SECTION JOINT OWNERSHIP AGREEMENT

SECTION

Annotation

JOINT OWNERSHIP AGREEMENT

This document covers most rights that

are used in an industrial context but

not supplementary protection

certificates and other rights used by

the life sciences such as rights

protecting

strains of bacteria.

However, the emphasis is on patents

and the other rights are covered as

ancillaries so as to keep the portfolio

together.

PREAMBLE

THIS AGREEMENT is made 20[ ]

BETWEEN:

(1) [ ] (“Party 1”); and

(2) [ ] (“Party 2”);

each a “Party” and together the “Parties.”

The document was drafted for use in

circumstances where intellectual

property has already been created and

the IP is therefore in joint ownership by

operation of law or contract. Party 1

has the better bargaining position, but

Party 2 still has a reasonable

negotiating position as

Party 2’s

technical contribution will be needed in

future.

any aspects of joint ownership of

patents and related rights are covered,

so it could be adapted for many

situations

, but note that additional

provisions would probably be needed

in the case of competitors.

Note that in some circumstances it

may be necessary to ensure that

related entities are subject to the terms

of the agreement but in other

circumstances there may b

e a

requirement to limit those entities.

RECITALS

(A) [Explain background – how the joint ownership arose].

Joint ownership laws vary

considerably between some major

territories, so it is crucial for joint

owners of IP to set out their ownership

shares and what they can do with the

property if there would otherwise be

different approaches in the territories

where the joint IP subsists.

This document has been drafted with

English and US laws in mind. Under

those laws it is possible to alter the

legal position of the parties by

contract. Please note that is not

necessarily the case in every territory.

(B) Each of the Parties owns certain intellectual property

rights relating to [ ].

IP should be clearly defined, if

possible by reference to written

materials such as patent applications,

invention disclosures and technical

schedules.

(D) [Explain details of any existing encumbrances, such

as licenses, and how those encumbrances will be managed in

future. For example, will the licenses be terminated? If they

are to continue, who will receive income under them?]

(E) This Agreement sets out the terms on which the

Parties shall own, protect, administer and license certain

intellectual property that is and may in future be jointly owned

by them.

1 INTERPRETATION

1.1 DEFINITIONS

“Additional IP” means any Intellectual Property that either or

both Parties own jointly by operation of law or which they

agree in writing that they shall own jointly, but which is not set

out in Schedule 1, Part 1;

This term has been included so that

the agreement is fle

xible and the

portfolio is not divided. It will not result

in any IP being subject

to the

agreement unless it is jointly owned by

agreement or by operation of law.

“Business Day” means a day, other than a Saturday or

Sunday or a public holiday, on which

banks are open for

business in [the City of London];

“Confidential Information” means information in any form

that is protectable as confidential information by applicable

laws, including trade secrets, and which is disclosed by one

party to the other in furtherance of this agreement;

This is an exceedingly short definition,

which covers what is protectable

under English law. In many cases

examples are given so that clients find

it easier to envisage what is covered.

If you add examples then you need to

be careful to ensure that they could

never be construed as exhaustive

examples un

der applicable law;

otherwise, you reduce the scope of the

definition when you lengthen it.

As ever, it is crucial for each party to

decide whether they wish to accept

oblig

ations of confidence and, if so,

what those obligations should cover.

“Effective Date” means [ ] 2018;

“Intellectual Property”

or “IP” means any patent, utility

model, copyright and related rights, database right, registered

design, design right, topography right, application to register

or right to the grant of or right to claim priority from any of the

aforementioned rights, any invention (whether patentable or

not), trade secret, know-

how, and any other intellectual or

industrial property right of any nature whatsoever in any part

of the world for the full term of that right (including any

extensions);

This document is intended to cover

industrial property with an emphasis

on patents. The other rights have

been included as it is often the case

that there is ancillary property and it

makes no sense to split the portfolio.

The draft would, for example, be

unsuitable for use with literary

This is a UK definition without rights

relating to trade marks and “passing

off” as th

is Agreement covers

industrial property. In transatlantic

transactions, care must be taken to

recognize the different sui generis

intellectual property rights. For

instance, it is no use requesting rights

like database right

(which is a sui

generis right in the EU) in the US, or

expecting US designs to be protected

in the same way in the EU as they are

in the US. Note also that the generic

words “patent”

and “application” are

used and in this context there is no

need to particularise further.

