San Xxxx State University Foundation
THIS AGREEMENT is entered into and effective this 30TH day of MAR, 2000, by
and between Ramen Xxxxxxxx (hereinafter referred to as INVESTIGATOR), SAN XXXX
STATE UNIVERSITY FOUNDATION (SJSUF), XX Xxx 000000, Xxx Xxxx, XX 00000-0000,
on behalf of SAN XXXX STATE UNIVERSITY (SJSU), and ADVANCED PRECISION
TECHNOLOGY, Inc. (COMPANY), with offices at 00-X Xxxxxxxxxxxx Xxxxxx,
Xxxxxxxxx, XX, 00000.
INVESTIGATOR, as an employee of SJSU, and COMPANY will enter into this
agreement whereby they will collaborate on research relating to: DEVELOPMENT
OF A MINIATURE FLAT FINGERPRINT SENSOR (the "RESEARCH PROJECT").
Therefore, in consideration of the promises set forth herein and for other
good and valuable considerations, the parties agree as follows:
1.0 Terms of the Research Project
1.1 SJSU agrees to use reasonable efforts to perform the RESEARCH PROJECT, as
described in Appendix A hereof, under the direction and supervision of the
INVESTIGATOR for COMPANY in accordance with the terms and conditions of this
Agreement.
1.2 COMPANY agrees to pay to SJSUF for the RESEARCH PROJECT a total of $24,000
dollars, in accordance with the budget described in the attached Appendix B of
this Agreement, and COMPANY will remit such payment in accordance with the
following schedule: 1st month payment of $8,000 due upon full execution of
contract and will cover the 1st month of contract; full payments of $8,000 are
due on the 1st of the month thereafter and required for continuance of
project.
1.3 If this Agreement is terminated for any reason prior to the termination
date cited in Article 8.1 below, COMPANY shall reimburse SJSUF for the actual
costs incurred by SJSUF for the RESEARCH PROJECT through the date of
termination, including those costs necessary to implement the early
termination of this Agreement.
1.4 If this Agreement is terminated early by COMPANY pursuant to Article 8.2
hereof, costs reimbursed by COMPANY shall include, in addition to the costs
described in Article 1.3, costs incurred by SJSUF as a result of non-
cancellable obligations which may extend beyond the date of such early
termination.
2.0 Information Disclosure
2.1 To facilitate the RESEARCH PROJECT anticipated hereunder, each party
agrees to disclose to the other relevant information regarding the RESEARCH
PROJECT. Each party agrees to keep the other informed of the conduct of the
RESEARCH PROJECT and results thereof in a timely manner.
Page 1 of 7
3.0 Confidential Information
3.1 The parties agree to receive, hold in confidence and not use for purposes
other than those set forth in this Agreement, any information disclosed to
them by the other party and indicated as being "Confidential Information."
Each party shall take reasonable steps to protect the confidentiality of the
other party's information. Further, the parties understand and agree that all
the results of the RESEARCH PROJECT conducted under this Agreement shall be
treated by the parties as secret and confidential subject to mutual agreement
to the contrary. With respect to information disclosed by one party to the
other, information shall not be deemed Confidential Information and therefore
not subject to the obligations of non-disclosure set forth herein to the
extent that such information:
(a) at the time of disclosure is generally available to the public or
known by the recipient of the CONFIDENTIAL INFORMATION, in the context
disclosed by the disclosing party as evidenced by prior written
documentation; or
(b) subsequent to disclosure becomes generally available to the public in
the context disclosed; or
(c) is disclosed by another to a receiving party not in violation of any
rights and/or obligations to a disclosing party.
The obligations of confidentiality shall automatically expire three (3) years
after the expiration or termination of this Agreement.
4.0 Intellectual Property Ownership
4.1 Inventions or discoveries ("Intellectual Property") whether or not
patentable which may arise from the RESEARCH PROJECT and which are made solely
by an employee or agent of COMPANY shall be owned by COMPANY. Inventions or
discoveries whether or not patentable which are made jointly by an employee or
agent of COMPANY and SJSU shall be jointly owned by COMPANY and SJSU.
