Exhibit 10 (B) (10)
FIRM FIXED PRICE
MEMORANDUM OF AGREEMENT
This Memorandum of Agreement dated as of December 1, 1997 documents and confirms
the agreement under which Chemfab Corporation (hereinafter called Sponsor) will
support, and Virginia Polytechnic Institute and State University and Virginia
Tech Intellectual Properties (hereinafter jointly called University) will
conduct, an effort entitled: "Characterization of Fluoroelastomer Fluoroplastic
Blends" (herein the "Project"), which is described in the letter dated September
18, 1997 from Xx. Xxxx Xxxxxxxxxxx of Sponsor to Dr. Xxxxx XxXxxxx of the
University (the "Project Description") (attached hereto as Exhibit 1 and
incorporated as a part hereof), to which Project the University has assigned its
Research Proposal Number 00-0000-00.
1. CONTENTS: This Memorandum of Agreement consists of this cover page and 11
additional pages, including the 5-page Project Description. This Memorandum of
Agreement constitutes the definitive agreement contemplated by that certain
letter agreement dated December 1, 1997 (and referenced exhibits) (the "Letter
Agreement") between Sponsor and University, and supersedes the Letter Agreement,
provided that the related executed Confidentiality and Non-Use Agreement dated
as of December 1, 1997 (the "Confidentiality Agreement") remains in full force
and effect.
2. PERIOD OF PERFORMANCE: The Research project shall be performed during the
period December 1, 1997 through November 30, 1998 (the "Term").
3. AMOUNT OF AGREEMENT: $60,000.
4. UNIVERSITY PRINCIPAL INVESTIGATORS: Professors Xxxxx X. XxXxxxx and Xxxxx
X. Xxxxxx (herein the "Professors"), and post-doctoral students enrolled at the
University selected by them ("Students") (collectively, "Researchers").
2
5. EXECUTION: In confirmation of their acceptance of the terms of this
Agreement, the parties have caused this Memorandum of Agreement to be executed
by their duly authorized representative.
CHEMFAB CORPORATION
By: /s/ Xxxx X. Xxxxxxxx Dec 31, 1998
-------------------------------- -----------
Xxxx X. Xxxxxxxx, Exec. VP Date
VIRGINIA POLYTECHNIC INSTITUTE AND STATE UNIVERSITY
VIRGINIA TECH INTELLECTUAL PROPERTIES
By: /s/ X. X. Xxxx Jan 9, 1998
--------------------------------- -----------
X. X. Xxxx, Director Date
Office of Sponsored Programs
A. EFFORT TO BE PERFORMED
The University, through the Researchers, shall perform the research
Project described in the Project Description. The Professors shall
determine the specific conduct of the research Project, and the Students,
subject to the general supervision of the Professors, shall undertake that
research. The Professors shall coordinate with and give written reports
to Xx. Xxxxxxxxxxx or other designated person(s) of Sponsor regarding
progress of, modifications to, or additional leads on or focus of the
research effort, provided, however, the University shall approve any major
deviation from the Project Description
B. PERIOD OF PERFORMANCE
i. The University is expected to complete the research Project under
this agreement within the time-frame specified on the cover page of
this Agreement. The University shall provide the Sponsor with
written notification at any time it becomes apparent that the effort
will not be completed on schedule. This written notification shall
provide an explanation of the delay and shall provide a new
completion date.
ii. Specific delivery dates of reports and other deliverables, if any,
shall be agreed on by the Professors and Sponsor.
C. CONSIDERATION AND PAYMENT
i. For full and complete performance of the Project under this
Agreement, the University shall be paid the sum of Sixty Thousand
Dollars ($60,000), which shall cover stipends paid to the Students,
and any and all direct and indirect costs and expenses of the
Professors and of materials, equipment and facilities of the
University. This amount shall be payable on the following schedule:
on the first day of each month, commencing on January 1, 1998 and
thereafter for the next 11 months.
ii. The University shall invoice for all payments when due and all
payments shall be made to "Treasurer, Virginia Tech" and mailed to:
"Virginia Tech, Attn: Director, Office of Sponsored Programs, 000
Xxxxxxx Xxxx, Xxxxxxxxxx, Xxxxxxxx 00000."
