HomeMy WebLinkAboutContracts & Agreements_184-2003_CCv0001.pdf PENNSTATE
SPONSORED
RESEARCH AGREEMENT
Agreement Number 70069
THIS AGREEMENT,effective this 7th day of October 20 03 , by and between The Pennsylvania
State University(hereinafter referred to as"University")and City of Redlands
having a principal place of business at: Redlands. California
(hereinafter referred to as"Sponsor").
RECITALS:
I. The research program contemplated by this Agreement is of mutual interest and benefit to University and
Sponsor, will further the multiple missions of University (Instruction, Research, and Public Service) in a
manner consistent with its status as a non-profit,tax-exempt,educational institution,and may derive benefits for
Sponsor,University,and society by the advancement of science and engineering through discovery;
2. Sponsor has expressed a desire to engage University to create or enhance technologies that will assist in
Sponsor's development and commercialization of new products and/or processes;
University's research capabilities reflect a substantial public investment which University, as a part of its
mission as a Land Grant University, wishes to utilize in a cooperative and collaborative research effort with
Sponsor in order to meet the above stated needs;
NOW, THEREFORE, in consideration of the premises and mutual covenants set forth below, the parties hereto
agree to the following:
Article I -Definitions
As used herein,the following terms shall have the following meanings:
LI "Project" shall mean the research described in Appendix A hereof, under the direction of
Fred S. Cannon (hereinafter referred to as"Principal Investigator").
1.2 "Intellectual Property" shall mean certain inventions and/or discoveries conceived and/or reduced to practice
in performance of this Project and resulting patents, divisions, continuations, or substitutions of such applications
and all reissues thereof,upon which a University employee or agent is a named inventor.
1.3 "Proprietary Information" shall mean any written information and data marked proprietary or non-written
information and data disclosed which is identified at the time of disclosure as proprietary and is reduced to writing
and transmitted to the other party within sixty(60), days of such non-written disclosure.
Article 2-Period of Performance
Period of performance shall be from August 15, 2003 -to December 31,2004
(hereinafter referred to as"Period of Performance").
Article 3-Research Work
University shall commence the performance of Project on the first day of Period of Performance and shall use
reasonable best efforts to perform Project substantially in accordance with the terms and conditions of this
Agreement.
Article 4-Reports
The Principal Investigator shall furnish Sponsor with reports regarding Project as specified in Appendix A.
Article 5-Fiscal Considerations
5.1 This is a cost reimbursable agreement. Total cost to Sponsor shall not exceed Eighty thousand
dollars ($80,00 Payments shall be made by Sponsor within thirty
(30)days of receipt of monthly invoices.
5.21 University shall retain title to any equipment purchased with funds provided by Sponsor under this
Agreement.
53 In the event of early termination of this Agreement pursuant to Article 10 hereof, Sponsor shall pay all
reasonable costs and non-cancelable obligations incurred by University as of the date of termination.
Article 6-Publicity
Neither party to this Agreement will use the name of the other party, nor of any member of the other party's
employees, in any publicity, advertising, or news release without the prior written approval of an authorized
representative of that party.
Article 7-Publication
7.1 It is the purpose of this clause, in conjunction with Article 8 - Confidentiality, to balance Sponsor's need to
protect commercially feasible technologies, products, or processes with University's public responsibility to freely
disseminate scientific findings for the advancement of knowledge. University recognizes that the public
dissemination of information based upon Research performed under this Agreement cannot contain Proprietary
Information nor should it jeopardize Sponsor's ability to commercialize Intellectual Property developed hereunder.
Further, University acknowledges that commercially sensitive information related to the design or composition of
specified products or processes is not of general interest, while its confidentiality may be critical to the
commercialization of said products or processes. Similarly, Sponsor recognizes that the scientific results of Project
must be publishable and, subject to the confidentiality provisions of the Agreement, may be presented in forums
such as symposia or international,national or regional professional meetings,or published in vehicles such as books,
journals,websites,theses,or dissertations,
7.1 University agrees not to publish or otherwise disclose Proprietary Information, Sponsor agrees that
University, subject to review by Sponsor, shall have the right to publish results of Project which are not proprietary
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to the design or composition of specified products or processes derived from Project. Sponsor shall be furnished
copies of any proposed publication or presentation at least 60 days before submission of such proposed publication
or presentation. During that time, Sponsor shall have the right to review the material for Proprietary Information
provided by Sponsor and to assess the patentability of any invention described in the material. If Sponsor decides
that a patent application should be filed, the publication or presentation shall be delayed an additional seventy-five
(75) days or until a patent application is filed, whichever is sooner. At Sponsor's request, Proprietary Information
provided by Sponsor shall be deleted.
Article 8-Confidentiality
8.1 Prior to disclosure of Proprietary Information to University by Sponsor, Sponsor shall notify Principal
Investigator of its intent to disclose Proprietary Information; and Principal Investigator shall have the right to
decline receipt of said information. Said Proprietary Information shall be sent only to Principal Investigator.