“Improvement” means any modification, development,

addition, or other change to the technology that is the subject

of the Joint IP [which is to be interpreted in the widest possible

sense.]

This is a wide definition. A narrow

definition may cover IP that would

infringe

at least one claim of the

existing IP.

It will not be appropriate to include

improvements in some contexts.

Whilst some parties may wish to avoid

a situation where the other party

creates blocking IP or where the rights

in a portfolio are split, there are also

parties such as universities, which

may wish to avoid the inclusion of

improvements.

“Joint IP” means:

(i) the Intellectual Property set out in Part 1 of Schedule 1

(including the Patents) ((the “Initial Joint IP”); and

(ii) any Additional IP;

“Joint Registrations” shall have the meaning ascribed in

clause 4.1;

“Patents” means the patents jointly owned by the Parties,

which are set out in Schedule 1, Part 1, any patents or patent

applications claiming priority from the same;

Note the words “applications claiming

priority from” the Patents have been

used.

Under the European Patent

Convention (and consequently under

English law), it is not possible to widen

the scope of pre-existing applications

beyond the initial disclosure and

amendments that do so will render the

underlying property invalid under the

EPC; this

provision is interpreted

strictly and is one of the most common

ways in which patents are invalidated

in the territory of the EPC.

US definitions (and definitions to cover

US patents) may need to be wider to

catch other property

, for example to

cover continuations-in-part that could

add new matter

, in which case the

following wording could be added:

“together with any continuations-in-

part”.

“Patent Attorneys” shall have the meaning ascribed in

clause 4.2;

“QC” shall have the meaning ascribed in clause 4.9;

“Term” shall have the meaning ascribed in clause 2.1;

“written” or “in writing” means committed to paper or other

permanent form including emails but does not include faxes,

text messaging via mobile phone and any other transitory form

of visible reproduction of words.

This definition permits notices by

email, which parties may wish to

avoid.

1.2 CONSTRUCTION

1.2.1 In this Agreement, unless otherwise specified or the

context otherwise requires:

(a) words importing the singular only shall include the

plural and vice versa;

(b) words importing the whole shall be treated as

including a reference to any part thereof;

genders;

(d) reference to a schedule and to any recital, clause or

paragraph is to the relevant schedule, recital, clause or

paragraph of or to this Agreement;

(e) reference to this Agreement or to any other document

is a reference to this Agreement or to that other document

as modified, amended, varied, supplemented, assigned,

novated or replaced from time to time as permitted by the

provisions of this Agreement or as otherwise agreed by

the Parties;

(f) reference to any provision of law is a reference to that

provision as modified or re-enacted from time to time even

if it has the effect of increasing or extending any obligation

or liability or otherwise adversely affects the rights of any

Party to this Agreement;

Note that whilst this is in the boilerplate

section it is an important commercial

term, which may not be suitable in all

circumstances.

(g) reference to “person” means any individual, firm,

company, corporation, body corporate, government, state

or agency of state, trust or foundation, or any association,

partnership or unincorporated body

of 2 or more of the

foregoing (whether or not having separate legal

personality and wherever incorporated or established);

(h) reference to any statutory provision includes a

reference to any subordinate legislation made under that

provision from time to time; and

(i) reference to any legal term for any action, remedy,

method of judicial proceeding, legal document, legal

status, court, official or any legal concept, state of affairs

or thing shall in respect of any jurisdiction other than

England be

deemed to include that which most closely

approximates in that jurisdiction to the English legal term.

1.2.2 Any phase in this Agreement introduced by the term

“include”, “including”, “in particular” or similar expression will

be construed as illustrative and will not limit the sense of the

words preceding that term.

1.2.3 Headings used in this Agreement are for reference

only and shall not affect its construction or interpretation.

2 COMMENCEMENT AND DURATION

2.1 This Agreement shall come into force on the Effective

Date and unless terminated earlier in accordance with this

Agreement shall continue in force until the expiry of all of

the Joint IP (the “Term”).

