Work for Others Agreement No. ERD-99-1731
Between
LOCKHEED XXXXXX ENERGY RESEARCH CORPORATION
Operating Under Prime Contract No.DE-ACO5-96OR22464 for the
U. S. Department of Energy
And
Theragenics Corporation
The obligations of the above-identified DOE Contractor shall apply to any
successor in interest to said Contractor continuing the operation of the DOE
facility involved in this Work for Others Agreement.
Article I. PARTIES TO THE AGREEMENT
The U. S. Department of Energy Contractor, LOCKHEED XXXXXX ENERGY RESEARCH
CORPORATION (hereinafter referred to as the "Contractor") has been requested by
Theragenics Corporation (hereinafter referred to as the "Sponsor") to perform
the work set forth in each Task Order, attached hereto as Appendix A. It is
understood by the Parties that, except for the intellectual property provisions
of this Agreement, the Contractor is obligated to comply with the terms and
conditions of its M&O contract with the United States Government (hereinafter
called the "Government") represented by the United States Department of Energy
(hereinafter called the "Department" or "DOE") when providing goods, services,
products, processes, materials, or information to the Sponsor under this
Agreement.
Article II. TERM OF THE AGREEMENT: MULTIPLE TASK ORDERS: ADMINISTRATION
------------------------------------------------------------
(DEVIATION)
-----------
A. The estimated period of performance will be set forth in each Task Order.
The term of this Agreement shall be effective as of the latter date of
(1) the date on which it is signed by the last of the Parties thereto, or
(2) the date on which it is approved by DOE.
B. This is a master Work for Others Agreement that contemplates the issuance
of an indefinite number of Task Orders pursuant to Attachment 1,
Statement of Work to the Agreement. The individual Task Orders are set
forth in Appendix A and approved by DOE. The Contractor has further
agreed to enter into additional Task Orders consistent with the terms
of the Statement of Work including the estimated costs therein, if and
when so requested by Sponsor, provided that Sponsor's options to enter
into these additional Statement of Work will expire if not exercised by
written notice to Contractor on or before [Confidential Treatment
Requested]. It is the intention of the Parties to extend the Agreement
throughout the operating life of the High Flux Isotope Reactor and the
Contractor has initiated the procedure for obtaining approval of
such an extension. Contractor acknowledges that Sponsor is investing
in the initial Task Order as well as other initiatives based on
Contractor's commitment to perform the additional Task Orders specified
above as well, and Contractor agrees that it shall perform these
additional Task Orders, subject to the terms of this Agreement, if
requested by Sponsor,[Confidential Treatment Requested] is incompatible
with the DOE's mission or [Confidential Treatment Requested].
C. The Contractor shall use its best efforts to provide the services under
each Task Order as described therein.
D. The Principal Investigator(s) and other key personnel to be assigned to
each Task Order shall be specified in each Task Order, and shall, except
in case of events such as illness, resignation, other employment actions,
conflicts of interest or if DOE determines that such personnel are needed
to perform DOE mission or programmatic requirements, be available to the
specific projects listed in the Task Order. If any of such personnel
become unavailable as stated above, Contractor will use its best efforts
to replace them promptly with other personnel of comparable
qualifications.
E In addition to the work to be performed under the Task Orders, in
accordance with DOE Order 481.1, this Agreement provides for access
to highly specialized or unique DOE facilities, that is, the High
Flux Isotope Reactor ("HFIR") as follows. Neither LMER nor DOE is
obligated hereunder to maintain the HFIR in operation or to keep it
operating any specified percentage of the time, but as long as the
HFIR is in operation and Sponsor has a continuing need for its use,
Sponsor shall have the following access rights: (1) [Confidential
Treatment Requested] (2) Sponsor shall have the exclusive right to
[Confidential Treatment Requested] to irradiate material, which right
will be exercised through Contractor under this Agreement, as
contemplated by the Statement of Work. DOE may, however,
[Confidential Treatment Requested], on terms to be mutually agreed,
for [Confidential Treatment Requested], including production of
isotopes for sale as long as the isotope is not competitive with the
Sponsor's mission. (3) Sponsor will be required to pay for irradiation
of target material [Confidential Treatment Requested] in accordance
with DOE Accounting Policy. (4) Sponsor may [Confidential Treatment
Requested] to irradiate palladium for research or for medical or
commercial use for its own account or for sale to third parties, subject
to all applicable laws and regulations governing the production of
isotopes; and (5) [Confidential Treatment Requested].
Article III. COSTS (DEVIATION)
-----------------
A. The estimated cost for the work to be performed under this Agreement will
be set forth in each Task Order.
B. The Contractor has no obligation to continue or complete performance of
the work on any Task Order issued pursuant to this agreement at a cost in
excess of the estimated cost, including any subsequent amendment set forth
in each Task Order, except as provided in paragraph C below.