D. CHANGES AND SUBCONTRACTING
No changes in the amount, terms or conditions of this Agreement shall
become effective until such change is reduced to writing and signed by
duly authorized representatives of both parties to this Memorandum of
Agreement. Subject to Paragraph A above, the University shall not
subcontract any portion of the effort without the prior written
concurrence of the Sponsor.
E. CONFIDENTIAL MATERIAL
i. In the Project Description and during the performance of this
Agreement, the Sponsor has and may from time-to-time furnish material
to the University and Researchers (collectively, "Recipients") that
Sponsor considers to be of a confidential nature (herein "Sponsor
Confidential Information"). The Recipients have signed the
Confidentiality Agreement, under which they will safeguard all such
material in accordance therewith. Confidential material not consumed
in the performance of the research Project shall be returned to, or
disposed of, as directed by the Sponsor. Confidential material will
not be published by the University in student theses, scholarly
dissertations, or otherwise without prior written consent of the
Sponsor (and in any event will only be published subject to the
conditions in Paragraph F. below).
ii. Sponsor hereby grants a license to Recipients to use Sponsor
Confidential Information for the limited and sole purpose of carrying
out the research goals of the Project (the "Research License"),
subject to the terms and conditions of the Confidentiality Agreement.
The Research License shall automatically expire at the end of the
Term. The Research License does not include the grant of any
license, right or interest in or to Sponsor Confidential Information,
the information in the Project Description, or other Sponsor
Intellectual Property (as defined in Paragraph G. below). Sponsor
expressly retains all other rights in Sponsor Intellectual Property,
including the exclusive right to commercially exploit the same.
F. PUBLICATION
i. The Sponsor acknowledges that a major consideration in the University
entering into this Agreement is the ability to publish Student theses
and scholarly papers derived from the research for the Project
(herein, "Project Research"). University acknowledges that major
considerations for the Sponsor in entering into this Agreement are
for Sponsor (a) to preserve the patentability of Sponsor's ideas and
inventions set forth in or contemplated by the Project Description or
conceived in whole or in part by Sponsor from the Project; (b) to
preserve the confidentiality of Sponsor Confidential Information and
Sponsor's other trade secrets; and (c) to retain the exclusive right
to exploit such ideas, inventions, and other Sponsor Intellectual
Property (as defined in Paragraph G. below). Accordingly, University
and Sponsor have agreed on the conditions set forth in clauses ii. -
v. of this Paragraph F to set forth their agreement about publication
rights for Project Research.
ii. There shall be no publication by University or any Researcher of any
Project Research before December 16, 1998 (the "Earliest Publication
Date"). In addition, (a) there shall be no publication of Invention-
Related Research (as hereinafter defined) except in accordance with
clauses iii., iv. and v. below; (b) there shall be no publication of
Project Research other than Invention-Related Research (herein "Other
Project Research") except in accordance with clause v. below; and (c)
in the event research includes information that is both Invention-
Related Research and Other Project Research, it shall be deemed for
purposes of this Agreement to be Invention-Related Research.
iii. After the expiration of the Term and subject to Paragraph G.i.
below,, Sponsor shall make reasonable efforts to inform University
whether Sponsor regards any of Sponsor's Inventions and/or Joint
Inventions (each as defined in Paragraph G. below) as patentable and
whether Sponsor desires to perfect, or reserve the right to perfect,
patents therefor.
iv. If University or any of the Researchers desire to publish any
information relating, directly or indirectly, to the Sponsor's
Inventions, Joint Inventions and/ or related Project Research
(collectively herein, "Invention-Related Research"), it/he/she shall
give Sponsor written notice (the "Publication Notice"), not before
the Earliest Publication Date and at least nine months prior to the
desired publication, in order to give Sponsor sufficient time to
prepare and file patent applications, perfect such patents, and take
other measures to protect Sponsor Intellectual Property. Any and all
Publication Notices shall identify the specific Invention and
Invention-Related Research that are the subject of the desired
publication. During (each) such ninth month period, neither the
University nor any of the Researchers shall publish (or otherwise
disclose) any such Invention-Related Research.
v. Subject to (x) the Earliest Publication Date provision in clause ii.
above, and (y) the conditions in clauses iii. and iv. above with
respect to Invention-Related Research, Sponsor agrees not to unduly
restrict publication of Project Research; provided that, the
University shall provide drafts of all articles and other documents
to the Sponsor for review prior to publication. Such review shall be
for the purposes of ensuring that the publication does not disclose
Sponsor Confidential Information or impair Sponsor Intellectual
Property, and for providing appropriate protection for Inventions.
