MASSACHUSETTS INSTITUTE OF TECHNOLOGY
OFFICE OF SPONSORED PROGRAMS
RESEARCH AGREEMENT (the "Agreement") between the Massachusetts
Institute of Technology, hereinafter referred to as "M.I.T.," and
Altair Technologies, Inc., hereinafter referred to as the "Sponsor."
This Agreement is entered into as of August 1. 2000, the "Effective
Date."
WHEREAS, the research program contemplated by this Agreement is of
mutual interest and benefit to M.I.T. and to the Sponsor, and will
further the instructional and research objectives of M.I.T. in a manner
consistent with its status as a non-profit, tax-exempt. educational
institution,
NOW, THEREFORE, the parties hereto agree as follows:
1. STATEMENT OF WORK. MIT. agrees to use all reasonable
efforts to perform the research program as set forth in
Attachment A (the "Research").
2. PRINCIPAL INVESTIGATOR. The Research will be supervised by
Xxxxxxxxx Xxxxxx Xxxx, the "Principal Investigator." If,
for any reason, she is unable to continue to serve as
Principal Investigator, and a successor acceptable to both
M.I.T. and the Sponsor is not available, this Agreement
shall be terminated as provided in Article 6.
3. PERIOD OF PERFORMANCE. The Research shall be conducted
during the period August 1, 2000 (the "Starting Date")
through July 31, 2002 (the "Completion Date"). The
Completion Date will be subject to extension only by mutual
agreement of the parties.
4. REIMBURSEMENT OF COSTS. In consideration of the foregoing,
the Sponsor will reimburse M.I.T. for all direct and F&A
(Facilities & Administrative, or indirect) costs incurred
in the performance of the Research, which shall not exceed
the total estimated project cost of $ 252,520.00 without
written authorization from the Sponsor.
1
5. PAYMENT. Payments shall be made to M.I.T. by the Sponsor in
advance in U.S. dollars, net of taxes or impost of any kind
on the following basis:
Equal Monthly Invoices to Sponsor
A final financial accounting of all costs incurred and all
funds received by M.I.T. hereunder together with a check
for the amount of the unexpended balance, if any shall be
submitted to the Sponsor within ninety days following the
Completion Date.
6. TERMINATION. Performance under this Agreement may be
terminated by the Sponsor upon sixty (60) days prior
written notice. Performance may be terminated by M.I.T. if
circumstances beyond its reasonable control preclude
continuation of the Research. Upon termination, M.I.T. will
be reimbursed as specified in Article 4 for all costs and
non-cancellable commitments incurred in the performance of
the Research, such reimbursement not to exceed the total
estimated project cost specified in Article 4.
7. PUBLICATIONS. M.I.T. will be free to publish the results of
the Research after providing the Sponsor with a thirty (30)
day period in which to review each publication to identify
patentable subject matter and to identify any inadvertent
disclosure of the Sponsor's proprietary information. If
necessary to permit the preparation and filing of U.S.
patent applications, the Principal Investigator may agree
to an additional review period, provided however, that the
total review period shall not exceed a maximum of 90 days
from Sponsor's receipt of each proposed publication. Any
further extension will require subsequent agreement between
the Sponsor and M.I.T.
8. PROPRIETARY INFORMATION. If, in the performance of the
Research, the Principal Investigator and members of the
M.I.T. research team require and accept access to Sponsor's
information that the Sponsor considers proprietary, the
rights and obligations of the parties with respect to such
information shall be governed by the terms and conditions
set forth in Attachment B.
9. SPONSOR INTELLECTUAL PROPERTY. Title to any invention made
solely by Sponsor personnel without the use of M.I.T.
facilities ("Sponsor Inventions") shall remain with the
Sponsor. Sponsor inventions shall not be subject to the
terms and conditions of this Agreement.