Inventions or discoveries whether or not patentable which may arise from the
RESEARCH PROJECT and which are made solely by an employee or agent of SJSU
shall be owned by SJSU. In the event of a joint patentable invention, the
parties agree to share equally in the costs of obtaining and maintaining such
patent(s), U.S. and foreign. The parties agree to cooperate in the preparation
and execution of documents necessary to effect such patent filings.
4.2 Inventions or discoveries ("Intellectual Property") shall not include:
(a) that which is generally available to the public or generally known in
the context disclosed by an inventing or discovering party as evidenced by
prior written documentation and/or publications extant at the time of
disclosure of the purported invention or discovery; or
(b) subsequent to the disclosure, the purported invention or discovery,
same becomes generally available for use by the public in the context
disclosed; or
(c) is that which is invented or discovered by another not in violation of
any rights and/or obligations of a party to this agreement;
4.3 Upon the assignment of serial number by the U. S. Patent Office to any
patent application(s) covering devices or techniques developed under this
contract and provided title thereto is assigned to the COMPANY, COMPANY will
provide an assignment bonus, in the form of a transfer of 250,000 shares of
COMPANY investment common stock for each such assigned application to SJSUF.
Page 2 of 7
5.0 Commercialization
5.1 The parties agree that in the event the RESEARCH PROJECT is deemed
successful, COMPANY shall have the first right to negotiate the terms of a
license to commercially exploit any and all results of the RESEARCH PROJECT,
including but not limited to, patents, inventions, processes and any other
novel or valuable information reflected in any medium which arises from the
RESEARCH PROJECT. Notwithstanding the foregoing, SJSU and its affiliates
retain a royalty-free license to make, have made, or use licensed product in
connection with its own research, clinical and educational programs.
5.2 To the extent that SJSU is the sole and/or joint owner of Intellectual
Property, whether or not patentable or patented, at any time during and as a
direct result of this Agreement, at the request of COMPANY, SJSU agrees to
grant COMPANY the right to negotiate an exclusive worldwide license under all
such Intellectual Property to commercially exploit the inventions embodied
therein, whether patented or not, at terms to be negotiated at that time
taking into account the contributions of the COMPANY and the standards of the
industry.
6.0 Independent Collaborators
6.1 The parties will be serving under this Agreement as independent
collaborators. This Agreement shall not be deemed to establish a joint venture
or partnership between SJSU and COMPANY. SJSU and COMPANY warrant and
represent respectively that each is under no obligation inconsistent with the
provisions of this Agreement and that each will not enter into any agreement
with a third party, the terms of which may be inconsistent with the provisions
of this Agreement.
7.0 Public Disclosure, Publication
7.1 COMPANY and SJSU agree that each will not use the name of the other party
in publicity or other public disclosure in a manner which implies an
endorsement by the other party of any product or project. Provided that no
proprietary information is contained in such announcement or statement, SJSU
and COMPANY shall be permitted, upon first seeking the consent of the other
party, to announce and disclose the existence of this Agreement as a means of
explaining the activities of their respective entities. Such consent shall not
be unreasonably withheld.
7.2 SJSU and COMPANY shall have the right to publish scientific articles
regarding the RESEARCH PROJECT hereunder, provided that such publication does
not violate the confidentiality provisions herein and/or publication does not
interfere or is not inconsistent with the pursuit of patent rights.
Publication rights are subject to prior review and written consent within
thirty (30) days of the other party, which consent will not be unreasonably
withheld.
8.0 Term and Termination
8.1 Unless earlier terminated as provided elsewhere herein, this Agreement
shall become effective upon execution of this document and shall terminate 3
months from date of execution unless a subsequent time extension, supplement,
addition, continuation or renewal is mutually agreed upon in writing between
the parties. In any event, the confidentiality obligation shall remain in
effect for the term stated herein and in addition, paragraphs 3.0, 4.0, 5.0,
7.0 and 10.0 shall survive the termination or expiration of this Agreement.
