EXHIBIT H-1

Rights of Parties Regarding Intellectual Property

 

Note: This exhibit shall be used by UC in contractual agreements executed for work under this Agreement with all Performing Institutions except DOE Laboratories. Exhibit H-2 (A, B, and C) shall be used with DOE Laboratories except those managed by UC.

 

 

A.Commissionís Rights in Deliverables

 

††††††††††† Deliverables and reports specified for delivery to the Commission under this Agreement shall become the property of the Commission.The Commission may use, publish, and reproduce the deliverables and reports subject to the provisions of subparagraph C.

 

B.                 Rights in Technical, Generated, and Deliverable Data

 

1)                 UCís Rights

 

Data (Technical, Generated and Deliverable) produced under this Agreement shall be the property of the UC, limited by the license retained by the Commission in 2) below, and the rights the Commission has in deliverables specified above in A).

 

2)                 Commissionís Rights

 

UC shall provide the Commission Contract Manager and any designated reviewer(s) with a copy of all Technical, Generated and Deliverable Data produced under the Agreement, when requested.

 

UC is not required to copy and submit data that the Commission Contract Manager has identified as being unusable to the Commission and the PIER program.

 

For instance, some data may not warrant routine copying and shipping because this raw data is too disaggregated or voluminous for practical application.Retention of such data at UCís or Performing Institutionís facility for inspection, review and possible copying by the Commission Contract Manager is expected to be a more efficient use of Commission staff and UCís time and efforts.

 

However, upon request by the Commission Contract Manager, UC or the Performing Institution shall provide the Commission Contract Manager and any designated reviewer(s) access to review Technical and Generated Data produced in the course of this Agreement that is not requested to be delivered to the Commission

 

For all Data (Technical, Generated and Deliverable) produced under this Agreement, the Commission retains a no-cost, non-exclusive, non-transferable, irrevocable, royalty-free, worldwide, perpetual license to use, publish, translate, produce and to authorize others to produce, translate, publish and use the Data, subject to the provisions of subparagraph C.

 

C.                 Limitations on Commission Disclosure of Information UC Considers Confidential

 

1)      Data provided to the Commission by UC, which Data the Commission has not already designated as confidential information and which UC seeks to have designated as confidential, or is the subject of a pending application of confidentiality, shall not be disclosed by the Commission except as provided in Title 20 CCR Sections 2505 and following (and amendments), unless disclosure is ordered by a Court of competent jurisdiction.

 

2)      It is the Commissionís intent to use and release project results such as deliverables and Data in a manner calculated to further PIER while protecting proprietary or patentable interests of the parties.Therefore, the Commission agrees not to disclose information that UC considers confidential without first providing a copy of the disclosure document for review and comment by UC.UC shall have no less than 10 working days for review and comment and, if appropriate, to make an application for confidential designation pursuant to Title 20 CCR Sections 2505 and following (and amendments) on some or all of the information.The Commission shall consider the comments of UC and use professional judgment in revising the disclosure document accordingly.

 

D.††††††††††† Exclusive Remedy

 

In the event the Commission intends to publish or has disclosed data the UC considers confidential, the UCís exclusive remedy is a civil court action for injunctive relief.Such court action shall be filed in Sacramento County, Sacramento, California.

 

E.†††††††† Waiver of Consequential Damages

 

IN NO EVENT WILL THE ENERGY COMMISSION BE LIABLE FOR ANY SPECIAL, INCIDENTAL, OR CONSEQUENTIAL DAMAGES BASED ON BREACH OF WARRANTY, BREACH OF CONTRACT, NEGLIGENCE, STRICT TORT, OR ANY OTHER LEGAL THEORY FOR THE DISCLOSURE OF CONFIDENTIAL INFORMATION OR INFORMATION THAT UC CONSIDERS CONFIDENTIAL, EVEN IF THE ENERGY COMMISSION HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGE.DAMAGES THAT THE ENERGY COMMISSION WILL NOT BE RESPONSIBLE FOR INCLUDE, BUT ARE NOT LIMITED TO, LOSS OF PROFIT; LOSS OF SAVINGS OR REVENUE; LOSS OF GOODWILL; LOSS OF USE OF THE PRODUCT OR ANY ASSOCIATED EQUIPMENT; COST OF CAPITAL; COST OF ANY SUBSTITUTE EQUIPMENT, FACILITIES, OR SERVICES; DOWNTIME; THE CLAIMS OF THIRD PARTIES INCLUDING CUSTOMERS; AND INJURY TO PROPERTY.