C. The Contractor agrees to provide at least 30 days' notice to the Sponsor
if the actual cost to complete performance will exceed the estimated cost
set forth in each Task Order. If so requested by the Sponsor, the
Contractor will provide its best estimate of the additional cost,
and of the time needed, for completion, or for completion to the next
milestone in the Task Order, if applicable. If upon receipt of
this information Sponsor elects to continue funding the effort,
the Task Order shall be amended to appropriately increase the budget
for the project and, if applicable, to extend the milestone dates, and
the Contractor shall continue the work so long as Sponsor provides the
needed additional funding in accordance with the principles of Article
IV. Nothing shall, however, require the Contractor to continue
work if the Contractor concludes in good faith that the objective
of the work will not be reasonably attainable.
Article IV. FUNDING AND PAYMENT (DEVIATION)
--------------------------------
A. The Sponsor shall provide sufficient funds in advance to reimburse the
Contractor for costs to be incurred in performance of the work described
in this Agreement, and the Contractor shall have no obligation to
perform in the absence of adequate advance funds. If the estimated
period of performance for a given Task Order exceeds 90 days or the
estimated cost exceeds $25,000, the Sponsor may, advance funds
incrementally. In such a case, the Contractor will initially invoice
the Sponsor in an amount sufficient to permit the work to proceed for
ninety (90) days and thereafter invoice the Sponsor monthly so as to
maintain approximately a 90-day period that is funded in advance.
Payment shall be made directly to the Contractor as specified in
Appendix A. Upon termination or completion, any excess funds shall be
refunded by the Contractor to the Sponsor.
B. The Contractor shall maintain such records as are normally maintained for
DOE-supported work. The records of the Contractor shall not be subject to
audit by the Sponsor; however, the Contractor shall make available upon
request of the Sponsor, where reasonably necessary for the Sponsor to
evaluate its expenditures or where otherwise considered appropriate, cost
data and other documents concerning the services performed under this
Agreement, together with any related findings and all reasonably
necessary explanations or discussions.
Article V. SOURCE OF FUNDS
---------------
The Sponsor hereby warrants and represents that, if the funding it brings to
this Agreement has been secured through other agreements, such other agreements
do not have any terms and conditions (including intellectual property) which
conflict with the terms of this Agreement.
Article VI. PROPERTY (DEVIATION)
--------------------
Unless the Parties otherwise agree in writing, all equipment produced or
acquired with funds provided by the Sponsor, shall be delivered to the Sponsor
or otherwise disposed of as instructed by the Sponsor at the Sponsor's expense.
Article VII. PUBLICATION MATTERS (DEVIATION)
-------------------------------
The publishing Party shall provide the other Party a sixty (60)-day period in
which to review and submit comments upon proposed publications, which either
disclose technical developments and/or research findings generated in the course
of this agreement, or identify or contain Proprietary Information (as defined in
paragraph A.2 of Article XV). The publishing Party shall not publish or
otherwise disclose Proprietary Information identified by the other Party, except
as required by law or agreed to by both Parties.
Article VIII. LEGAL NOTICE (DEVIATION)
-------------------------
The Parties agree that the following legal notice shall be affixed to each
report furnished to the Sponsor under this Agreement and to any report prepared
by Contractor under this Agreement which may be distributed by the Sponsor:
"DISCLAIMER NOTICE
------------------
This report was prepared by LOCKHEED XXXXXX ENERGY RESEARCH CORPORATION
(LMER) on behalf of the U. S. Department of Energy (DOE), as an account
of work sponsored by Theragenics Corporation. Neither LMER, DOE, the
U. S. Government, or any person acting on their behalf: (a) makes
any warranty or representation, express or implied, with respect to the
information contained in this report; or (b) assumes any liabilities
with respect to the use of, or damages resulting from the use of any
information contained in the report"
Article IX. DISCLAIMER; BEST EFFORTS (DEVIATION)
-------------------------------------
THE GOVERNMENT AND THE CONTRACTOR MAKE NO EXPRESS OR IMPLIED WARRANTY AS TO THE
CONDITIONS OF THE RESEARCH OR ANY INTELLECTUAL PROPERTY, GENERATED INFORMATION,
OR PRODUCT MADE OR DEVELOPED UNDER THIS WORK FOR OTHERS AGREEMENT, OR THE
OWNERSHIP, MERCHANTABILITY, OR FITNESS FOR A PARTICULAR PURPOSE OF THE RESEARCH
OR RESULTING PRODUCT, THAT THE GOODS, SERVICES, MATERIALS, PRODUCTS, PROCESSES,
INFORMATION, OR DATA TO BE FURNISHED HEREUNDER WILL ACCOMPLISH INTENDED RESULTS
OR ARE SAFE FOR ANY PURPOSE INCLUDING THE INTENDED PURPOSE, OR THAT ANY OF THE
ABOVE WILL NOT INTERFERE WITH PRIVATELY OWNED RIGHTS OF OTHERS. NEITHER THE
GOVERNMENT NOR THE CONTRACTOR SHALL BE LIABLE FOR SPECIAL, CONSEQUENTIAL, OR
INCIDENTAL DAMAGES ATTRIBUTED TO SUCH RESEARCH OR RESULTING PRODUCT,
INTELLECTUAL PROPERTY, GENERATED INFORMATION, OR PRODUCT MADE OR DELIVERED UNDER
THIS WORK FOR OTHERS AGREEMENT.
