CONSULTING
AGREEMENT
This Agreement is made on __________________,
19_____ between ____________________ (the "Company") and ____________________
(the "Consultant"), a faculty member/investigator at The University
of Texas _____________________, (the "UT_______"), and is effective
on ________________19_____. The Consultant has extensive experience regarding
___________________________ ___________________________________________, and
the Company seeks to benefit from the Consultant's expertise by retaining the
Consultant as an exclusive Technical Consultant. The Consultant wishes to perform
consulting services for the Company. Accordingly, the Company and the Consultant
agree as follows:
- Services
- The consultant shall provide
advice and consulting services to the Company with respect to matters
related to ________________________________________ ____________________________________________.
The Consultant shall be engaged by the Company as a consultant for the
exchange of ideas only and under the terms of this Agreement, shall not
direct or conduct research for or on behalf of the Company. Any research
which may be conducted shall be carried out under the auspices of a sponsored
research agreement between Company and UT_______.
- Upon request by the Company
and in return for compensation detailed in Article 2, the Consultant shall
keep the Company informed about applications, features, and specifications
in the area of ____________________________________ as they may broaden
or change from time to time as well as be available for assisting in quality
control issues.
- The Company acknowledges that
the Consultant is an employee of UT_______ and is subject to the UT_______
's policies, including policies concerning consulting, conflicts of interest,
and intellectual property. If there is a conflict between Consultant's
obligations under UT_______ ‘s policies and any of Consultant's obligations
to Company pursuant to this Agreement, the Consultant's obligations under
the UT_______ policies take priority over any obligations the Consultant
may have to the Company by reason of this agreement.
- Compensation
As full consideration for the
consulting services provided by the Consultant, the Company shall pay
to the Consultant ____________________.
- Competition
The Consultant represents to
the Company that the Consultant does not have any agreement to provide
consulting services to any other party, firm, or company in the _______________
industry on matters relating to the scope of this consultancy, and will
not enter into any such agreement during the term of this Agreement. The
Company acknowledges and agrees, however, that nothing in this Agreement
shall affect the Consultant's obligations to, or research on behalf of,
UT_______ or any component of The University of Texas System, including,
without limitation, obligations or research of the Consultant in connection
with a transfer by UT_______ of materials or intellectual property developed
in whole or in part by the Consultant, or in connection with research
collaborations.
- Confidentiality
- Either party may disclose
to the other party any information that the disclosing party would normally
freely disclose to the other members of the scientific community at large,
whether by publication, by presentation at seminars, or in informal scientific
discussions.
- The parties may wish, from
time to time, in connection with work contemplated under this Agreement,
to disclose confidential information to each other ("Confidential
Information"). Each party will use reasonable efforts to prevent
the disclosure of any of the other party's Confidential Information to
third parties for a period of _______ (__) years from receipt thereof.
The recipient may acquire information that pertains to the discloser's
processes, equipment, programs, developments, or plans that is both (i)
disclosed or made known by the disclosure to the recipient and (ii) identified
in writing as "proprietary" by the disclosure. The recipient
agrees not to disclose any Confidential Information to third parties or
to use any Confidential Information for any purpose other than performance
of the services contemplated by this Agreement, without prior written
consent of the Company.
- Confidential Information subject
to paragraph 4(b) does not include information that (i) is or later becomes
available to the public through no breach of this Agreement by the recipient;
(ii) is obtained by the recipient from a third party who had the legal
right to disclose the information to the recipient; (iii) is already in
the possession of the recipient on the date this Agreement becomes effective;
(iv) is independently developed by recipient; or (v) is required to be
disclosed by law, government regulation, or court order. In addition,
Confidential Information subject to paragraph 4(b) does not include information
generated by the Consultant unless the information (i) is generated as
a direct result of the performance of consulting services under this Agreement
and (ii) is not generated in the course of the Consultant's activities
as a UT_______ employee or UT_______ faculty member.
- Return of Materials
The Consultant agrees to promptly
return, following the termination of this Agreement or upon earlier request
by the Company, all drawings, tracings, and written materials in the Consultant's
possession and (i) supplied by the Company in conjunction with the Consultant's
consulting services under this Agreement or (ii) generated by the Consultant
in the performance of consulting services under this Agreement and not
generated in the course of the Consultant's activities as an UT_______
employee or UT_______ faculty member.
- Intellectual Property
- Title to all inventions and
discoveries made by Consultant resulting from the work performed hereunder
shall reside in UT_______; title to all inventions and discoveries made
by Company resulting from the research performed hereunder shall reside
in Company; title to all inventions and discoveries made jointly by Consultant
and Company resulting from the research performed hereunder shall reside
jointly in UT_______ and Company. Inventorship shall be determined in
accordance with U.S. Patent law.