3 OWNERSHIP

Note that this section just covers the

nature of the ownership; the

respective rights of the parties are

dealt with in more detail in clause 5.

3.1 The Joint IP shall be owned jointly by the Parties as

tenants in common in undivided shares

(as provided under

English law), subject to the terms of this Agreement.

It may be that there are presumptions

as to ownership in the jurisdiction of

the governing law, but in case there

has to be a change in the governing

law and to prevent misunderstandings

it is best to set out the position. As this

document is governed by English law,

the reference to “tenants in common”

is to an English form of property

ownership where the rights are

separated. This is contrasted with

“joint tenancy” where the share of a

joint tenant passes automatically to

the other party on insolvency or death.

Joint tenancy is unsuitable in most

industrial contexts.

Default rules for ownership in relation

to patents in the UK: Each joint owner

can do anything for their own benefit

that would infringe the patent but they

may not grant a license or assign or

mortgage their share of the patent

without the consent of the co-owner.

Similarly, they may not amend the

specification or apply for revocation

without the consent of the joint owner.

The default position relating to other

rights varies. The position relating to

that neither party may

exercise rights under the copyright

without the consent of the co-owner.

Under US patent law each joint owner

has an undivided interest in the IP as

a whole. More specifically, the default

rules for joint ownership of patents in

the US is as follows: (1) Each joint

owner can freely license them to third

parties without involving the other

owner. (2) Any licensing revenue

received by one joint owner does not

have to be shared with the other joint

owner. (3) All joint owners must be

parties to any litigation seeking to

enforce the jointly owned patents.

These can be contracted around.

As a result, the US rules for joint

ownership and enforcement can lead

to undesired results

but the position

can be modified by contract, for

example to:

•

Reallocate ownership

interests among joint owners;

• Restrict a joint owner’s

exploitation of jointly owned

IP; and

• Expressly provide for consent

cooperation in connection

with a joint owner’s

enforcement actions.

The parties may also want to ensure

that all jointly-owned patents include

only jointly-owned claims. Solely-

owned claimed inventions and jointly-

owned claimed inventions in a jointly-

owned patent results in joint

ownership of the solely-owned

inventions included in the jointly-

owned patent because patent

ownership cannot be split among

different claims in the US.

3.2 The provisions of clause 3.1 shall not affect the ownership

by either Party of any Intellectual Property that is not part of

the Joint IP.

3.3 [Each party warrants [and represents] that it does not own

any Intellectual Property in addition to the [the Joint IP], which

[ ]].

This is optional, and may assist if there

is a possibility that one of the parties

has not declared all relevant IP. This

warranty could be widened or a further

warranty could be added, dealing with

non-infringement (or knowledge

thereof).

4 PROSECUTION, MAINTENANCE, AND

ENFORCEMENT OF JOINT IP

4.1 Subject to the rest of this clause 4, Party 1 shall file,

prosecute and pay the renewal and other patent office and

governmental fees in relation to the Patents and any patent

property forming part of the Joint IP (collectively the “Joint

Registrations”). Party 1 shall not be obliged to spend a sum

in excess of [ ] in compliance with this clause 4.1, and if Party

1 would be obliged to do so in order to preserve any of the

Joint Registrations, [ ].

Regarding the Joint IP, it would be

possible to add registered designs, but

they have not been included here as

the combination of patents and

registered designs is not as common

as a plain patent portfolio.

An alternative would be to share costs

equally. Either way, it is crucial to set

out who pays and whether there are

any limits.

Note that Party 1 will engage the

patent attorneys and will be their client

in this scenario, but note

the copy

communication in 4.5.

4.2 In order to optimise the quality and control the costs of the

Joint Registrations, the Parties shall collaborate in relation to

the instructions to be given to the patent attorneys filing and

prosecuting the Joint Registrations (the “Patent Attorneys”),

and to any other matte

rs relevant to the Joint IP, which

collaboration shall include planning of the patenting process,

the sharing of information (including commenting on

documentation) and meeting with the Patent Attorneys or

independently of the Patent Attorneys as may be necessary

for that purpose. The Parties shall also meet to discuss post-

grant management of Joint Registrations in a similar manner.