Page 3 of 7
8.2 Either party may terminate this Agreement by giving thirty (30) days prior
written notice thereof to the other party. Termination of this Agreement,
however achieved, shall not release the parties from their rights and
obligations under Articles 1.0, 2.0, 3.0, 4.0, and 6.0.
9.0 Assignment
9.1 This Agreement, nor any rights or obligations hereunder, may not be
assigned by either party without the written consent of the other.
10.0 Governing Law
10.1 The validity and interpretation of this Agreement and the legal relations
of the parties shall be governed by the laws of the State of California.
11.0 Notices
11.1 All notices required by this agreement shall be by written instrument
executed by the parties hereto and shall be directed to the following
individuals:
For the University: Xxxxx Xxxxx
San Xxxx State University Foundation
XX Xxx 000000
Xxx Xxxx, XX. 00000-0000
000-000-0000
For the INVESTIGATOR: Ramen Xxxxxxxx
San Xxxx State University
Department of Physics
Xxx Xxxxxxxxxx Xxxxxx
Xxx Xxxx, XX 00000-0000
000-000-0000
For COMPANY: Xxxxx Xxxxxxxxx
Advanced Precision Technology, Inc.
00-X Xxxxxxxxxxxx Xxxxxx
Xxxxxxxxx, XX 00000
000-000-0000
12.0 Liability and Insurance
12.1 Each party hereto agrees to be responsible and assume liability for its
own wrongful or negligent acts or omissions or those of its officers, agents
or employees to the full extent allowed by law. Each party warrants and
represents that it has adequate liability insurance for the protection of
itself and its officers, employees, and agents, while acting within the scope
of their employment by the party.
Page 4 of 7
13.0 Entire Agreement
13.1 This Agreement sets forth the entire agreement and understanding among
the parties as to the subject matter hereof, and none of the terms of this
Agreement shall be amended or modified except in writing signed by an officer
of both parties.
The foregoing is acknowledged, understood and agreed to as evidenced by
execution by an authorized representative of the parties in the spaces below.
San Xxxx State University Foundation:
By: /s/ Xxxxx Xxxxx 3/29/00
_______________________________________ _________________
Xxxxx Xxxxx Date
Director, Office of Sponsored Programs
COMPANY:
By: /s/ Xxxxx X. Xxxxxxxxx 3/30/00
_______________________________________ ________________
Xxxxx Xxxxxxxxx Date
President,
Advanced Precision Technology, Inc.
INVESTIGATOR
By: /s/ Ramen Xxxxxxxx 3/28/00
__________________________________________ ________________
Ramen Xxxxxxxx Date
Professor of Physics
Page 5 of 7
Appendix A
Research Plan for Flat Fingerprint Sensor
High resolution fiber optic fingerprint sensors are usually tapered to match
the size of the available CCD. Unfortunately tapering adds bulk to the sensor.
Xxxxxx et. al. (U. S. Patent # 5,812,252, page 44) suggested a flat sensor in
the form of a parallelogram which can be directly glued to a large CCD. This
sensor, due to the special illumination geometry, would still be about an inch
thick. Another drawback is that the refractive index of the fiber optic
conduit has to be matched with the refractive index of the glue. Without
proper matching, only a minimal amount of light will reach the detector due to
internal reflection at the fiber-glue interface.
It is proposed to use reasonable best efforts to make the sensor compact
similar in nature to those disclosed by Browker, et. al. using different
illumination techniques. Also, research will be done to devise a method of
transferring maximum amount of light to the detector.