 

F.††††††††††† Limitations on UCís Disclosure of Agreement Data, Information, Reports and Records

 

1)                  UC will not disclose the contents of the final or any preliminary deliverable or report without first providing a copy of the disclosure document for review and comment to the Commission Contract Manager.The UC shall consider the comments of the Commission Contract Manager and use professional judgment in revising the deliverable or report accordingly.

 

2)                  After any document submitted has become a part of the public records of the State, UC may, if it wishes to do so at its own expense, publish or utilize the same, but shall include the legal notice and copyright information as applicable.

 

3)                  Notwithstanding the foregoing, in the event any public statement is made by the Commission as to the role of UC or the content of any preliminary or Final Report of UC hereunder, UC may, if it believes such statement to be incorrect, state publicly what it believes is correct.

 

4)                  No record that is provided by the Commission to UC for UCís use in executing this Agreement and which has been designated as confidential, or is the subject of a pending Application for Confidential Designation, except as provided in Title 20, California Code of Regulations (CCR), section 2505 and following (and amendments), shall be disclosed, unless disclosure is ordered by a court of competent jurisdiction.At the election of the Commission Contract Manager, UC, UCís employees and any subcontractor shall execute a ďConfidentiality Agreement,Ē supplied by the Commission Contract Manager.

 

5)                  UC acknowledges that each of its officers, employees, and subcontractors who are involved in the performance of this Agreement will be informed about the restrictions contained herein and to abide by the above terms.

 

G.††††††††††† Proprietary Data

 

Proprietary Data owned by the Performing Institution shall remain with the Performing Institution throughout the term of this Agreement and thereafter.The extent of Commission access to the same and the testimony available regarding the same shall be limited to that reasonably necessary to demonstrate, in a scientific manner to the satisfaction of scientific persons, the validity of any premise, postulate or conclusion referred to or expressed in any deliverable hereunder or to establish a baseline for repayment purposes.

 

H.††††††††††† Preservation of Data

 

Any Data which is reserved to the Performing Institution by the express terms hereof, and pre-existing Proprietary Data and Trade Secrets which has been utilized to support any premise, postulate or conclusion referred to or expressed in any deliverable hereunder, shall be preserved by the Performing Institution at the Performing Institution's own expense for a minimum of three (3) years after final payment, unless a longer period of record retention is stipulated.

 

I.††††††††††† Destruction of Data

 

Before the expiration of three years and before changing the form of or destroying any Data (including Technical, Generate, Deliverable, Proprietary Data and Trade Secrets), the UC shall notify Commission of any such contemplated action and Commission may, within thirty (30) days after said notification, determine whether it desires said data to be further preserved. If Commission so elects, the expense of further preserving said data shall be paid for by the Commission.UC agrees that Commission may at its own expense, have reasonable access to said Data throughout the time during which said data is preserved.UC agrees to use its best efforts to identify competent witnesses to testify in any court of law regarding said data or, at Commissionís expense, to furnish such competent witnesses.

 

J.††††††††† Patent Rights

 

1)                 Patent rights for any Subject Invention, whether actually patented or unpatented, will be the property of the Performing Institution whose employees or researchers are inventors of such invention pursuant to U.S. patent law, subject to the Commission obtaining a no-cost, nonexclusive, nontransferable, irrevocable, perpetual, royalty-free, worldwide license to use or have practiced such rights for or on behalf of the State of California for governmental purposes. Commission shall not purposefully enter into competition with a Licensee or take affirmative actions intended to effectively destroy the commercial market where a Licensee has introduced a Licensed Product.UC must obtain agreements to effectuate this clause with all persons or entities (except for the U.S. Department of Energy (DOE), as other terms apply), obtaining ownership interest in such patent rights.Previously documented (whether patented or unpatented under the patent laws of the United States of America or any foreign country) inventions are exempt from this provision.