4.3 [ ] shall provide technical content for use in all

applications and responses to the official actions of intellectual

property offices in relation to the Joint Registrations as

reasonably required by the Patent Attorneys and [ ]

shall do so in a timely fashio

n so as to enable the Patent

Attorneys to meet deadlines efficiently. In particular, [ ]

shall review and suggest any necessary changes to draft

specifications, review and comment on search reports and all

correspondence from and to relevant patent offices and third

parties so as to assist in obtaining the best possible protection

for the Joint IP.

In many cases the property will

originate from one or other or both

parties, in which case the input of the

inventor and possibly other members

of the technical team will be crucial in

the patenting process.

The parties should consider providing

for their continued interaction and

cooperation to m

aintain access to

inventors employed by

or otherwise

engaged by the other party.

The parties should also consider

ent

ering into a common interest or

joint defense agreement to help

protect privileged communications

between the parties’ respective patent

counsel.

4.4 The Parties shall seek to agree on the territories in which

Joint Registrations are to be filed; the Parties have already

agreed that Joint Registrations shall be filed in [the United

Kingdom]. Party 1 shall not be obliged to pay for any filings

unless it has agreed to do so.

4.5 Party 1 shall instruct the Patent Attorneys to provide Party

2 with copies of communications about the status of filing and

prosecution of Joint Registrations and decisions to be taken.

Party 2 shall consider all such communications and shall

inform Party 1 of any information that

is relevant to the

USPTO’s consideration of the Joint Registrations

, to the

extent that Party 2 is aware of such information.

Each party has a duty to disclose to

the USPTO information relevant to the

USPTO’s consideration of the patent

application to avoid inequitable

conduct that may preclude the

enforcement of the resulting patent.

4.6 Party 1 shall not be in breach of this Agreement if it

provides instructions to the Patent Attorneys in the absence of

timely support or input requested from Party 2 and Party 1 may

continue to provide instructions to the Patent Attorneys in

relation to the Joint Registrations in the absence of such

support or input.

4.7 [If Party 2 receives any consideration for the licensing,

disposal or otherwise relating to the Joint IP, Party 2 shall pay

an amount equal to half of the amount expended by Party 1

under clause 4.1 from the Effective Date and thereafter the

Parties shall each pay half of the fees payable under clause

4.1 (with Party 1 being permitted to deduct sums owed under

this clause from sums received by Party 1) in relation to the

Joint IP.]

This sort of wording needs to be

reviewed carefully to ensure that it

only catches the proceeds of

commercialisation. Note also that

those acting for Party 2 may wish to

set an amount of consideration that

will trigger the provisions of this

clause; otherwise, a relatively small

amount of money could lead to an

expensive bill for Party 2.

If one of the parties contributes more

during the developm

ent phase, the

parties may draft the

commercialization provisions to

address the parties’ unequal

development contributions. For

example, a party that contributes more

during the development phase could

have these expenses offset by

contributing less durin

g the

commercialization phase.

4.8 Each Party shall immediately inform the other Party if it

becomes aware of any claim or potential claim relating in any

way to the Joint IP, and shall provide to the other Party full

details of the relevant claim.

4.9 Party 1 shall be entitled to manage any defense or

enforcement of the Joint Registrations and any other Joint IP

and shall consult with Party 2 in respect of all material matters

arising in the course of that work. Party 1 shall pay careful

consideration to comments made by Party 2 but Party 1 shall

not be obliged to comply with Party 2’s wishes. Party 1 shall

not be obliged to defend or to enforce the Joint IP, but if it is

decides to do so and Party 2 agrees that it is necessary to

defend or to enforce the Joint IP or if Party 1 is advised by

Queen’s Counsel (or a foreign equivalent) specializ

ing in

Intellectual Property (“QC”) that the defense or enforcement

has a good chance of success, then the expenses of such

defense and enforcement shall be shared in the same manner

as prosecution and maintenance expenses under clauses 4.1

and 4.2.

This has the potential to be one of the

more difficult aspects to negotiate but

in practice it is often the case that one

party wants to manage and has the

funds to do so whilst the other has

neither the experience nor the funds to

do the job and is therefore content to

stand aside.