8.2 Each party to this Agreement agrees to treat Proprietary Information received from the other with the same
degree of care with which it treats its own Proprietary Information and further agrees not to disclose such
Proprietary Information to a third party without prior written consent from the party disclosing Proprietary
Information. y
8.3 The foregoing obligations of non-disclosure do not apply to Proprietary Information which:
(a) was known to the recipient prior to the disclosure hereunder;
(b) was received from a third party not under an obligation of confidence to recipient;
(c) is in the public domain at the time of disclosure hereunder or subsequently entered the public domain
without the fault of the recipient;
(d) has been independently developed by an employee of recipient that has not had access directly or
indirectly to Proprietary Information, and recipient can substantiate any claim of independent
development by written evidence;or
(e) is required to be disclosed by law.
8.4 Unless otherwise agreed to in writing, neither party hereto shall have any obligation of confidentiality under
this Agreement after the earliest of either the fifth anniversary of the conclusion of Period of Performance or
termination in accordance with Article 10.
Article 9-Intellectual Property
9.1 The purpose of this clause is to balance Sponsor's ability to reasonably exploit, with due competitive
advantage,the commercial viability of technologies,products,or processes with University's responsibility to ensure
the broadest public benefit from the results of University research. University recognizes that one of the prime
reasons Sponsor has entered this Agreement is an effort to secure, through the creation or enhancement of
technologies, a market position with regard to its products or processes. At the same time, Sponsor recognizes that
University has an obligation to utilize the knowledge and technology generated by University research in a manner
which maximizes societal benefit and economic development and which provides for the education of graduate and
undergraduate students.
9.2 University will promptly disclose to Sponsor in writing any Intellectual. Property made during the Project
performed hereunder. Such disclosure shall be sufficiently detailed for Sponsor to assess the commercial viability of
the technology and shall be provided and maintained by Sponsor in confidence pursuant to the terms of Article 8.
Sponsor shall have up to ninety(90)days from the receipt of the disclosure to inform University whether it elects to
have University file a patent application thereon pursuant to the procedures set forth below.
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9.3 All rights and title to Intellectual Property shall be subject to Sponsor's licensing terms below and belong to
University. University, through its technology transfer organization, shall grant Sponsor an option to negotiate a
license to Intellectual Property. Such license shall be non-exclusive or upon Sponsor's election (and to the extent
University may be free to do so) exclusive within Sponsor's field of commercial interest. Terms and conditions of
such license, including specification of sublicensing rights and royalties, are to be negotiated in good faith and
agreed upon between University and Sponsor. This option shall extend until termination of the Agreement or upon
filing of a patent application. Sponsor shall have upon election ninety(90) days to negotiate a license,which period
can be extended by mutual agreement. In the event the parties fail to reach a mutually acceptable license agreement
within the above specified time period, University shall be entitled to negotiate in good faith with one or more third
parties a license under any Intellectual.Property.
9.4 University shall promptly file and prosecute patent applications, using counsel of University's choice after
due consultation with. Sponsor. University shall keep Sponsor advised as to all developments with respect to
application(s)and shall promptly supply copies of all papers received and fled in connection with the prosecution in
sufficient time for Sponsor to comment. Sponsor's comments shall be taken into consideration. Sponsor shall
reimburse University for all reasonable out-of-pocket costs incurred in connection with such preparation, fling, and
prosecution of patent(s).
9.5 Within nine(9)months of the filing date of a U.S, patent application, the Sponsor shall provide to University
a written list of foreign countries in which applications should be fled. If Sponsor elects to discontinue financial
support of any patent prosecution, in any country, University shall be free to continue prosecution at University's
expense. In such event, University shall have no further obligation to Sponsor in regard to such patent applications
or patents.
9.6 Copyright to copyrightable materials, including computer software, resulting from Project shall vest in
University with a royalty-free license to Sponsor for its non-commercial use. University shall grant Sponsor an
option to license any such material(s) it wishes to develop for commercial purposes on reasonable terms and
conditions, including a reasonable royalty,as the parties hereto agree in a subsequent writing.
9.7 Sponsor understands that University must comply with the provisions of the Bayh-Dole Act. To the extent
that U. S. Government's approval may be deemed necessary to transfer license rights hereunder to Sponsor, Sponsor
shall provide whatever reasonable assistance is required, and will reimburse University for all external costs
associated therewith.
Article 10-Termination
10.1 Either party may terminate this Agreement upon ninety(90)days prior written notice to the other.
10.2 In the event that either party hereto shall commit any material breach of or default in any terms or conditions
of this Agreement, and also shall fail to reasonably remedy such default or breach within sixty(60)days after receipt
of written notice thereof, the non-breaching party may, at its option and in addition to any other remedies which it
may have at law or in equity,terminate this Agreement by sending notice of termination in writing to the other party
to such effect. Termination shall be effective as of the day of the receipt of such notice.
1.0.3 Termination of this Agreement by either party for any reason shall not affect the rights and obligations of the
parties accrued prior to the effective date of termination of this Agreement, except insofar as Sponsor's breach of
contract for failure to make payments under Article 5 shall cause Sponsor to forfeit its rights under Article 9. The
rights and obligations of Article 8 of this Agreement shall survive termination.