10. JOINT INTELLECTUAL PROPERTY.
A. TITLE TO JOINT INVENTIONS. Inventions made jointly by
employees and/or students of M.I.T. and employees of
the Sponsor in the performance of the Research, or
inventions made solely by employees of the Sponsor with
significant use of M.I.T. facilities ("Joint
Inventions") shall be jointly owned by the parties. The
Sponsor shall be notified of any Joint Invention
promptly after an invention disclosure is received by
the MIT. Technology Licensing Office. Patent
application, prosecution, maintenance and associated
expenses related to Joint inventions shall be governed
by the terms and conditions set forth in a separate
Joint Invention Agreement (hereinafter "Joint Invention
Agreement") to be executed by the parties and appended
hereto.
2
B. LICENSING OPTIONS. Each party shall have the
unrestricted right to license to third parties any such
Joint Invention without accounting to the other party,
except that the Sponsor shall be entitled to elect a
license to M.I.T.'s interest as provided under
paragraph 11.B. below. Licensing of Joint Inventions
shall be governed by the terms and conditions set forth
in a Joint Invention Agreement (hereinafter "Joint
Invention Agreement") to be executed by the parties and
appended hereto.
11. M.I.T. INTELLECTUAL PROPERTY.
A. TITLE TO INVENTIONS. Title to any invention conceived
or first reduced to practice solely by M.I.T. employees
and/or students in the performance of the Research
shall remain with M.I.T. The Sponsor shall be notified
of any such invention promptly after a disclosure is
received by the M.I.T. Technology Licensing Office.
M.I.T. (i) may file a patent application at its own
discretion or (ii) shall do so at the request of the
Sponsor and at the Sponsor's expense.
B. LICENSING OPTIONS. In the event that a patent
application on such an invention is filed by M.I.T.,
for each such invention M.I.T. hereby grants the
Sponsor a non-exclusive, non-transferable, royalty-free
license for internal research purposes. Sponsor shall
further be entitled to elect one of the following
alternatives by notice in writing to M.I.T. within six
(6) months after notification to the Sponsor that a
patent application has been filed:
1. A non-exclusive, non-transferable (except in the
event that the Sponsor transfers substantially
its entire business and assets), world-wide,
royalty-free license without the right to
sublicense (in a designated field of use, where
appropriate) to the Sponsor to make, have made,
use, lease, sell, and import products embodying
or produced through the use of such invention;
provided that the Sponsor agrees t~ (a)
demonstrate reasonable efforts to commercialize
the technology in the public interest;
and (b) pay an annual fee of $3,000. M.I.T. shall
have the right, at its option, to discontinue
patent prosecution or maintenance on any
invention licensed to Sponsor under this
alternative, and the Sponsor shall thereafter
have no further obligation to pay the annual
license fee.
2.
A royalty-bearing, limited-term exclusive license
(subject to third party tights, if any), to the
Sponsor including the right to sublicense, in the
United States and/or any foreign country elected
by the Sponsor (subject to (1)) below) to make,
have made, use, lease, sell, and import (in a
designated field of use, where appropriate)
products embodying or produced through the use of
such invention, provided that the Sponsor agrees
3
to reimburse M.I.T. for the costs of patent
prosecution and maintenance in the United States
and any elected foreign country, and further
agrees that any products produced pursuant to
this license and that are sold in the United
States shall be substantially manufactured in the
United States. This alternative is subject to
M.I.T. concurrence and the negotiation of
commercially reasonable terms and conditions
within three (3) months after selection of this
alternative. However, if the parties are involved
in good faith negotiations toward execution of
such a license at the end of the three (3) month
period, the parties may extend this negotiation
period by an additional three (3) months, upon
their mutual agreement in writing.
3. The sharing with the Sponsor of any royalty
income derived from licensing the patent rights
to third parties by M.I.T. in an amount equal to
twenty-five percent (25%) of the annual royalty
income after deducting a fifteen percent (15%)
administrative fee and M.I.T.'s out-of-pocket
costs, including patent filing, prosecution and
maintenance; provided, however, that M.I.T. shall
file, prosecute and maintain such patents at its
sole discretion, and the Sponsor waives all
rights to such inventions, patent applications
and any resulting patents, except for the
Sponsor's royalty-free license for internal
research use. This alternative may not be
available if the Research was co-funded by the
Federal Government or other sponsors.