QC: This is English terminology for a

skilled and experienced trial attorney,

who has official recognition as such.

4.10 If Party 1 decides not to defend or to enforce the Joint IP

on the ground that the defense or enforcement does not stand

a good chance of success and Party 2 disagrees with Party

1’s assessment of the situation, the Parties shall seek the

opinion of a QC (the identity of the QC to be agreed between

the Parties and in default of agreement by the Chairman for

the time being of the Bar Counsel (or relevant foreign

equivalent)) as to whether the action would stand a good

chance of success. If the QC advises that the action stands a

good chance of success, Party 2 shall be entitled to

commence litigation in its own name to defend or enforce the

Joint IP, provided that Party 2 shall consult with Party 1 and

keep Party 1 informed in all stages of the litigation and that

Party 2 shall indemnify Party 1 in respect of all claims,

demands, actions, liabilities and da

mages made by or

awarded to any person and any associated costs and

expenses that arise directly or indirectly from the litigation.

Note that the words preceding

“success” are limiting.

4.11 If Party 1 decides to cease prosecuting or

maintaining any of the Joint Registrations or to let them lapse,

Party 1 shall first offer to assign to Party 2 the Joint

Registrations that are the subject of that decision. All such

offers shall be made in writing and shall be open for

acceptance in writing by Party 2 for a period of 20 Business

Days from the date of the Party 1’s offer. If Party 2 accepts

any such offer, Party 2 shall make all payments relating to the

Joint Registrations that are the subject of the offer with effect

from the date of the offer and Party 1 shall (at the cost of Party

2) execute all documents that Party 2 may reasonably require

to effect the assignment. Immediately on assignment, Party 2

shall be deemed to have granted to Party 1 a perpetual,

irrevocable, royalty-free, non-exclusive, worldwide license

(with the right to grant sub-licenses) in all territories where the

Joint Registrations may subsist for the duration of the rights

licensed.

The obvious drawback of assigning

the property is the potential for the

property to create blocking IP, which is

most likely to block the assignor if they

are still working on the technology. A

license back may therefore be crucial.

4.12 Each Party shall inform the other promptly in

writing of any alleged infringement of the Joint IP of which it is

aware and shall provide the other Party with any available

evidence of the alleged infringement.

5 EXERCISE OF RIGHTS UNDER THE JOINT IP

5.1 Each Party may itself exercise all rights under

the Joint IP but s

ave as provided in clauses 5.2 and 5.3,

neither party may grant a license under (or amend the terms

of a license under), otherwise dispose of rights or encumber

(including by way of charge) or do any other act in relation to

any rights under Joint IP without the prior written consent of

the other Party

[which consent shall not be unreasonably

withheld, conditioned or delayed]. [In the case of a license, a

condition of cons

ent may be the requirement for the other

party to agree to the terms of the license].

One of the areas in which there is

considerable territorial variation is the

extent to which joint owners may

exercise the jointly owned rights

without the consent of

the other, or

may licens

e or charge the rights

without consent. In the UK it is not

possible for a joint owner of copyright

to exercise any of the jointly owned

rights without a license from the other

joint owner. Conversely,

under US

law, each joint owner of patent rights

may exercise its rights independently

without the consent of and without

accounting to the other joint owner for

any share of any resulting income

(which is different from US copyright

law where a joint copyright owner must

account to the other joint owner).

In this context it is crucial to decide

whether the parties should be granted

a “have made” licens

e which allows

them to engage contract

manufacturers. If this is necessary, it

should be stated expressly.

5.2 [Each Party shall be permitted to assign its rights in the

Joint IP, its rights and obligations under this Agreement and

its rights under any license of the Joint IP to a successor in

title of [the whole of] its business, provided that the successor

in title enters into a novation agreement under which the new

owner assumes the obligations of the assignor under this

Agreement.]

Whilst this may be highly contentious,

it may be that an exception has to be

made to clause 5.1, in which case the

situation needs to be managed

carefully so as to preserve the rights of

the non-assigning party.

It would be possible to provide an

option for a joint owner to purchase

before sale to a third party.

5.3 The Parties shall share all consideration received in

respect of the Joint IP in equa

l shares, save as set out in

clause 4.7 or as otherwise provided under this Agreement.