Article 11 -Independent Contractor
11.1 In the performance of project,University shall be deemed to be and shall be an independent contractor.
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11.2 Neither party hereto is authorized or empowered to act as agent for the other for any purpose and shall not on
behalf of the other enter into any contract,warranty,or representation as to any matter. Neither party shall be bound
by the acts or conduct of the other.
Article 12-Indemnity
Each party assumes all risks of personal injury, bodily injury including death, and property damage caused by the
negligent acts or omissions of that party. Except as provided above, Sponsor shall fully indemnify and hold
harmless University against all claims arising out of Sponsor's use, commercialization, or distribution of
information, materials or products which result in whole or in part from the research performed pursuant to this
Agreement. Sponsor will hold University harmless from any claims arising from third party claims that the work
performed hereunder infringes third party intellectual property rights. University has no knowledge of any such
claims.
Article 13-Notices
Notices, invoices, communications, and payments hereunder shall be deemed made if given by overnight courier or
by registered or certified envelope, post prepaid, and addressed to the party to receive such notice, invoice or
communication at the address given below or such other address as may hereafter be designated by notice in writing:
If to Sponsor:
Name/Title Phone:
Address Fax:
Address Email:
City/State/Zip
If to University: Robert Killoren
Assistant Vice President for Research Phone: 814-865-3396
Office of Sponsored Programs Fax: 814-865-3377
The Pennsylvania State University Email: ospCa,.psu.edu
110 Technology Center
University Park,PA 16802
If Payment Matters: Research Accounting Phone: 814-865-7525
The Pennsylvania State University Fax: 814-865-3910
313 Rider Building Email: res-acct@psu.edu
120 South Burrowes Street
University Park,PA 16801
If Technical Issue:
PI Fred S. Cannon Phone: 814-863-8754
Title Associated Professor Fax: 814-863-7304
Campus Address 212 Sackett Email: fscl@;)su.edu
The Pennsylvania State University
City/State/Zip University Park, PA 16802
Notice given pursuant to this Article shall be effective as of the day of receipt of notice.
Article 14-Governing Law
This Agreement shall be governed and construed in accordance with the laws of the Commonwealth of
Pennsylvania,
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Article 15-Dispute Resolution
Any and all claims, disputes or controversies arising under, out of, or in connection with this Agreement, which the
parties hereto shall be unable to resolve within sixty (60) days, shall be mediated in good faith. The party raising
such dispute shall promptly advise the other party Of such claim, dispute or controversy in writing which describes
in reasonable detail the nature Of Such dispute. By not later than five (5) business days after the recipient has
received such notice of dispute,each party shall have selected for itself a representative who shall have the authority
to bind such party, and shall additionally have advised the other party in writing of the name and title of such
representative. By not later than ten (10) business days after the date of such notice of dispute, the party against
whom the dispute shall be raised shall select a mediation firm in Pennsylvania and such representatives shall
schedule a date with such firm for a mediation hearing not to exceed one (1) day in length, and less where
applicable. The parties shall enter into good faith mediation and shall share the costs equally. If the representatives
of the parties have not been able to resolve the dispute within fifteen (15) business days after such mediation
hearing, the parties shall have the right to pursue any other remedies legally available to resolve such dispute in
either the Courts of the Common Pleas of Centre County of Pennsylvania or in the United States District Court for
the Middle District of Pennsylvania,to whose jurisdiction for such purposes the University and Sponsor each hereby
irrevocably consents and submits.
Notwithstanding the foregoing, nothing in this clause shall be construed to waive any rights or timely performance
of any obligations existine,under this Agreement.
Article 16-General Provisions
16.1 Non-assignability -- The rights and obligations of the parties under this Agreement shall not be assignable
without written permission of the other party.
16.2 Severability -- If any provision hereof is held unenforceable or void, the remaining provisions shall be
enforced in accordance with their terms.
16.3 Entire Agreement -- This Agreement contains the entire and only agreement between the parties respecting
the subject matter hereof and supersedes or cancels all previous negotiations,agreements,commitments and writings
between the parties on the subject of this Agreement. Should processing of this Agreement require issuance of a
purchase order or other contractual document, all terms and conditions of said document are hereby deleted in
entirety. This Agreement may not be amended in any manner except by an instrument in writing signed by the duly
authorized representatives of each of the parties hereto.
16.4 Export Control Regulations -- Sponsor agrees that it shall comply with all applicable export control
regulations of the United States of America. Sponsor shall be responsible for obtaining all information regarding
such regulations that is necessary for Sponsor to comply with such regulations.
IN WITNESS WHEREOF, the parties hereto have caused these presents to be executed in duplicate as of the day
and year first above written.
By An Authorized 0 y By An Authorized Official of Sponsor
CITY OF REDLANDS
K7XJ U /7
Name: Susan E. Robb Name:
Senior Associate Director
Title: of Sponsored Programs Title: Sus n Peppler, Mayor Pro Tem
Date: October 1, 2003 Date: October 7, 2003
Approved hyACOR Executive Committee-11/01,,"00 Attest: Last Lpdaiud 1[,011,'2000
Page 6 Lorr)*ve' Poyzer, -,C i 'y Clerk
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