Subject to the foregoing, Contractor represents that Contractor shall, within
sixty days after execution of this agreement, use its best efforts to determine
whether the Contractor's Office of Technology Transfer or the principal
investigators named in the initial Task Orders have any actual knowledge that
any of the work to be done under this agreement, or any of the goods, services,
materials, products, processes, information, or data to be furnished hereunder
as indicated in Attachment 1, the Statement of Work, will infringe or is claimed
to infringe, any proprietary or intellectual property rights of third parties.
As additional Task Orders are entered into hereunder, the Contractor will make
similar inquiries of the principal investigators named therein as to actual
knowledge of infringement or claims of infringement, and will, if appropriate,
make additional investigation as to infringement matters within the Office of
Technology Transfer in light of the specific scopes of work agreed to for those
new Task Orders. If, prior to or during the performance of a task order
Contractor learns of any such infringement or claim thereof relating to that
Task Order, Contractor will promptly notify sponsor. If during the term hereof
Sponsor raises specific questions related to possible claims of infringement,
Contractor will, upon request, use its best efforts to determine what actual
knowledge Contractor's Office of Technology Transfer or applicable principal
investigators have that is pertinent to the matter in question, and will
disclose that pertinent information to Sponsor.
The Contractor shall use its best reasonable efforts to provide the services
under each Task Order as described therein. Neither the Government, DOE,
Contractor, nor persons acting on their behalf will be responsible, irrespective
of causes, for failure:
(1) to perform the work,
(2) provide the services, or
(3) furnish the materials or information hereunder
at any particular time or in any specific manner. If at any time Sponsor
believes that Contractor is not using its best reasonable efforts in the
performance the work hereunder or is performing contrary to this agreement or a
Task Order, or if the Sponsor has any other problem with the performance of the
Contractor hereunder, Sponsor shall be entitled to bring the problem to the
attention of the Assistant Manager for Laboratories of the DOE Oak Ridge
Operations Office (the "Assistant Manager"). The Assistant Manager shall hear
the matter within a reasonable time, in a manner deemed appropriate by the
Assistant Manager, and the Contractor agrees to comply with any decision that
the Assistant Manager may, in his sole discretion, issue to the Contractor with
respect to the matter. This right of Sponsor to present a matter for decision to
the Assistant Manager is in addition to, and not in lieu of, Sponsor's right to
seek alternate dispute resolution under Article XX, and any other rights of
Sponsor under this agreement, but nothing in this Article creates any
enforceable right against DOE.
Article X. GENERAL INDEMNITY (DEVIATION)
------------------------------
The Sponsor agrees to indemnify and hold harmless the Government, the
Department, the Contractor and persons acting on their behalf from all
liability, including costs and expenses incurred, to any person, including the
Sponsor, for injury to or death of persons or other living things or injury to
or destruction of property arising out of the performance of the Agreement by
the Government, the Department, the Contractor, or persons acting on their
behalf, or arising out of the use of the services performed, materials supplied,
or information given hereunder by any person including the Sponsor. The
foregoing indemnity shall not, however, apply to liability directly resulting
from the fault or negligence of the Government, the Department, the Contractor,
or persons acting on their behalf.
Article XI. PRODUCT LIABILITY INDEMNITY (DEVIATION)
---------------------------------------
Except for any liability resulting from any willful misconduct or negligent acts
or omissions of the Government or the Contractor, the Sponsor agrees to
indemnify the Government and defend Contractor against any claim or proceeding
and pay all damages, costs, and expenses, including attorney's fees, arising
from personal injury or property damage occurring as a result of the making,
using, or selling of a product, process, or service by or on behalf of the
Sponsor, its assignees, or licensees, which was derived from the work performed
under this Work for Others Agreement. In respect to this Article, neither the
Government nor the Contractor shall be considered assignees or licensees of the
Sponsor, as a result of reserved Government and Contractor rights. The indemnity
set forth in this paragraph shall apply only if the Sponsor shall have been
informed as soon and as completely as practical by the Contractor and/or the
Government of the action alleging such claim and shall have been given an
opportunity, to the maximum extent afforded by applicable laws, rules, or
regulations, to participate in and control its defense, and the Contractor
and/or Government shall have provided all reasonably available information and
reasonable assistance requested by the Sponsor. No settlement of an action
against the Contractor and/or Government for which the Sponsor would be
responsible shall be made without the consent of the Sponsor and of the
Contractor and the Government (whenever either or both of the latter two parties
are involved), unless required by final decree of a court of competent
jurisdiction.