C. DEFAULT OPTION. In the event that the Sponsor has not elected any of the
foregoing alternatives within six (6) months after notification that a patent
application has been filed, the Sponsor shall be deemed to have elected
alternative 3. above if that alternative is available. If this alternative is
not available because of other sponsorship, the Sponsor shall be deemed to have
elected a royalty-free internal research use license and to have forgone other
alternatives.
D. FOREIGN FLING ELECTION. If the Sponsor elects
alternative 2., the Sponsor shall notify M.I.T. of
those foreign countries in which it desires a license
in sufficient time for M.I.T. to satisfy the patent law
requirements of those countries. The Sponsor shall
reimburse M.I.T. for the out-of-pocket costs, including
patent (fling, prosecution and maintenance fees related
to those foreign filings.
E. CONFIDENTIALITY OF INVENTION DISCLOSURES. The Sponsor
shall retain all invention disclosures submitted to
Sponsor by M.I.T. in confidence and use all reasonable
efforts to prevent their disclosure to third parties.
Thc Sponsor shall be relieved of this obligation only
when this information becomes publicly available
through no fault of the Sponsor.
F. COPYRIGHT OWNERSHIP AND LICENSES. Title to and the
right to determine the disposition of any copyrights or
copyrightable material first produced or composed in
the performance of the Research shall remain with
M.I.T.
4
1. Sponsor is entitled to elect an irrevocable,
royalty-free, non-transferable, non-exclusive
right and license to use, reproduce, make
derivative works, display, distribute, and
perform all such copyrightable materials other
than computer software and its documentation
and/or informational databases.
2. Sponsor is entitled to elect an irrevocable,
royalty-free, non-transferable, non-exclusive
right and license to use, reproduce, make
derivative works, display, and perform computer
software and its documentation, and/or databases
specified to be developed and delivered under the
Statement of Work for Sponsor's internal research
use. Sponsor is entitled to elect to negotiate a
non-exclusive, royalty-bearing license to use,
reproduce, display, distribute and perform such
computer software and its documentation and/or
databases for commercial purposes, at M.I.T.'s
discretion. Computer software for which a patent
application is filed shall be subject to
paragraph B. above.
G. RIGHTS IN TRP. In the event that M.I.T. elects to
establish property rights other than patents to any
tangible research property (TRP), including but not
limited to biological materials, developed during the
course of the Research, M.I.T. and the Sponsor will
determine the disposition of rights to such property by
separate agreement. M.I.T. will, at a minimum, reserve
the right to use and distribute TRP internally for
non-commercial research purposes.
H. LICENSE EFFECTIVE DATE. All licenses elected by the
Sponsor pursuant to Sections X.x., B.2., F. and 0. of
this Article 11 become effective as of the ate the
parties sign a subsequent license agreement
12. USE OF NAMES. Neither party will use the name of the other
in any advertising or other form of publicity without the
written permission of the other, in the case of M.I.T.,
that of the Director of the News Office. Either party may
release information required by law or regulation.
13. NOTICES. Any notices required to be given or which shall be
given under this Agreement shall be in writing and be
addressed to the parties as shown below. Notices shall be
delivered by certified or registered first class mail (air
mail if not domestic) or by commercial courier service, and
shall be deemed to have been given or made as of the date
received.
MASSACHUSETTS INSTITUTE ALTAIR TECHNOLOGIES, INC.
OF TECHNOLOGY
Xxxxxxx X. Xxxxxxxx Xxxxxxx X. Xxxx
Senior Contract Administrator President
Office of Sponsored Programs 000 Xxxxxx Xxx
00 Xxxxxxxxxxxxx Xxxxxx, Xxxx, XX 00000
Xxxx X00-000
Xxxxxxxxx, XX 00000
Tel: (000) 000-0000 Tel: (000) 000-0000
Fax: (000) 000 0000 Fax: (000) 000-0000
Email: xxxxxxx@xxx.xxx Email: xxxxxxx@xxxxxxxxx.xxx
5
14. ASSIGNMENT. This Agreement shall be binding upon and inure
to the benefit of the parties hereto and the successors to
substantially the entire business and assets of the
respective parties hereto. This Agreement shall not be
assignable by either party without the prior written
consent of the other party; any attempted assignment is
void.