Either Party may assign its right to receive consideration for

the Joint IP to a third party without the consent of the other

Party.

5.4 Each Party shall receive all reports under licenses of the

Joint IP and shall meet [state frequency and possibly venue]

to discuss license management issues.

5.5 Party 1 shall in its sole discretion decide whether to

terminate any license of the Joint IP.

This may be controversial.

6 IMPROVEMENTS

6.1 Each Party shall disclose to the other details of all

Improvements to Joint IP that it may create or acquire for

the duration of this Agreement in sufficient detail to allow

the other Party to determine whether such Improvements

should be Additional IP. Such disclosure shall be made

within 28 days of making each Improvement to Joint IP.

As mentioned above, this sort of

improvement provision will not be

appropriate in all cases, more

especially as it is wide and subject to

the request from the other party it is

automatic.

6.2 In addition to the details to be provided under clause 6.1,

the Party creating an Improvement shall also provide all

information that could affect the ownership of those

Improvements, together with any supporting

documentation.

This Agreement leaves open the

possibility that either party might work

with a third party, which might acquire

rights. Similarly, it does not prohibit

either party from using third party

technology and adding to it; the other

party may not have a license to the

additional technology. If either issue

would be problematic, it needs to be

dealt with specifically.

6.3 If the Party receiving notice under clause 6.1 determines

that an Improvement should be Additional IP the Parties

shall execute such documentation as may be necessary

to transfer the relevant Intellectual Property into the joint

names of the Parties in accordance with this Agreement.

7 LIABILITY

7.1 If either Party incurs liability arising from:

7.1.1 the ownership of the Joint IP; or

7.1.2 the licensing or other commercialization of

the Joint IP, in circumstances where both Parties have

agreed to the licensing or commercialization;

that liability shall be shared equally between the parties,

save that each Party shall be solely responsible in respect

of any liability incurred solely as a result of that Party’s

default (or proportionately, to the extent that a proportion

of the liability is attributable to its default).

7.2 Each Party may set off any sums for which the other Party

is liable under this clause 7 against moneys received

under a license of the Joint IP.

8 CONFIDENTIALITY

8.1 Each Party shall at all times:

8.1.1 keep Confidential Information in strictest

confidence and not disclose it to any person without the

prior written consent of the other Party or use or exploit

the Confidential Information for its own purposes or those

of any other person other than for: (i) the proper

performance of its obligations under this Agreement; or (ii)

the proper exercise of its rights under this Agreement and

in each case subject to the terms of this clause 8;

8.1.2 only make such records of the Confidential

Information as are necessary for: (i) the proper

performance of its obligations under this Agreement; or (ii)

the proper exercise of its rights under this Agreement; and

clearly mark all records as confidential provided that an

omission to mark records as confidential does not mean

that such records do not constitute Confidential

Information; and

8.1.3 take all necessary and proper security

precautions to safeguard every part of the Confidential

Information to prevent it from being disclosed or otherwise

made available to any third party except as permitted by

this Agreement.

8.2 Each Party shall and shall procure that all its employees

and agents (including sub-

contractors) and any other third

parties to whom they may disclose Confidential Information

are subject to and shall comply with written obligations that are

no less stringent than th

ose set out in clause 8.1, which

obligations they shall enforce.

8.3 The undertakings in Clause 8.1 shall not apply to the

extent that the Confidential Information:

8.3.1 is in or enters the public domain through no

default of the receiving Party or any person on their behalf,

provided that this clause 8.3.1 shall only apply from the

date that the Confidential Information enters the public

domain;

8.3.2 is received from a third party without similar

obligations of confidence in circumstances where the third

party did not obtain that information as a result of a breach

of an obligation of confidence;

8.3.3 is required to be disclosed by any applicable

law or by order of any court of competent jurisdiction or

any government body, agency or regulatory body, or by

the rules of any regulated stock exchange, in each case to

the extent of the required disclosure,

provided that if a

Party or any of its representatives reasonably believes it

is required by law, or is otherwise so obliged, to disclose

any Confidential Information that Party shall, to the extent

practicable and permissible, provide the other Party with

immediate written notice of such requirement or obligation,

(together with, where permissible, a copy of any relevant

access request, court order or other evidence giving rise

to such belief) to enable the other Party to seek

appropriate protective relief and/or to take other steps to

resist or narrow the scope of any required disclosure. The

Parties shall co-operate with respect to such matters and

the Party that is required to make the disclosure shall in

any event disclose only such Confidential Information as it

has ascertained, after taking legal advice, it is legally

compelled to disclose;

8.3.4 is required to be disclosed to professional

advisers where such disclosure is necessary or desirable

in order for the professional adviser to provide advice or

other services;

8.3.5 because of its nature is not capable of

protection as Confidential Information even if it remains

secret.