Article XII. INTELLECTUAL PROPERTY INDEMNITY - LIMITED (DEVIATION)
-----------------------------------------------------
The Sponsor shall indemnify the Government and the Contractor and their
officers, agents, and employees against liability, including costs, for
infringement of any United States patent, copyright, or other intellectual
property arising out of any acts required or directed by the Sponsor to be
performed under this Agreement to the extent such acts are not already performed
at the facility. Such indemnity shall not apply to a claimed infringement which
is settled without the consent of the Sponsor unless required by a court of
competent jurisdiction. Sponsor shall be entitled to notice, the opportunity to
defend and control the defense, and cooperation from the Contractor and the
Government as more fully described in Article XI.
Article XIII. NOTICE AND ASSISTANCE REGARDING PATENT AND COPYRIGHT INFRINGEMENT
-----------------------------------------------------------------
The Sponsor shall report to the Department and the Contractor, promptly and in
reasonable written detail, each claim of patent or copyright infringement based
on the performance of this Agreement of which the Sponsor has knowledge. The
Sponsor shall furnish to the Department and the Contractor, when requested by
the Department or the Contractor, all evidence and information in the possession
of the Sponsor pertaining to such claim.
Article XIV. PATENT RIGHTS - USE OF FACILITIES (CLASS WAIVER) (DEVIATION)
------------------------------------------------------------
1. Definitions
-----------
A. "Subject Invention" means any invention or discovery of the
Contractor, or, to the extent the Sponsor is performing any work
under this Agreement, of the Sponsor, conceived in the course of
or under this Agreement, or, in the case of an invention
previously conceived by the Sponsor, first actually reduced to
practice in the course of or under this Agreement. "Subject
Invention" includes any art, method, process, machine,
manufacture, design or composition of matter, or any new and
useful improvement thereof, or any variety of plant, whether
patented or unpatented under the Patent Laws of the United
States of America or any foreign country.
B. "Patent Counsel" means the DOE Patent Counsel assisting the
procuring activity which has the administrative responsibility
for the facility where the work under this Agreement is to be
performed.
2. Rights of the Sponsor
---------------------
Election to retain rights
Subject to the provisions of paragraph 3.B. with respect to
any Subject Invention reported and elected in accordance with
paragraph 4. of this clause, the Sponsor may elect to obtain
the entire right, title, and interest throughout the world to
each Subject Invention and any patent application filed in any
country on a Subject Invention and in any resulting patent
secured by the Sponsor. Where appropriate, the filing of
patent applications by the Sponsor is subject to DOE and other
Government security regulations and requirements.
Minimum License
The Sponsor reserves an irrevocable, nonexclusive, paid-up
license in each patent application filed in any country on a
subject invention and any resulting patent in which the
Sponsor does not elect to take title or in which the
Government acquires title. The license shall extend to the
Sponsor's domestic subsidiaries, and affiliates, if any,
within the corporate structure of which the Sponsor is a part
and shall include the right to grant sublicenses of the same
scope as the Sponsor was legally obligated to do so at the
time this agreement was entered into. The license shall be
transferable only with the approval of DOE except when
transferred to the successor of that part of the Sponsor's
business to which the invention pertains.
3. Rights of Contractor and Government
-----------------------------------
A. Assignment to either the Contractor or the Government
--------------------------------------------------------------
The Sponsor agrees to assign to either the Contractor
or the Government, as requested by the Contractor,
the entire right, title, and interest in any country
to each Subject Invention of the Sponsor and to each
Subject Invention of the Contractor, where the
Sponsor:
(1) does not elect pursuant to this clause to
retain such rights; or
(2) elects to obtain title to a Subject Invention
pursuant to paragraph 2. but fails to have a
patent application filed in that country on the
Subject Invention or decides not to continue
prosecution or not to pay any maintenance fees
covering the invention.