The Sponsor shall provide the University with the results of its
review within 60 days. Subject to the conditions in clauses ii.-iv
above, the University may assume de facto agreement to publishing if
no comments are received within this period.
vi. Sponsor may publish, either jointly with University or one or more
Researchers, or on its own, any part or all of the Project Research,
after giving at least 30 days advance written notice to University;
provided that, if during such thirty (30) day period University
and/or Researcher(s) give written notice to Sponsor of their desire
to collaborate in such Sponsor publication, Sponsor shall make
reasonable efforts to reach agreement on the terms of such
collaboration with University and/or Researcher(s), as the case may
be; provided further that, if the parties agree to collaborate on
such publication, it shall be subject in any event to clauses ii.-v.
above.
G. PATENTS , INVENTIONS AND INTELLECTUAL PROPERTY
i. For purposes of this Agreement, the term "Inventions" means any and
all patentable inventions, ideas and conceptions (whether for
products, processes, or both) set forth in or derived from the
Project Description and/or the Project. Each of Sponsor and
University, and each of the Researchers, shall keep and preserve
contemporaneous notes and other customary records in reasonable
detail of all Inventions. After the expiration of the Term and upon
request of either party, each party shall provide to the other (a) a
list of all Inventions; and (b) its characterization of each
Invention as one of the following: a Sponsor's Invention (as defined
in clause (ii) below), a Joint Invention (as defined in clause (v)
below), or University Project IP (as defined in clause (iv) below).
Thereafter, if either party questions the other's characterization of
one or more Inventions, the other party shall promptly submit a
written explanation of its reasons for each such characterization(s).
The parties shall work in good faith to agree on the appropriate
characterization of any Invention(s) about which a dispute may arise.
ii. For purposes of this Agreement, the term "Sponsor Intellectual
Property" means Sponsor Confidential Information; Inventions
conceived or created solely by Sponsor (herein "Sponsor's
Inventions"); and Sponsor's other trade secrets, proprietary
information and other intellectual property (whether owned, acquired
or developed prior to, during or after the Term).
iii. Except for the limited Research License granted in Paragraph E.ii.
above, Sponsor retains all title, ownership, and exclusive right to
exploit Sponsor Intellectual Property.
iv. With respect to Inventions and other intellectual property conceived
or created solely by the Researchers or University in connection with
or as the result of the Project (herein, "University Project IP"),
University shall retain title and ownership of the same. At its
election, Sponsor shall acquire, and University shall grant to
Sponsor, a worldwide exclusive perpetual license to exploit and use
the University Project IP pursuant to one of the two options set
forth in subclause (a) or (b) below:
(a) Sponsor may acquire a paid-up license, wherein following
completion of the Project but in any event before commercial
exploitation of the University Project IP, Sponsor shall pay
University a single lump-sum amount of $120,000; or
(b) Sponsor may acquire a license, in consideration for such other
license or royalty fee (whether paid-up, calculated on a
percentage basis, or otherwise) on which the parties may reach
agreement in the future following good faith negotiation but
before commercial exploitation of the University Project IP.
In any event, if the University Project IP for which Sponsor seeks a
license is patentable, Sponsor shall pay all patenting costs
therefor.
v. With respect to Inventions and other intellectual property conceived or
created jointly by the Sponsor, on the one hand, and the Researchers
and/or University, on the other hand (such Inventions herein "Joint
Inventions", and such intellectual property herein "Joint IP"), Sponsor
and University shall jointly own the Joint Inventions and other Joint IP.