 

2)                 UC will disclose to Commission, on a confidential basis, all Subject Inventions from each Performing Institution.The Commission may provide any suggestions to the UC concerning commercialization strategies and/or potential licensees for such invention within sixty (60) days of receiving the disclosure from the UC.UC shall send, by March 1 of each year, a report to the Commission that provides non-proprietary information on the status of any patents and/or licensing agreements executed or under negotiation for Subject Inventions and/or activities by the Performing Institution(s) and Licensee(s) related to the development and testing of Licensed Product.

 

3)                 March-in Rights.With respect to any Subject Invention in which the UC has acquired title, to the extent permissible under Federal laws and regulations, the Commission shall have the right to require the UC, an assignee or Licensee of such patent rights to grant a nonexclusive, partially exclusive, or exclusive license in any field of use to a responsible applicant, upon terms that are reasonable under the circumstances, and if the UC, assignee, or Licensee refuses such request, to grant such a license itself, if the Commission determines that such:

 

a)      Action is necessary because the UC, Licensee, or assignee has not taken, or is not expected to take within a reasonable time, effective steps to achieve practical application of the patent rights in such field of use; or

 

b)      Action is necessary to alleviate health or safety needs that are not reasonably satisfied by the UC, assignees, or their Licensees.

 

Final resolution, if not resolved under the ďDISPUTESĒ paragraph, will be settled in the courts of the State of California.The parties may refer to the Federal Governmentís procedures for handling march-in rights.

 

4)                 Future Reductions.The UC will submit in confidence within ninety (90) days after termination or expiration of the WA, a report listing inventions that are conceived, but not actually reduced to practice, in the performance of this Agreement.The Commission will identify in writing within sixty (60) days to the UC those conceptions that it desires to reserve rights to should the Performing Institution desire to actually reduce to practice those identified conceptions within forty-two (42) months after the termination or expiration of the WA.†† UC has an affirmative duty to report to the Commission those conceptions reduced to practice within the forty-two (42) month period.

 

K.Commission's Rights to Invention

 

UC, the Performing Institution and all persons and/or entities obtaining an ownership interest in Subject Invention(s) shall include within the specification of any United States patent application, and any patent issuing thereon covering a Subject Invention, the following statement:

 

†† ďThis invention was made with State of California support under California Energy Commission contract number 500-02-004.The Energy Commission has certain rights to this invention.Ē

 

L.†††††† Commissionís Interest in Inventions

 

Upon the perfecting of a patent application on any Subject Invention, UC will fill out and sign a Uniform Commercial Code (UCC.1) Financing Statement and submit it the Commission Contract Officer for complete processing.The Commission Contract Officer will review the UCC.1 for complete information and file the completed UCC.1 with the Secretary of Stateís Office.

 

M.                  Copyrights

 

1)                  Copyrightable Work first produced under this Agreement shall be owned by the UC, limited by the license granted to the Commission in 2) below.

 

2)                  UC agrees to grant, the Commission a royalty-free, no-cost nonexclusive, irrevocable, nontransferable worldwide, perpetual license to produce, translate, publish, use and dispose of, and to authorize others to produce, translate, publish, use and dispose of all Copyrightable Work first produced or composed in the performance of this Agreement.

 

3)                  UC will apply copyright notices to all deliverables using the following form or such other form as may be reasonably specified by Commission.

 

ď[Year of first publication of deliverable], [copyright holder].All Rights Reserved.Ē

 

4)††††††††††† Software

 

In the event software that is not a deliverable is developed under the WA, UC shall have the right to copyright and/or patent such software and grants the Commission a royalty-free, no-cost, non-exclusive, irrevocable, non-transferable, world-wide, perpetual license to produce and use for governmental purposes the software, and its derivatives and upgrades that may be developed by the authors within 42 months following the termination or expiration of the WA.The Commission shall not purposefully enter into competition with a Licensee or take affirmative actions intended to effectively destroy the commercial market where a Licensee has introduced a licensed product.

 

N.††††††† Intellectual Property Indemnity

 

UC will defend and indemnify Commission from and against any claim, lawsuit or other proceeding, loss, cost, liability or expense (including court costs and reasonable fees of attorneys and other professionals) to the extent arising out of any third party claim solely arising out of the negligent or other tortious act(s) or omission(s) by the UC, its employees, or agents, in connection with intellectual property claims against either deliverables or the UCís performance thereof under this Agreement.