- After consultation with Company
regarding the advisability of filing patent applications, UT_______ shall
file appropriate United States and foreign patent applications for wholly
or jointly owned UT_______ inventions. UT_______ will provide Company,
on a confidential basis, a copy of any such application filed and any
documents received or filed during prosecution thereof and will provide
Company the opportunity to comment thereon. On any application on which
an employee of Company is named as a co-inventor, Company will cooperate
in obtaining execution of any necessary documents by its employees.
- UT_______ agrees to grant
to Company an option to negotiate an exclusive, worldwide, royalty-bearing
license to make, use or sell under any invention or discovery owned wholly
or partly by UT_______ and made or conceived and reduced to practice during
the term of this Agreement or within six (6) months thereafter and directly
resulting from the performance of the consulting work conducted hereunder,
with right to sublicense with accounting to UT_______. Company shall have
three (3) months from disclosure of any invention or discovery to notify
UT_______ of its desire to enter into such a license agreement, and a
license agreement shall be negotiated in good faith within a period not
to exceed six (6) months from Company's notification to UT_______ of its
desire to enter into a license agreement, or such period of time as to
which the parties shall mutually agree.
- If Company and UT_______ fail
to enter into an agreement during that period of time, Company shall have
a right of first refusal with respect to any terms generally more favorable
offered by UT_______ to a third party for a period of one (1) year thereafter.
- In the event Company elects
to exercise its option to negotiate a license in accordance with the procedures
detailed above, it shall be obligated to pay all expenses, including attorney's
fees, incurred in searching prior art, obtaining search opinions, preparing
applications, filing, prosecuting, enforcing or maintaining a patent or
patent application with respect to the licensed invention in any country
in which the patent or application is filed.
- Defense and Indemnification
The company agrees, at its
sole expense, to defend the Consultant and UT_______ against, and to indemnify
and hold the Consultant and UT_______ harmless from, any claims or suits
by a third party against the Consultant or UT_______ or any liabilities
or judgements based thereon, either arising form the Consultant's performance
of services for the Company under this Agreement or arising from any Company
products which result from the Consultant's performance of services under
this Agreement.
- Term and Termination
- This Agreement shall be for
a term of ______ months, renewable upon reasonable terms and conditions
as may be agreed upon by the Company and the Consultant.
- Termination of the Agreement
under paragraph 8(a) above shall not affect (a) the Company's obligation
to pay for services previously performed by the Consultant or expenses
reasonably incurred by the Consultant for which the Consultant is entitled
to reimbursement under paragraph 2, above, (b) the Company's obligations
to recognize the priority of UT_______ and UT_______ intellectual property
rights under paragraph 6(b), above, (c) the Company's obligation to defend
and indemnify the Consultant and the Institute under paragraph 7 above,
or (d) the Consultant's continuing obligations to the Company under paragraphs
4(b) and 6(a), above.
- Miscellaneous
- This Agreement shall inure
to the benefit of and be binding upon the respective heirs, executors,
successors, representatives, and assigns of the parties, as the case may
be.
- The relationship created by
this Agreement shall be that of independent contractor, and the Consultant
shall have no authority to bind or act as agent for the Company or its
employees for any purpose.
- The Company will not use the
Consultant's or UT_______'s name in any commercial advertisement or similar
material used to promote or sell products, unless the Company obtains
in advance the written consent of both the Consultant and UT_______.
- Notice or payments given by
one party to the other hereunder shall be in writing and deemed to have
been properly given or paid if deposited with the United States Postal
Service, registered or certified mail, addressed as follows:
{Company Address}
{Consultant Address}
- This Agreement replaces all
previous agreements and the discussions relating to the subject matters
hereof and constitutes the entire agreement between the Company and the
Consultant with respect to the subject matters of this Agreement. This
Agreement may not be modified in any respect by any verbal statement,
representation, or agreement made by any employee, officer, or representative
of the Company, or by any written documents unless it is signed by an
officer of the Company and by the Consultant.
- If any term or provision of
this Agreement is deemed invalid, contrary to, or prohibited under applicable
laws or regulation of any jurisdiction, this Agreement (save only this
sentence) shall be invalid.
IN WITNESS WHEREOF, the parties have
executed this Agreement effective the date first stated above.
By:______________________________
President
By: ___________________________
Consultant
Agreements,
Forms and Samples | Intellectual Property Section
University of Texas System Office of
General Counsel
Comments to intellectualproperty@utsystem.edu
Last updated: March 13, 2007