At its election, Sponsor shall acquire, and University shall grant to
Sponsor, a worldwide exclusive perpetual license to exploit and use the
Joint Inventions and other Joint IP (herein a "Joint IP License") pursuant
to one of the two options set forth in subclause (a) or (b) below:
(a) Sponsor may acquire a paid-up license, wherein following
completion of the Project but in any event before commercial
exploitation of the Joint Inventions or other Joint IP (as the
case may be), Sponsor shall pay University a single lump-sum
amount of $60,000; or
(b) Sponsor may acquire a license, in consideration for such other
license or royalty fee (whether paid-up, calculated on a
percentage basis, or otherwise) on which the parties may reach
agreement in the future following good faith negotiation but
before commercial exploitation of the Joint Inventions or other
Joint IP (as the case may be).
Except in the event Sponsor duly elects and acquires a Joint IP License
pursuant to subclause (a) or (b) above, Sponsor and University shall have
the joint right to exploit Joint Inventions and other Joint IP.
For purposes of this clause v., it is understood and agreed that any and
all Inventions and/or other intellectual property embodied in the Project
Description constitute Sponsor Intellectual Property, and shall not be
deemed to be Joint Inventions or other Joint IP.
In any event, if the Joint Invention(s) for which Sponsor seeks a Joint IP
License is/are patentable, Sponsor shall pay all patenting costs therefor.
H. PUBLICITY
Neither party to this Agreement shall mention the other party in
advertising or publicity of any manner without first obtaining the written
permission of the other party, which party shall have the right in its
discretion to withhold or grant permission, or to grant its permission
subject to conditions it deems appropriate.
I. TERMINATION
Either party may terminate this Agreement "for cause", if the breach of
the other party's obligation(s) or other "cause" has not been cured by the
other party after thirty (30) days written notice specifying the breach,
event or other cause and demanding its cure. In the event of termination,
the University will take immediate action to mitigate the costs incurred
under this Agreement and, the Sponsor shall pay all reasonable costs (up
to, but not exceeding, the amount accrued under the schedule in Paragraph
C.i. of this Agreement) incurred by the University prior to the effective
date of termination. Reasonableness of cost shall be determined by
applying those rules in Office of Management and Budget (OMB) Circular X-
00 in effect at the date of last signature of this Agreement. In the
event the payments by the Sponsor exceed the reasonable cost or accrued
scheduled payments, the University shall promptly reimburse the excess
payments to the Sponsor.
J. LIMITS OF LIABILITY
The University is and will be acting as an independent contractor in the
performance of this Agreement, and it shall be solely responsible where
found liable for the payment of any and all claims for loss, personal
injury, death, property damage, or otherwise, arising out of any act or
omission of its employees or agents, including the Researchers, in
connection with the performance of this Agreement.
K. AUTHORSHIP AND SPONSORSHIP
The Sponsor's support of this research Project shall be given appropriate
recognition in any publication of results by the University, subject to
the publication restrictions in Paragraph F. In the event of Sponsor's
cooperation in the performance of the Project, such cooperation shall be
given appropriate recognition in any publication by the University, again
subject to the publication restrictions in Paragraph F.
L. GOVERNING LAW
This Agreement shall be governed and construed under the laws of the
Commonwealth of Virginia.
January 29, 1998
Dr. Xxxxx XxXxxxx
Virginia Polytech Institute
Dear Xxx:
Attached for your consideration is an R&D concept whose execution at VPI could
significantly advance our understanding of cure chemistries and composite
morphology for fluoroelastomer/fluoroplastic microparticulate blends.
This work may well be one that could be conducted by a graduate student with the
available analytical and processing resources and expertise available at VPI,
resources which we do not presently have.
I hope we can discuss that possibility during my visit to VPI with Xxxx Xxxxxxxx
on Friday, September 19, 1997.
