpreted
in accordance with the laws of _________________________________.
and section headings contained in this JVA are included
for convenience only and form no part of the JVA among
of Attorney. By signing this JVA, each Party grants
to the JV Administrator a Power of Attorney for the
sole purpose of binding each Party to the terms and
conditions of the NIST Cooperative Agreement Award.
there be any conflict between the terms and conditions
of this JVA and the NIST Cooperative Agreement Award, the
NIST Cooperative Agreement Award shall take precedence.
any provision of this JVA is declared invalid by any court
or government agency, all other provisions shall remain
in full force and effect.
of Names. No Party shall use in any advertising,
promotional, or sales literature the name of any other
Party without prior written consent of the other Party.
by any Party of any breach or failure to comply with any
provision of this JVA by another Party shall not be construed
as, or constitute, a continuing waiver of such provision
or a waiver of any other breach of or failure to comply
with any other provision of this JVA.
In Witness Whereof, the Parties have caused this JVA to be executed
by their duly authorized officers or representatives on the dates shown
of Authorized Company Official:
Name of Company Official:
Title of Company Official:
Name of Company:
A: Parties to the Agreement (as identified in the NIST-1263)
Exhibit B: Intellectual Property Plan
Exhibit C: List of Names and Addresses for Notices Concerning this
SAMPLE INTELLECTUAL PROPERTY PLAN FOR JOINT VENTURE AGREEMENT
[NOTE: This sample is not meant to suggest a preferred scheme for
the distribution of intellectual property rights among the JV Parties.
It is offered to assist the Parties in the preparation of their
intellectual property plan. However, please note that items 4,
5, and 6 below are required in all ATP JV Agreements.]
Exhibit B: Intellectual Property Plan
property developed solely by an employee or employees of
a Party in the performance of the ATP research project
and NIST Cooperative Agreement Award will be owned by that
property developed jointly by an employee or employees of one
Party with an employee or employees of another Party or Parties
in the performance of the ATP research project and NIST Cooperative
Agreement Award will be jointly owned by those Parties.
- The Parties
hereby offer licenses to each other for the intellectual property
described in (1) and (2) above under the following conditions:
under which the Parties will be able to use the intellectual
property of other Parties;
e.g., whether they will pay royalties, whether licenses will
be exclusive or nonexclusive, etc.]
- Title to any
intellectual property arising from assistance provided
by the ATP shall vest only in a company or companies incorporated
in the United States. Title to any such intellectual property
shall not be transferred or passed, except to a company incorporated
in the United States, until the expiration of the first patent
obtained in connection with such intellectual property. Pursuant
to the ATP Rule, at 15 C.F.R. § 295.2(b),
the term company means a for-profit organization, including
sole proprietors, partnerships, limited liability companies (LLCs),
Parties understand that the United States will reserve, and
the Parties hereby grant to the United States, a nonexclusive,
nontransferable, irrevocable paid-up license, to practice or
have practiced on behalf of the United States any intellectual
any invention patentable under Title 35 of the United States Code,
or any patent on such an invention, arising from assistance provided
by the ATP and conceived or first reduced to practice in the course
of the ATP research project, but the United States shall not, in the
exercise of such license, publicly disclose proprietary information
related to the license. The Parties hereby grant to the Government,
and others acting on its behalf, a paid-up, nonexclusive, irrevocable,
worldwide license for all data first produced in the performance of
the award to reproduce, prepare derivative works, perform publicly
and display publicly, and for data other than computer software to
distribute to the public by or on behalf of the Government.
Parties shall include in any contract or subcontract involved
in the NIST Cooperative Agreement Award for the ATP research
project a provision that any Subject Invention developed by
a Party's contractor or subcontractor in the performance of
the award will be owned by a for-profit United States company.
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Date created: November
April 11, 2005