Sample 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:

In Witness Whereof, the Parties have caused this JVA to be executed by their duly authorized officers or representatives on the dates shown below.

Exhibit 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 JVA

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

1. Intellectual 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 Party.
   
2. Intellectual 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.
   
3. The Parties hereby offer licenses to each other for the intellectual property described in (1) and (2) above under the following conditions:
   
   [Insert 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.]
   
4. 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), or corporations.
   
5. The 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 property, i.e., 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.
   
6. The 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.