Page 6 of 7
Appendix B
Project Budget
Personnel
Ramen Xxxxxxxx, PI
90 hrs $ 18,140
Fringe Benefits
92% $ 363
Facilities and Administrative Costs*
80% of project off-campus @ 26% $ 3,962
20% of project on-campus @ 47% $ 1,535
Total Costs $ 24,000
*The San Xxxx State University Foundation is a self-supported non-profit
corporation established to advance the mission of the San Xxxx State
University in its research and other education-related activities. F&A
services are provided by the Foundation to externally funded projects and
include facility use and related costs, proposal and contract management,
technology commercialization, financial accounting, payroll, procurement, and
human resource administration.
Page 7 of 7
Amendment 1
to
San Xxxx State University Foundation
THIS amendment to the Prime AGREEMENT entered into 30th day of March, 2000, by
and between Ramen Xxxxxxxx (hereinafter referred to as INVESTIGATOR), SAN XXXX
STATE UNIVERSITY FOUNDATION (SJSUF), XX Xxx 000000, Xxx Xxxx, XX 00000-0000,
on behalf of SAN XXXX STATE UNIVERSITY (SJSU), and ADVANCED PRECISION
TECHNOLOGY, Inc. (COMPANY), with offices at 00-X Xxxxxxxxxxxx Xxxxxx,
Xxxxxxxxx, XX, 00000.
INVESTIGATOR, as an employee of SJSU, and COMPANY will enter into this
agreement whereby they will collaborate on research relating to: DEVELOPMENT
OF A MINIATURE FLAT FINGERPRINT SENSOR (the "RESEARCH PROJECT").
Therefore, in consideration of the promises set forth herein and for other
good and valuable considerations, the parties agree as the amendment as
follows:
1.0 Terms of the Research Project
1.2A. COMPANY paid SJSUF for the RESEARCH PROJECT a total of $24,000 dollars
for Prime Research Agreement, in accordance with the budget described in the
attached Appendix B of this Agreement.
1.2B COMPANY agrees to pay to SJSUF for RESEARCH PROJECT a total of $27,000
dollars for the period 7/1/00 -12/31/00, in accordance with the budget
described in the attached Appendix C of this Agreement, and COMPANY will remit
such payment in accordance with the following schedule: 1st month payment of
$9,000 due upon full execution of contract and will cover the 1st month of
contract; full payments of $9,000 are due on 9/l/00 and 10/1/00 and are
required for continuance of project.
No other amendments to this Subcontract shall be recognized. All previous
articles not modified in this amendment shall remain the same.
Page 1 of 3
The foregoing is acknowledged, understood and agreed to as evidenced by
execution by an authorized representative of the parties in the spaces below,
and the parties have executed this Amendment to Research Agreement as of the
date thereof.
San Xxxx State University Foundation:
By: /s/ Xxxxx Xxxxx 8/21/00
_________________________________________________ ___________
Xxxxx Xxxxx Date
Director, Office of Sponsored Programs
COMPANY:
By: /s/ Xxxxx Xxxxxxxxx 8/23/00
_________________________________________________ ___________
Xxxxx Xxxxxxxxx Date
President, Advanced Precision Technology, Inc.
INVESTIGATOR:
By: /s/ Ramen Xxxxxxxx 8/3/2000
_________________________________________________ ___________
Ramen Xxxxxxxx Date
Professor of Physics
Page 2 of 3
Appendix C
Project Budget
7/1/00-12/31/00
Amendment 1
_______________
Personnel
Ramen Xxxxxxxx, PI -90 hrs $ 17,816
Student Assistant
$15/hr x. 198.5 hrs (7/l/00-9/30/00) $ 3,000
Facilities and Administrative Costs*
80% of project off-campus @ 26% $ 4,457
20% of project on-campus @ 47% $ 1,727
Total Costs $ 27,000
*The San Xxxx State University Foundation is a self-supported non-profit
corporation established to advance the mission of the San Xxxx State
University in its research and other education-related activities. F&A
services are provided by the Foundation to externally funded projects and
include facility use and related costs, proposal and contract management,
technology commercialization, financial accounting, payroll, procurement, and
human resource administration.
Page 3 of 3