B. Terms and Conditions of Waived Rights
(1) To preserve the Contractor's and the
Government's residual rights to Subject
Inventions, and in patent applications and
patents on Subject Inventions, the Sponsor
shall take all actions in reporting, electing,
filing on, prosecuting, and maintaining
invention rights promptly, but in any event, in
sufficient time to satisfy domestic and foreign
statutory and regulatory time requirements, or,
if the Sponsor decides not to take appropriate
steps to protect the invention rights, it shall
notify the Contractor in sufficient time to
permit either the Contractor or the Government
to file, prosecute, and maintain patent
applications and any resulting patents prior to
the end of such domestic or foreign statutory
or regulatory time requirements.
(2) The Sponsor shall convey or ensure the
conveyance of any executed instruments
necessary to vest in either the Contractor or
the Government the rights set forth in this
clause.
(3) With respect to any Subject Invention in which
the Sponsor obtains title, the Sponsor hereby
grants to the Government a non-exclusive,
nontransferable, irrevocable, paid-up license
to practice or have practiced by or on
behalf of the United States the Subject
Invention throughout the world.
(4) The Sponsor shall provide the Government a copy
of any patent application filed on a Subject
Invention within 6 months after such
application is filed, including its serial
number and filing date.
(5) Preference for U.S. Industry. Notwithstanding
any other provision of this clause, the Sponsor
agrees that neither it nor any assignee will
grant to any person the exclusive right to use
or sell any Subject Invention in the United
States unless such person agrees that any
products embodying the Subject Invention or
produced through the use of the Subject
Invention will be manufactured substantially in
the United States. However, in individual
cases, the requirement for such an agreement
may be waived by DOE upon a showing by the
Sponsor or its assignee that reasonable but
unsuccessful efforts have been made to grant
licenses on similar terms to potential
licensees that would be likely to manufacture
substantially in the United States or that
under the circumstances domestic manufacture is
not commercially feasible.
(6) March-In Rights. The Sponsor agrees that with
respect to any Subject Invention of the
Contractor in which it has acquired title, the
DOE shall retain the right to require the
Sponsor to grant a responsible applicant a
nonexclusive, partially exclusive, or exclusive
license to use the Subject Invention in any
field of use, on terms that are reasonable
under the circumstances, or if the Sponsor
fails to grant such a license, to grant the
license itself. DOE may exercise this right
only in exceptional circumstances and only if
DOE determines that:
(a) the action is necessary to meet health or
safety needs that are not reasonably
satisfied by the Sponsor; or
(b) the action is necessary to meet the
requirements for public use specified by
Federal regulations and such requirements
are not reasonably satisfied by the
Sponsor; or
(c) such action is necessary because a
licensee of the exclusive right to use or
sell any Subject Invention in the United
States is in breach of the agreement
required by paragraph 3.B.(5).
(7) The Sponsor agrees to refund any amounts
received as royalty charges on any Subject
Invention in procurement by or on behalf of the
Government and to provide for that refund in
any instrument transferring rights to any party
in the invention.
(8) The Sponsor agrees to include, within the
specification of any United States patent
applications and any patent issuing thereon
covering a Subject Invention, the following
statement. "The Government has rights in this
invention pursuant to
(specify this underlying Agreement)."
4. Invention Identification, Disclosures, and Reports
---------------------------------------------------
A. The Sponsor shall furnish the Patent Counsel a written
report containing full and complete technical information
concerning each Subject Invention it makes within 6 months
after conception or first actual reduction to practice,
whichever occurs first, in the course of or under this
Agreement, but in any event prior to any on sale, public
use, or public disclosure of such invention known to the
Sponsor. The report shall identify the contract and inventor
and shall be sufficiently complete in technical detail and
appropriately illustrated by sketch or diagram to convey to one
skilled in the art to which the invention pertains a clear
understanding to the extent known at the time of disclosure,
of the nature, purpose, operation, and to the extent
known, the physical, chemical, biological, or electrical
characteristics of the invention. The report should also
include any election of invention rights under this clause.
When an invention is reported under this paragraph
4.A, it shall be presumed to have been made in the manner
specified in Section (a)(1) and (2) of 42 USC 5908.
B. The Contractor shall report Subject Inventions it makes in
accordance with the procedures set forth in contract
DE-AC05-96OR22464. In addition, the Contractor shall disclose
to the Sponsor at the same time as disclosure to the Department
any Subject Inventions made by the Contractor under this
Agreement and the Sponsor shall notify the Department within
6 months of receipt of such disclosure by the Sponsor of any
election of patent rights under this clause. With respect
to Subject Inventions of which Contractor personnel are
inventors, Contractor shall execute and deliver, or as
appropriate, cause the inventors to execute and deliver,
to Sponsor any assignments or other instruments reasonably
necessary to the filing of patent applications by
Sponsor, or to the perfection and confirmation of Sponsor's
title in the Subject Invention.
C. Requests for extension of time for election under subparagraphs
A and B may be granted by Patent Counsel for good cause shown in
writing.