15. GOVERNING LAW. The validity and interpretation of this
Agreement and the legal relationship of the parties to it
shall be governed by the laws of the Commonwealth of
Massachusetts and the applicable U.S. Federal law.
16. FORCE MAJEURE. Neither party shall be responsible to the
other for failure to perform any of the obligations imposed
by this Agreement, provided such failure shall be
occasioned by fire, flood, explosion, lightning, windstorm,
earthquake, subsidence of soil, failure or destruction, in
whole or in part, of machinery or equipment or failure of
supply of materials, discontinuity in the supply of power,
governmental interference, civil commotion, riot, war,
strikes, labor disturbance, transportation difficulties,
labor shortage or any cause beyond its reasonable control.
17. EXPORT CONTROLS. It is understood that M.I.T. is subject to
United States laws and regulations controlling the export
of technical data, computer software, laboratory prototypes
and other commodities, and that its obligations hereunder
are contingent on compliance with applicable U.S. export
laws and regulations (including the Arms Export Control
Act, as amended, and the Export Administration Act of
1979). The transfer of certain technical data and
commodities may require a license from the cognizant agency
of the United States Government and for written assurances
by the Sponsor that the Sponsor will not re-export data or
commodities to certain foreign countries without prior
approval of the cognizant government agency. While M.I.T.
agrees to cooperate in securing any license which the
cognizant agency deems necessary in connection with this
Agreement, M.I.T. cannot guarantee that such licenses will
be granted.
18. ENTIRE AGREEMENT. Unless otherwise specified, this
Agreement and its Attachments embody the entire
understanding between M.I.T. and the Sponsor for the
Research, and any prior or contemporaneous representations,
either oral or written, are hereby superseded. No
amendments or changes to this Agreement, including without
limitation, changes in the statement of work, total
estimated cost, and period of performance, shall be
effective unless made in writing and signed by authorized
representatives of the parties.
6
MASSACHUSETTS INTITUTE OF TECHNOLOGY ALTAIR TECHNOLOGIES, INC.
By: /s/ Xxxxxx X. Xxxx By: /s/ Xxxxxxx X. Xxxx
------- -------------- -----------------------
Xxxxxx X. Xxxx Xxxxxxx X. Xxxx
Title Associate Director Title President
Office of Sponsored Programs
Date 08/22/00 Date 08/21/00
7
ATTACHMENT A
Nanostructured Fuel Cell System for Direct Hydrocarbon Conversion
A Proposal submitted to Altair Technologies, Inc.
Xxxx. Xxxxxx X. Xxxx
Department of Chemical Engineering
Massachusetts Institute of Technology
Room 66-544, 00 Xxxxxxxxxxxxx Xxxxxx
Tel: (000) 000-0000, Fax: (000) 000-0000
E-Mail: xxxxxx@xxx.xxx
Solid-oxide fuel cell systems are attractive devices capable of
continuously converting hydrogen and oxygen to electricity and water. They are
composed of three major components: the cathode, the electrolyte, and the anode.
The cathode is responsible for converting the oxygen supply to oxygen ions,
which would diffuse through the electrolyte material to react with hydrogen at
the anode. The cathode material is typically a porous thin film of La1xSrxMnO3.
It is coated onto the electrolyte, a dense yttria-stabilized zirconia (YSZ) thin
film that has a high oxygen ionic conductivity. The anode is a porous membrane
of Ni-YSZ cermet, which has to be able to conduct electricity.
Fuel cell systems powered by hydrogen present a great deal of
limitation. There is currently a lack of hydrogen fuel distribution network, and
hydrogen storage or on-board generation from hydrocarbon reforming processes
present major materials and engineering challenges. The idea of converting
hydrocarbon fuels directly to generate electrical power has recently been
realized by advanced fuel cell design. It provides a great deal of flexibility
for the use of fuel cells in transportation and distributed-power applications.