Best regards,
Xxxx Xxxxxxxxxxx
Director of R&D
PROPOSED PROGRAM: CHEMFAB/VPI STUDIES OF MICROPARTICULATE BLENDS OF
FLUOROPOLYMERS
Background
The potential for obtaining new forms of polymeric compositions with novel and
commercially attractive performance features by blending separately polymerized
polymers in aqueous microparticulate (sub-micron sized) forms is under
investigation at Chemfab Corporation. Such simple blends lend themselves to
isolation by removal of water to yield processible solids in physical forms such
as thin cast films (including multi-layer films) and coarse, but readily
compressible agglomerates, both of which can be further processed through
relatively low temperature, low pressure forming (such as compression molding or
extrusion at 100 degrees C). Such blending facilitates the incorporation of
elastomeric and/or thermoplastic polymers with each other, as well as with
homogeneously distributed, finely divided, fillers or reactive chemicals, (e.g.
rubber curatives or co-agents).
It is believed that such a process can yield attractive combinations of elasto-
plastic mechanical behavior in finished parts while exhibiting a broad range of
physical properties including wear, abrasion, and frictional characteristics,
chemical resistance and thermal range in end-use.
Since the reactivity of elastomeric constituents with curative components is
likely to play a significant role in determining both finished properties and
process rheology, it is desirable to identify preferred curatives for specific
polymeric compositions and to observe their effect on both process rheology and
morphological changes taking place during the process.
Program
Fixing polymeric composition to include a single fluoroelastomer (Fluorel (R)
terpolymer) and no more than two fluoroplastics (PTFE and FEP), at a fixed
relative abundance of fluoroelastomer (60 weight percent), it is an objective
to identify at least two preferred curatives for such blended compositions: one
should be water soluble for compatibility with solids isolation from an aqueous
colloid, and the other should be water insoluble It is highly desirable that
good compression set in "finished" (cured sheet) parts be an important criteria
of acceptable curative performance. CHEMFAB will provide the latex and
dispersion raw materials. VPI will identify and procure curatives.
It is also an objective that initial isolation of processible solids from
blended aqueous systems include two isolation methodologies to yield cast film
and "coagulated powder", respectively. Procedures for both of these isolation
methodologies will be proved by CHEMFAB.
Evaluation of properties of "finished" compositions can be obtained on simple
compression-molded slabs (30-60 mils in thickness). It is anticipated that the
selection of curative chemistry types will be important determinants of the
actual molding conditions and it is expected that VPI will identify/optimize
them.
Rheological characterization of the isolated solids should include "typical
rubber processing" information (e.g. oscillating disk rheology) as well as
"typical plastic processing information" (e.g. capillary rheology data).
Extrudates from such rheometry can also serve to provide specimens to examine
changes in morphology as a function of shear rate and temperature. It is
anticipated that important changes in the PTFE morphology ("fibrillation"
and/or orientation) will be observable and to some degree quantifiable as will
the crystalline conditions of the PTFE and FEP.
Slabs of the "finished" compositions can be used for such observations as well
as for characterization of properties such as tensile stress/strain behavior,
degree of swell in methanol, wear and abrasion behavior, durometer, etc., for
both "as made" and heat-aged specimens.
It is hoped that CHEMFAB's initial exploratory efforts and current understanding
of such systems up through isolation of solids will allow VPI to focus on
curative selection and morphological structure as it affects process and
finished part performance.
It is our objective to advance such understanding substantially over the next
four to six months or sooner if possible. Our own investigations will continue;
we expect from time to time to submit specimens for your morphological
characterization to guide our own efforts as well.
We look forward to a mutually beneficial relationship, and especially to new,
commercially valuable materials.
CHEMFAB / VPI STUDIES OF MICROPARTICULATE BLENDS OF FLUOROPOLYMERS
-------------------------------------------------------------------
SCHEMATIC FLOWCHART
Aqueous Compatible ------ Cast Isolation ----Molded Part
Cure System Process
|
|
Fluoroplastic ------|
(PTFE) |
| |
| Aqueous Incompatible ---- Coagulation -------Molded Part
| Cure System Isolation Process
|
Continuous Phase Polymer ------|
(Fluoroelastomer) |
|
| Aqueous Compatible ------ Cast Isolation ----Molded Part |
| Cure System Process
| |
Fluoroplastic ------|
(FEP) |
|
|
Aqueous Incompatible ---- Coagulation ------Molded Part
Cure System Isolation Process