5. Limitation of Rights
----------------------
Nothing contained in this patent rights clause shall be deemed to give
the Government any rights with respect to any invention other than a
Subject Invention except as set forth in the Facilities License of
paragraph 6.
6. Facilities License
------------------
In addition to the rights of the Parties with respect to inventions or
discoveries conceived or first actually reduced to practice in the
course of or under this Agreement, the Sponsor agrees to and does
hereby grant to the Government an irrevocable, non-exclusive, paid-up
license in and to any inventions or discoveries regardless of when
conceived or first actually reduced to practice or acquired by the
Sponsor, which at any time, through completion of this Agreement, are
owned or controlled by the Sponsor and are incorporated in the facility
as a result of this Agreement to such an extent that the facility is
not restored to the condition existing prior to the Agreement (1) to
practice or to have practiced by or for the Government at the facility,
and (2) to transfer such license with the transfer of the facility. The
acceptance or exercise by the Government of the aforesaid rights and
license shall not prevent the Government at any time from contesting
the enforceability, validity, or scope of, or title to, any rights or
patents herein licensed.
7. Early Termination of Agreement
------------------------------
The terms and conditions of this clause shall survive the Agreement, in
the event that the Agreement is terminated before completion of the
Statement of Work.
Article XV. RIGHTS IN TECHNICAL DATA - USE OF FACILITY
(DEVIATION)
A. Definitions
1. "Generated Information" means information produced in the
performance of this Agreement.
2. Proprietary Information" means information which is developed at
private expense and (1) trade secrets or (2) commercial or
financial information which is privileged or confidential under
the Freedom of Information Act (5 USC 552 (b)(4)). The term
includes information communicated orally or by other means,
if the information is designated at the time of disclosure or
thirty (30) days thereafter as Proprietary Information, or if
it is identical to of documentary information designated as
Proprietary Information, or if the recipient knows that it
embodies Proprietary Information previously submitted in
documentary form and appropriately designated as such.
Proprietary Information includes Generated Information which
is categorized and marked as Proprietary Information by
Sponsor or by Contractor at Sponsor's direction. Generated
Information which has not yet been categorized by Sponsor as to
whether it is Proprietary Information will be treated as
Proprietary Information of the Sponsor pending such
categorization. Information shall be deemed appropriately
marked as Proprietary Information if it is marked as
"Proprietary Information" or marked with words of manifestly
similar meaning such as "Confidential", "Secret",
"Trade Secret" or "Proprietary".
3. "Unlimited Rights" means the right to use, disclose, reproduce,
prepare derivative works, distribute copies to the public, and
perform publicly and display publicly, in any manner and for any
purpose, and to have or permit others to do so.
B. The Sponsor agrees to furnish to the Contractor or leave at the
facility that information, if any, which is (1) essential to the
performance of work by the Contractor personnel or (2) necessary for
the health and safety of such personnel in the performance of
the work. Any information furnished to the Contractor shall be
presumed to have been delivered with Unlimited Rights unless marked as
described in paragraph A.2 above; provided, that if Sponsor
inadvertently delivers Proprietary Information without such markings,
then (1) Sponsor shall have the right at any time to place such
markings thereon, and Contractor shall cooperate fully with such
effort; and (ii) Contractor shall not be liable to Sponsor
for any use or disclosure of that information, in good faith,
between the time of initial delivery and the time Sponsor informs
Contractor that the information is Proprietary Information and should
be marked as such. Once the items are so marked, they shall from that
point forward be treated as Proprietary Information.
C. The Sponsor may designate as Proprietary Information any Generated
Information, where such data would embody trade secrets or would
comprise commercial or financial information that is privileged or
confidential if it were obtained from the Sponsor. Such Proprietary
Information will, to the extent permitted by law, be maintained in
confidence and disclosed or used by the Contractor (under suitable
protective conditions) only for the purpose of carrying out the
Contractor's responsibilities under this Agreement. If so authorized
by Sponsor, Contractor shall, on Sponsor's behalf, use its best efforts
to locate and appropriately xxxx all copies of Generated Information
which Sponsor has designated as Proprietary Information (such
designation to be either by specific reference to particular
information, or categorical descriptions of types of Generated
Information constituting Proprietary Information.). If
information is not marked by the Contractor when delivered to the
Sponsor and the Sponsor believes it should be marked, the Sponsor will
xxxx the information itself and notify the Contractor of the omission
that the Sponsor believes to have occurred and the fact that the
Sponsor has affixed such marking. Until such time as any particular
Generated Information has been categorized and marked as Proprietary
Information , Contractor will treat it as Proprietary Information.