To realize the full potential of fuel cells in the direct
electrochemical oxidation of hydrocarbons, it is critical to address the
challenges in materials design. In the conventional fuel cell materials,
undesired resistive phases such as La2Zr2O7 and SrZrO3 are formed at the
electrolyte-cathode interface. This may be prevented by introducing ceria buffer
layers between thc electrolyte and the electrodes. Ceria also provides for high
ionic conductivity, effectively extending the reaction zone. Another problem
with conventional fuel cell materials is the use of Ni-YSZ as the anode, which
gives rise to significant coking problems when fuels other than hydrogen are
used under dry conditions. This calls for the design of better anode catalytic
materials.
This proposal seeks to tackle the major challenges currently present in
hydrocarbon-powered fuel cells. It focuses on the synthesis and fabrication of
superior anode arid cathode materials, and the integration of these structures
with the YSZ electrolyte with mechanical and thermal stability. It will examine
Altair's stable porous structures as the support materials for the cathode and
anode catalysts. Altair will supply these porous structures in conjunction with
the YSZ electrolyte thin film, and we will deposit novel nanostructured anode
and cathode catalysts onto the porous supports. It is anticipated that the high
porosity and thermal stability of the formed-in-place porous structures supplied
by Altair would provide superior dispersion of anode and cathode catalysts
compared to conventional porous substrates. This would allow us to take full
advantage of the novel nanostructured anode and cathode catalysts developed by
my laboratory to achieve improved hydrocarbon conversions and oxygen adsorption
in fuel cell applications.
The proposed study will examine nanostructured fluorite-based oxides as
the anode materials. Systems, such as Cu-ceria, have been examined previously by
my group as redox catalysts. Like Ni-YSZ, they demonstrate excellent oxygen
conductivity. Ceria further possesses variable oxidation states, thereby
providing for superior oxygen storage capability and oxidation activity compared
to YSZ. Such material, ~specia~1y if processed as a nanocrystallinc material
with grain size of < 10 nm, would provide for superb catalytic activity for
hydrocarbon oxidation without coking problems. When dispersed with transition
metals and doped with alter-valcnt elements, these ceria-based nanocomposites
should facilitate the electrochemical oxidation of hydrocarbons at substantially
low temperatures and/or with significantly faster kinetics. We would screen
these new compositions in the catalytic oxidation of hydrocarbons. The selected
materials xxxx be used in the fuel cell configuration to examine their
efficiency and stability as the anode catalysts, and their effect on the power
density as a function of time and operating temperature.
For the proposed research program, I suggest that Altair supplies two
types of porous supports in conjunction with the YSZ electrolyte. The first is
the porous rutile system that has been developed with excellent thermal
stability. It will be coated with YSZ and deposited with ceria-based
nanocomposite catalyst for use as the anode. The second is a porous YSZ matrix
that may be developed with excellent conductivity and compatibility with the YSZ
electrolyte. It will be deposited with ceria-based nanocomposite catalyst for
use as the anode. In both cases, the cathode material will be a porous support
(i-utile or YSZ) coated with a ceria buffer layer and deposited with Lai~Sr~MnO3
nanoparticles. With the high stability of Altair's porous substrates and the
high activity of our nanocomposite catalysts, we should be able to generate
superior electrode materials for hydrocarbon-powered fuel cell systems. The new
fuel cell devices will be tested for power generation using methane, methanol,
butane and octane in the proposed two-year research program. Selected materials
from this program will be supplied to Altair for long-term fuel cell studies.
Through establishing the fundamental relationships between materials
synthesis/characterization and catalytic/fuel-cell testing, novel fuel cell
systems would be achieved to provide for excellent fuel flexibility, lower.
temperature operations, high power density, long-term thermal stability, and
coking resistance.
