Before collaborating, consider that absent a well-drafted, comprehensive, Collaboration Agreement, your investment will be at substantial risk. Here are some important issues that should be addressed in a comprehensive Collaboration Agreement.
- Define important terms used throughout the Agreement.
- Objective of the Agreement.
- Duties, Responsibilities and Expectations of each party.
- Property to be licensed by each party to the other party(ies) for purposes of the Project.
- Limitations to licensed property.
- Grant right to licensee to sublicense rights or prohibit sublicensing rights.
- Ownership of new developments arising out the Project.
- Allocation of responsibility and process for prosecution of patents for new developments.
- Allocation of responsibility and process in event of infringement of patents by third parties.
- Allocation of responsibility and process in event of infringement of third party patents.
- Patent marking requirements for new developments and licensed property.
- Mutual indemnity and limitations.
- Confidentiality Agreement.
- Address required treatment of Trade Secrets, to comply with laws pertaining to trade secret protection.
- Termination provisions; post-termination obligations.
- Governing Law and Jurisdiction.
You may also find the Joint Venture Agreement Checklist helpful. Click here for a Joint Venture Agreement Checklist.
This is not an exclusive checklist. Do not rely solely on this checklist.
Consult with an experienced business attorney with regard to your specific circumstances.