Contractor may, at any time, request guidance from Sponsor as to
whether particular information should be designated and marked as
Proprietary Information. Upon completion of activities under this
Agreement (or, if appropriate, upon completion of a given Task Order),
such Proprietary Information and all copies thereof will be disposed
of as requested by the Sponsor, at the Sponsor's expense. Before the
Contractor releases data associated with this Agreement to anyone,
the Sponsor will be afforded the opportunity to review that data
to ascertain whether it is Proprietary Information and to xxxx it as
such.
D. The Government and Contractor agree to not disclose Proprietary
Information that is properly marked, or Generated Information that
has not yet been categorized by the Sponsor as to whether it is
Proprietary Information to anyone other than the Sponsor without
written approval of the Sponsor, except to Government employees
who are subject to the statutory provisions against disclosure of
confidential information set forth in the Trade Secrets Act
(18 USC 1905). The Government and Contractor shall have the right,
at reasonable times up to 3 years after the termination or completion
of the Agreement, to inspect any information designated as
Proprietary Information by the Sponsor, for the purpose of
verifying that such information has been properly identified as
Proprietary Information.
E. By, or within ninety (90) days after, the date of termination or
expiration of this Agreement, Sponsor shall request the removal of
all of its Proprietary Information from the facility, at the Sponsor's
expense, and when such request is made Contractor shall assemble and
deliver to the Sponsor the original and all copies of such information
and the Sponsor shall accept it and shall then be responsible for its
removal from the facility. The Government and Contractor shall have
Unlimited Rights in any information which is not removed from the
facility by Sponsor after delivery by Contractor to Sponsor as
described above, or which is not requested by Sponsor to be
assembled and delivered to Sponsor by Contractor within the time
limit described above. Notwithstanding the foregoing, by mutual
consent, Sponsor may allow Contractor or the Government to retain
copies of Proprietary Information without compromising its
status as such; for example, the information might be needed for
follow-on tasks hereunder or for other projects to be undertaken by the
Contractor or the Government with Sponsor's consent. The Government
and Contractor shall have Unlimited Rights in any Proprietary
Information which is incorporated into the facility or equipment
under this Agreement at Sponsor's request, to such extent that the
facility or equipment is not restored to the condition existing prior
to such incorporation.
F. The Sponsor agrees that the Contractor will provide to the Department a
nonproprietary description of the work performed under this Agreement.
G. The Government shall have Unlimited Rights in all Generated Information
produced or information provided by the Parties under this Agreement,
except for information which is disclosed in a Subject Invention
disclosure being considered for patent protection, or which is
Proprietary Information.
H. Copyrights
----------
The Sponsor may assert copyright in any of its Generated Information,
and may also require the Contractor, at the Sponsor's expense, to
register copyright and/or to assign to Sponsor copyright in any
Generated Information produced by the Contractor and designated by the
Sponsor. Subject to the other provisions of this clause, including
particularly those relating to Proprietary Information, and to the
extent that copyright is asserted, the Government reserves for itself a
royalty-free, world-wide, irrevocable, non-exclusive license for
Governmental purposes to publish, distribute, translate, duplicate,
exhibit, prepare derivative works, and perform any such data assigned
to the Sponsor.
I. The terms and conditions of this clause shall survive the Agreement.
Article XVI. ASSIGNMENT (DEVIATION)
----------------------
Neither this Agreement nor any interest therein or claim thereunder shall be
assigned or transferred by either Party, except as authorized in writing by the
other Party to this Agreement, which authorization shall not be unreasonably
withheld or delayed, provided, the Contractor may transfer it to the Department,
or its designee, with notice of such transfer to the Sponsor, and the Contractor
shall have no further responsibilities except for the confidentiality, use,
and/or non-disclosure obligations of this Agreement. In the event Contractor
proposes to disapprove any assignment or transfer by Sponsor, Sponsor shall have
the right to appeal that decision to the Director of the DOE Oak Ridge Office of
Partnerships and Program Development, and Contractor shall comply with a
decision, if any, by such Director that this Agreement shall be assigned or
transferred as requested by Sponsor. Further provided, however, that nothing in
this Article creates any enforceable right against DOE.
Article XVII. SIMILAR OR IDENTICAL SERVICES
-----------------------------
The Government and/or Contractor shall have the right to perform similar or
identical services in the Statement of Work (SOW) for other Sponsors as long as
the Sponsor's Proprietary Information is not utilized.
Article XVIII. EXPORT CONTROL
--------------
Each Party is responsible for its own compliance with laws and regulations
governing export control.