Xxxxxx X. Xxxx
Biographica1 Summary
Xxxxxx X. Xxxx was raised in Singapore and New York, and graduated with
B.E. summa cum laude in Chemical Engineering from The Xxxxxx Union in 1987. As a
AT&T Xxxx Laboratories Ph.D. Scholar at Princeton University, she began research
in materials chemistry, linking the importance of materials processing and
microstructure with the tailoring of materials surface chemistry arid
energetics. She pursued research in nanocrystalline materials with Xxxx. Xxxxxxx
Xxxxxxx at the Institute for New Materials, Saarbrucken, Germany as NSF-NATO
Post-doctoral Fellow and Alexander von Humboldt Research Fellow. Since 1992,
Prof. Ying has been on the Chemical Engineering faculty at Massachusetts
Institute of Technology, and was promoted to Associate Professor in 1996. She
currently holds the Xxxxxxx X. and Xxxxx X. St. Laurent chair, and her teaching
interests include chemical reaction engineering and heterogeneous catalysis.
Prof. Ying's research is interdisciplinary in nature, with a theme in
synthesis of advanced inorganic structures for catalytic, membrane, ceramic,
biomaterial applications. Her laboratory has been responsible for several novel
wet chemical and physical vapor synthesis approaches that create nanostructured
materials with exceptional size-dependent characteristics. In particular, the
engineering of surface reactivity, microstructure, and thermal stability for
nanocrystalline and nanoporous systems has been the focus to target towards the
materials needs in the efficient use of energy and resources, and the control
and prevention of environmental pollution. Prof. Ying has authored over 110
articles and presented numerous invited lectures on this subject at
international conferences. She has been recognized with a number of research
awards, including the American Ceramic Society Xxxx X. Xxxxx Award for the most
valuable contribution to the ceramic technical literature during 1993, Xxxxx and
Lucite Packard Fellowship, Office of Naval Research Young Investigator Award,
National Science Foundation Young Investigator Award, Xxxxxxx Xxxxxxx
Teacher--Scholar Award, Royal Academy of Engineering ICI Faculty Fellowship,
American Chemical Society Faculty Fellowship Award in Solid-State Chemistry,
University of Notre Dame Xxxxxx X. Thiete Lectureship, TR100 Innovator Award,
and American Institute of Chemical Engineers (AIChE) Xxxxx X. Xxxxxxx Award for
excellence in publications. She has actively engaged her discipline with the
frontiers of inorganic materials as the Materials Engineering and Sciences
Division Director of the AIChE, and organized a Topical Conference on Advanced
Ceramics Processing at the 5th World Congress of Chemical Engineering. She plays
a leading role in the field of nanostructured materials, chaired the U.S.
Department of Energy Workshop on Future Research Needs of Nanofabricated
Materials in 1994, arid organized the Third International Conference on
Nanostructured Materials and the 2000 Engineering Foundation Conference on
Processing and Properties of Nartostructured Materials. Prof. Ying is Advisory
Editor for Molecular and Chemical Sciences, Editor for Advances in Chemical
Engineering, and was Associate Editor for Nanosrructured Materials; she serves
on the Editorial Board of Jaw-nat of Porous Materials, Journal of
Electroceramics, Nanoparticle Science and Technology, and Journal of Metastable
and Nanostructured Materials. She was a Guest Editor for Materials Science &
Engineering A, NanastriActured Materials, A IC hE Journal, and Chemistry of
Materials, and served on the Board of Directors of Alexander von Humboldt
Association of America.
Attachment B
SPONSOR PROPRIETARY INFORMATION
If, in the performance of the Research, the Principal Investigator and members
of the M.I.T. research team designated by him/her require and accept access
offered by Sponsor to certain information that the Sponsor considers
proprietary, the rights and obligations of the parties with respect to such
information are as follows:
1. PROPRIETARY INFORMATION. For the purposes of this
Agreement, "Proprietary Information" refers to information
of any kind which is disclosed by Sponsor to M.I.T. and
which, by appropriate marking, is identified as
confidential and proprietary at the time of disclosure.
