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.
1. Define important terms used throughout the Agreement.
2. Objective of the Agreement.
3. Duties, Responsibilities and Expectations of each party.
4. Property to be licensed by each party to the other party(ies) for purposes of the Project.
5. Limitations to licensed property.
6. Grant right to licensee to sublicense rights or prohibit sublicensing rights.
7. Ownership of new developments arising out the Project.
8. Allocation of responsibility and process for prosecution of patents for new developments.
9. Allocation of responsibility and process in event of infringement of patents by third parties.
10. Allocation of responsibility and process in event of infringement of third party patents.
11. Patent marking requirements for new developments and licensed property.
12. Mutual indemnity and limitations.
13. Confidentiality Agreement.
14. Address required treatment of Trade Secrets, to comply with laws pertaining to trade secret protection.
15. Termination provisions; post-termination obligations.
16. Governing Law and Jurisdiction.
You may also find the Joint Venture Agreement Checklist helpful. Click here for a Joint Venture Agreement Checklist.
Note, this is not an exclusive checklist. Do not rely solely on this checklist.
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