This exception is not generally in use,

but under English law it is well

established that information that is

trivial or obvious cannot be protected.

In a noteworthy case, one party tried

to use a confidentiality obligation to

protect what was described as a list of

common janitorial supplies and it was

found that the list was not protectable.

9 WAIVERS AND REMEDIES

9.1 Except as otherwise stated in this Agreement, the rights

and remedies of each Party under this Agreement:

9.1.1 are in addition to and not exclusive of any

other rights or remedies under this Agreement or the

general law; and

9.1.2 may be waived only in writing and specifically.

9.2 Delay in exercising or non-exercise of any right under this

Agreement is not a waiver of that or any other right.

9.3 Partial exercise of any right under this Agreement shall not

preclude any further or other exercise of that right or any

other right under this Agreement.

9.4 Waiver of a breach of any term of this Agreement shall not

operate as a waiver of breach of any other term or any

subsequent breach of that term.

10 SEVERANCE

10.1 If any provision of this Agreement is or becomes

illegal, invalid or unenforceable in any jurisdiction, that

shall not affect:

10.1.1 the legality, validity or enforceability in that

jurisdiction of any other provisions of this Agreement; or

10.1.2 the legality, validity or enforceability in any other

jurisdiction of that or any other provision of this

Agreement.

10.2 Whilst the Parties consider the provisions

contained in this Agreement reasonable, having taken

independent legal advice, if any of the provisions are adjudged

alone or together to be illegal, invalid or unenforceable, the

Parties shall negotiate in good faith to mod

ify any such

provision(s) so that to the greatest extent possible they

achieve the same effect as would have been achieved by the

invalid or unenforceable provision(s).

11 ENTIRE AGREEMENT

11.1 This Agreement:

11.1.1 constitutes the entire agreement between the

Parties with respect to the subject matter of this

Agreement; and

11.1.2 supersedes and extinguishes any prior drafts,

agreements, undertakings, understandings, promises or

conditions, whether oral or wri

tten, express or implied

between the Parties relating to such subject matter.

11.2 Each Party acknowledges to the other that it

has not been induced to enter into this Agreement by nor has

it relied upon any representation, promise, assurance,

warranty or undertaking (whether in writing or not) by or on

behalf of the other Party or any other person

(“Representations”) save for those contained in this

Agreement. Accordingly, each of the Parties acknowledges

and agrees that the only remedy available to it in respect of

such Representations shall be for breach of contract under the

terms of this Agreement.

11.3 This clause 11 shall not exclude any liability

which either Party would otherwise have to the other or any

right which either of them may have to rescind this Agreement

in respect of any statements made fraudulently by the other

prior to the execution of this Agreement or any rights which

either of them may have in respect of fraudulent concealment

by the other.

12 NO PARTNERSHIP/AGENCY

Nothing in this Agreement is intended to or shall operate to

create a partnership or joint venture of any kind between the

Parties and with the exception of the Party 1’s rights and

obligations under clauses 4, 5 and 15 nothing in this

Agreement shall authorize either Party to act as agent for the

other or to act in the name or on behalf of or otherwise to bind

the other in any way.

13 RIGHTS OF THIRD PARTIES

A person who is not a Party has no rights under the Contracts

(Rights of Third Parties) Act 1999 to enforce, or to enjoy the

benefit of, any provision of this Agreement but this does not

affect any right or remedy of a third party which exists or is

available apart from that Act.

14 NOTICES

14.1 All notices between the Parties with respect to this

Agreement shall be in writing and signed by or on behalf of the

Party giving them.