Sponsor shall identify written Proprietary Information as
confidential and proprietary by appropriate marking at the
time of disclosure. In the event that Proprietary
Information is provided visually or orally, obligations of
confidentiality shall attach only to that information which
is identified as confidential and proprietary at the time
of disclosure and is confirmed by the Sponsor in writing
within twenty (20) working days as being confidential.
except that, in the course of intellectual exchange between
the Sponsor and M.I.T., information related to growth of
crystalline material from dense films and the incorporation
of chemical dopants or chemical controls in the growth of
crystalline material from dense films provided from the
Sponsor to M.I.T. is to be treated as confidential. The
Sponsor will endeavor to identify at the time of disclosure
such confidential information and to confirm the disclosure
in writing with twenty (20) days of its disclosure.
2. LIMITATIONS ON USE. M.I.T. shall use the Sponsor's
Proprietary Information solely for the purposes of the
Research. It is agreed by Sponsor and MIT. that the
disclosure of Proprietary Information shall not be
construed as a grant of any right or license with respect
to such information except as set forth herein or in a duly
executed license agreement.
3. CARE OF PROPRIETARY INPORMATION. The Sponsor and M.I.T.
agree that all Proprietary Information communicated by
Sponsor and accepted by M.I.T. in connection with this
Agreement shall be kept confidential by M.I.T. as provided
herein unless specific written release is obtained from
Sponsor. M.I.T. agrees to make Proprietary Information
available only to those employees and students who require
access to it in thc performance of this Agreement and to
inform them of the confidential nature of such information.
M.I.T. shall exert reasonable efforts to maintain such
information in confidence and to ensure that each M.I.T.
employee or student is aware of and acknowledges their
obligations of confidentiality under this Agreement.
M.I.T. shall be deemed to have discharged its obligations
hereunder provided MIT. has exercised the foregoing degree
of care and provided further that MIT. shall immediately,
upon discovery of any disclosure not authorized hereunder,
notify Sponsor and take reasonable steps to prevent any
further disclosure or unauthorized use.
When the Proprietary Information is no longer required for
the purpose of this Agreement, M.I.T. shall return it or
dispose of it as directed by the Sponsor. M.I.T.'s
obligations of confidentiality with respect to Proprietary
Information provided under this Agreement will expire five
(5) years after the Effective Date of this Agreement.
4. INFORMATION NOT COVERED. It is agreed by Sponsor and M.I.T.
that the above obligations of confidentiality shall not
attach to information which:
(a) is publicly available prior to the date of the
Agreement or becomes publicly available thereafter
through no wrongful act of M.I.T.;
(b) was known to M.I.T. prior to the date of disclosure or
becomes known to M.I.T. thereafter from a third party
having an apparent bona Me right to disclose the
information;
(c) is disclosed by M.I.T. in accordance with the terms of
the Sponsor's prior written approval;
(d) is disclosed by Sponsor without restriction on further
disclosure;
(e) is independently developed by M.I.T., as documented by
competent evidence;
(f) M.I.T. is obligated to produce pursuant to an order of
a court of competent jurisdiction or a valid
administrative or Congressional subpoena, provided that
M.I.T. (a) promptly notifies the Sponsor and (b)
cooperates reasonably with the Sponsor's efforts to
contest or limit the scope of such order.
JOINT INVENTION AGREEMENT
This Agreement is made and entered into this ___ day of . 2000, (the
"EFFECTIVE DATE") by and between thc MASSACHUSETTS INSITFUTE OF
TECHNOLOGY, a corporation having its principal office at 00
Xxxxxxxxxxxxx Xxxxxx, Xxxxxxxxx, Xxxxxxxxxxxxx 00000, X.X.X.
(hereinafter referred to "MIT") and ALTALR TECHNOLOGIES, INC., a
corporation having its principal office at 000 Xxxxxx Xxx, Xxxx, XX
00000, U.S.A.. (hereinafter referred to as "ALTAIR.").