Article XIX. TERMINATION (DEVIATION)
-----------------------
Performance of work under this Agreement may be terminated at any time by either
Party, without liability, except as provided above, upon giving a thirty (30)
day written notice to the other Party. [Confidential Treatment Requested],
provided however, that the Contractor shall have the right to terminate if the
Sponsor shall have failed to advance the funds required by Article IV and failed
to cure the same within thirty (30) days after written notice to Sponsor of the
default. In the event of termination, the Sponsor shall be responsible for the
Contractor's costs through the effective date of termination which are either
(a) incurred in the performance of tasks which the Sponsor has specifically
requested Contractor to perform after the notice of termination is given, such
as completing experiments in process, providing the Sponsor with the research
data generated through the date of termination, to finalize required reporting,
etc, or (b) are necessary closeout costs, including but not limited to costs to
shut down any experiment in process which Sponsor does not wish completed or
which cannot be completed prior to termination, to pack and ship surplus
material and equipment, to finish categorizing Generated Information as provided
for in Article XV, and to assemble Generated Information and Proprietary
Information for transmittal to Sponsor; but in no event shall the Sponsor's cost
responsibility exceed the total cost to the Sponsor as described in Article III,
above. Closeout costs do not include costs for transitioning personnel.
It is agreed that any obligations of the Parties regarding Proprietary
Information or other intellectual property will remain in effect, despite early
termination of the Agreement.
Article XX. ALTERNATE DISPUTE RESOLUTION (DEVIATION)
----------------------------------------
Step 1. NEGOTIATION
The Parties shall attempt in good faith to resolve any dispute arising out of or
relating to this Agreement by negotiating between executives and/or officials
who have authority to settle the controversy and who are at a higher level of
management than the persons with direct responsibility for administration of
this contract. Either Party may give the other Party written notice of any
dispute not resolved in the normal course of business. Within 15 days after
delivery of the notice, the receiving Party shall submit to the other a written
response. The notice and the response shall include (a) a statement of each
Party's position and a summary of arguments supporting that position, and (b)
the name and title of the executive or official who will represent that Party
and of any other person(s) who will accompany the executive or official. Within
30 days after delivery of the disputing Party's notice, the executives of both
Parties shall meet at a mutually acceptable time and place, and thereafter as
often as they reasonably deem necessary, to attempt to resolve the dispute. All
reasonable requests for information made by one party to the other will be
honored.
If the matter has not been resolved within 60 days of the disputing Party's
notice, or if the Parties fail to meet within 30 days, either party initiate
mediation of the controversy or claim as provided hereafter.
All negotiations pursuant to this Agreement are confidential and shall be
treated as compromise and settlement negotiations for purposes of the Federal
Rules of Evidence and state rules of evidence.
Step 2. MEDIATION
In the event the dispute has not been resolved by negotiation as provided
herein, the Parties agree to participate in a one day mediation, using a
mutually agreed upon mediator. The mediator will not render a decision, but will
assist the Parties in reaching a mutually satisfactory agreement.
The Parties agree to equally split the costs of the mediation. The first
mediation session shall commence within 30 days from agreement on the selection
of mediator. The Parties may contact the DOE Office of Dispute Resolution with
questions or for assistance with selection of neutrals or samples of Agreements
to Mediate.
All meditations are confidential and shall be treated as compromise and
settlement negotiations for purposes of the Federal Rules of Evidence and state
rules of evidence.
Step 3. ARBITRATION
Any dispute not otherwise satisfactorily resolved may, by mutual agreement, be
submitted to arbitration, provided that both parties shall bear their own costs
of arbitration and further provided that such arbitration shall be binding only
if the Parties have previously agreed upon the limits of the awards that may
result from arbitration, pursuant to the Administrative Dispute Resolution Act
through the American Arbitration Association, Jams/Endispute Center for Public
Resources, United States Arbitration and Mediation, or other reputable ADR
provider.
Article XXI. CERTIFICATION
Sponsor certifies that to the best of its knowledge and belief the analysis or
other work or services to be provided hereunder cannot reasonably or practicably
be conducted in private facilities or with private equipment reasonably
available.
IN WITNESS WHEREOF, THE PARTIES HERETO HAVE EXECUTED THIS
AGREEMENT NO. ERD-99-1731
FOR LOCKHEED XXXXXX ENERGY RESEARCH CORPORATION
Name: /s/ Xxxxx X. Xxxxxxx
-----------------------------------
Title: Sr. Contracts Admin
-----------------------------------
Date: March 25, 1999
-----------------------------------
FOR THERAGENICS CORPORATION
Name: /s/ Xxxxx X. Xxxxx
------------------------------------
Title: Executive V/P & CFO
------------------------------------
Date: March 25, 1999
------------------------------------
ON BEHALF OF THE DEPARTMENT OF ENERGY
Name: /s/ Xxxxx X. Xxxxxxxxxx
------------------------------------
Xxxxx X. Xxxxxxxxxx, Director
Title: Office of Partnerships and Program Development
----------------------------------------------
Date: March 25, 1999
-------------------------------------