14.2 Any notice referred in clause 14.1, may be served:

14.2.1 by delivering it by hand; or

14.2.2 by post, being (i) (where the address of the

relevant receiving Party is in the United Kingdom)

first class pre-paid post (provided that a certificate of

posting is obtained) registered and/or tracked postal

service or courier, or (ii) (where the address of the

relevant receiving Party is in a different country) air

mail;

to the address of the receiving Party set out at the beginning

of this Agreement, or to such other address as the receiving

Party may from time to time have notified the other Party in

accordance with this clause 14.

14.3 Notices shall be deemed to have been received:

14.3.1 if delivered by hand or by courier within the United

Kingdom, on the day of delivery;

14.3.2 if sent by first class pre-paid post registered or tracked

postal service within the United Kingdom, 2 Business Days

after posting, exclusive of the day of posting; or

14.3.3 if sent by air mail, 10 Business Days after posting,

exclusive of the day of posting.

14.4 In proving service:

14.4.1 by delivery by hand, it shall be necessary only to

produce a receipt for the notice signed by or on behalf of the

addressee; or

14.4.2 by post, it shall be sufficient to prove that the envelope

containing such notice was addressed to the address of the

relevant Party and delivered either to that address or into the

custody of the postal authorities as a first class pre-paid post

(and evidenced by a certificate of posting), pre-paid registered

and/or tracked postal delivery, courier or airmail letter, in each

case, as applicable under clause 14.2.2.

15 FURTHER ASSURANCE AND POWER OF ATTORNEY

15.1 Each Party shall at the request and cost of the other

Party execute such documents and do all such acts and

things as may be

reasonably necessary for putting the

terms of this Agreement into effect and co-

operate fully

with the other Party so that each Party may obtain the full

benefit of this Agreement.

15.2 [Party 2 appoints Party 1 to be his attorney to execute

such documents and to do all such acts and things and

generally to use its name for the purpose of putting this

agreement into effect, provided that Party 1 has made

reasonable attempts to contact Party 2 having due

consideration of the timings for any official actions or steps

that need to be taken in relation to the prosecution,

maintenance or enforcement of the Joint IP. In favor of

any third party, a certificate in writing signed by a director

or secretary of Party 1 that any document or act falls within

the autho

rity conferred by this clause 15.2 shall be

conclusive evidence that such is the case.]

This is potentially controversial but

could be crucial if the other party

cannot be contacted.

16 COUNTERPARTS

16.1 This Agreement may be signed in any number of

counterparts and by the Parties on separate counterparts,

but shall not be effective until each Party has signed at

least one counterpart.

16.2 Each counterpart shall be treated as an original of this

Agreement but all counterparts shall together constitute

one and the same agreement.

17 GOVERNING LAW

This Agreement, and any issues or disputes arising out of or

in connection with it (whether such disputes are contractual or

non-contractual in nature, such as claims in tort, for breach of

statute or regulation, or otherwise) shall be governed by and

construed in accordance with English law.

18 JURISDICTION

In relation to any legal action or proceedings (a) arising out of

or in connection with this Agreement or its implementation or

effect or (b) relating to any non-contractual obligations arising

out of or in connection with this Agreement, each of the Parties

irrevocably submits to the exclusive jurisdiction of the English

courts and waives any objection to proceedings in such courts

on the grounds of venue or on the grounds that proceedings

have been brought in an inappropriate forum.

In view of Brexit, for the time being it is

advisable to use arbitration for

international agreements involving the

UK which are signed now. If and when

the UK has acceded to the relevant

treaties then it should be possible to

go back to normal. It is possible to

make other arrangements now, but

they would most probably involve

using a mechanism for agreeing an

exclusive jurisdiction clause in future

as the

UK would not be part of the

necessary treaty at the date of

signature. The UK cannot accede to

the necessary treaties until it has left

the EU.

EXECUTED as a deed by the Parties or their duly authorised

representatives and delivered on the date of this deed.

By:

[ ]

Printed Name:

Signature:

Title:

Date:

Depending on the jurisdiction, the

signatures may need to be witnessed.

It is safest to provide for witnesses.

SCHEDULE 1

Part 1

Initial Joint IP

Part 2

[ ]