WHEREAS, MIT. and ALTAIR jointly own the invention referred to as
M.I.T. Case No. ______ entitled" ," by Xxxxxx Xxxx, as described in
---------------------------------------------- the Invention Disclosure
attached as Appendix A hereto and the patent application entitled
___________________________ - U.S. Serial Number_________ (hereinafter
"INVENTION"); and
WHEREAS, M.I.T. and ALTAIR wish to patent and license the
INVENTION in the most expeditious manner for the public benefit
NOW, THEREFORE, in consideration of the premises and the mutual
covenants contained herein, the parties agree as follows:
I. ALTA1R hereby appoints M.I.T. as its exclusive agent to manage
the patent filing, prosecution and maintenance of the INVENTION. ALTAIR
will he copied on all patent correspondence. The prosecution. filing
and maintenance of all INVENTION patent applications and patents will
be the primary responsibility of M.I.T.; provided, however, ALTAIR will
have reasonable opportunities to advise M.I.T. and will cooperate with
M.I.T. in such prosecution, filing and maintenance.
2. ALTAIR and M.I.T. shall each have the unrestricted right to
license the INVENTION to third-parties without accounting to the other
party, except that ALTAIR shall be entitled to elect a license to
M.I.T.'s interest as paragraph 11(B) of the August 1, 2000 Research
Agreement ("RESEARCH AGREEMENT") provides. In the event M.I.T. licenses
the INVENTION to a third-party, M.I.T will share with ALTAIR fifty
percent of any royalties derived from the INVENTION after deducting:
(1) unreimbursed expenses incurred in patent filing, prosecution, and
maintenance for the INVENTION; and (2) a 15% administration fee.
In the event ALTAIR licenses the INVENTION to a third-party,
ALTAIR will share with M.I.T. fifty percent of any royalties derived
from the INVENTION after deducting: (1) unreimbursed expenses incurred
in the patent filing, prosecution, and maintenance for the INVENTION;
and (2) a 15% administration fee. M.I.T. and ALTAIR will each
distribute retained royalties to all named inventors per their
respective institution's inventor royalty-sharing policies.
3.A. M.I.T. and ALTAIR will equally share all reasonable
out-of-pocket expenses, including attorney's fees, incurred in the
filing, prosecution, and maintenance of patent rights for the INVENTION
in the (i) United States and (ii) Patent Cooperation Treaty (PCT)
countries, prior to entering the national phase, for foreign countries
selected by M.I.T. or the licensee(s). M.I.T. and ALTAIR agree that
reasonable license terms will include reimbursement by the licensee of
all United States and foreign patenting expenses. M.I.T. will submit
invoices for all such expenses unreimbursed by a licensee(s), which
will be payable by ALTAIR within sixty (60) days after receipt of
invoice.
3.B. M.I.T. will have no authority to enter into the PCT national
phase for any country without agreement by an option holder or a
licensee to reimburse all expenses, except with the express approval of
ALTAIR to share expenses. In addition, in the event that either M.I.T.
or ALTAIR wish to cease prosecution or abandon any of the patent
applications or patents of the INVENTION or fail to pay their share of
expenses pursuant to Paragraph 3.A. (hereinafter "ABANDONED RIGHTS"),
such party will notify the other in writing. The other party will have
the right to continue prosecution or maintenance of the ABANDONED
RIGHTS at its sole discretion, and will be responsible for all
out-of-pocket expenses incurred after said notification. Thereafter,
revenue received by M.I.T. will continue to be distributed per
Paragraph 4, except that the abandoning party will not receive its
share for revenue associated with the ABANDONED RIGHTS.
4. Any payment, notice or other communication pursuant to this
Agreement shall be sufficiently made or given on the date of mailing if
sent to such party by certified first class mail, return receipt
requested, postage prepaid, addressed to it at its address below or as
it shall designate by written notice given to the other party
In the case of MIT.:
Director
Technology Licensing Office
Massachusetts Institute of Technology
00 Xxxxxxxxxxxxx Xxxxxx, Xxxx XX00-000
Xxxxxxxxx, Xxxxxxxxxxxxx 00000
In the case of ALTAIR:
IN WITNESS WHEREOF, the parties have duly executed this Agreement
the day and year set forth below.
MASSACHUSETTS INSTITUTE OF TECHNOLOGY ALTAIR TECHNOLOGIES, INC.,
By __________________________________ By ________________________________
Name ________________________________ Name ______________________________
Title _______________________________ Title _____________________________
Date ________________________________ Date ______________________________
