EXHIBIT H-2-A

Rights of Parties Regarding Intellectual Property for DOE

General IP Term [1]

 

Note: This exhibit shall be used by UC in contractual agreements executed for work under this Agreement with all DOE Laboratories except those managed by UC. 

 

A.                The Parties to this Agreement are the California Energy Resources Conservation and Development Commission (California Energy Commission or Sponsor), and the U.S. Department of Energy.

 

B.                 The U.S. Department of Energy has directed the Management and Operating <(M&O) Contractor of National Laboratory> hereinafter referred to as the "Facility Operator," to perform the work set forth in the Statement of Work for the Sponsor.

 

C.                It is understood by the Parties that the Facility Operator is obligated to comply with the terms and conditions of its M&O Contract No._____________ with the United States Government (hereinafter called the "Government") represented by the U.S. Department of Energy (hereinafter called the "Department" or "DOE") when providing goods, services, products, processes, materials, or information to the Sponsor under this Agreement. The obligations of the Facility Operator shall apply to any successor to the Facility Operator continuing the operation of the DOE facility involved in this Agreement.

 

 

Paragraph A. of the following Article II is to be deleted if the Sponsor will not be involved, in any manner, in the licensing of products or technologies arising from the work performed under this Agreement. For purposes of this determination, “involved” in the foregoing sentence includes actively marketing the use of products or technologies arising from the work performed under this Agreement. The determination to delete paragraph A may be supported by the Sponsor certifying that Sponsor will not be involved, in any manner (including the active marketing for the use of products), in the licensing of products or technologies arising from the work performed under this Agreement.

 

II.                Product Liability Indemnity

 

A.                To the extent permitted by California state law and except for any liability resulting from any negligent acts or omissions of the Government or the Facility Operator, the Sponsor agrees to indemnify the Government and the Facility Operator for 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 Facility Operator shall be considered assignees or licensees of the Sponsor, as a result of reserved Government and Facility Operator rights. The indemnity set forth in the paragraph shall apply only if the Sponsor shall have been informed as soon as completely as practical by the Facility Operator 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 Facility Operator and/or Government shall have provided all reasonably available information and reasonable assistance requested by the Sponsor. No settlement for which the Sponsor would be responsible shall be made without the Sponsor’s consent unless required by final decree of a court of competent jurisdiction.  Nothing herein shall preclude the Facility Operator from entering into agreements to indemnify the Sponsor and the Government from the liability, costs and expenses addressed in this clause provided that any such agreement shall not result in costs allocable or liabilities chargeable to the Government.

 

B.                 The Department of Energy shall require that Facility Operators of each National Laboratory conducting projects under this Agreement include in negotiated contracts with all of its licensees or transferees, if any, product liability indemnity for the Facility Operator, the Government, and the Sponsor. Additionally, the Sponsor shall include in negotiated agreements with all of its licensees or transferees, if any, product liability indemnity for the Government and the Facility Operator. When required, appropriate text for such provisions may be obtained from the DOE Patent Counsel.

 

III.             Intellectual Property – Limited

 

To the extent permitted by California State law, the Sponsor shall indemnify the Government and the Facility Operator 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 that is settled without the consent of the Sponsor unless required by a court of competent jurisdiction. Nothing herein shall preclude the Facility Operator from entering into agreements to indemnify the Sponsor and the Government from the liability, costs and expenses addressed in this clause provided that any such agreement shall not result in costs allocable or liabilities chargeable to the Government.

 


IV.              Notice and Assistance Regarding Patent and Copyright Infringement

 

A.                The Sponsor shall report to the Department and the Facility Operator, 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 Facility Operator, when requested by the Department or the Facility Operator, all evidence and information in the possession of the Sponsor pertaining to such claim.

 

B.                 The Facility Operator will not, in its supplying of the work under this Agreement’s work statement, knowingly infringe or misappropriate any copyrighted material of a third party.

 

V.                 Termination

 

It is agreed that any obligations of the Parties and the Facility Operator regarding Proprietary Information or other intellectual property and payment of royalties will remain in effect, despite early termination of the Agreement.[2]

 



[1] The provisions in this Exhibit H-2-A are taken directly from the modified Terms and Conditions for the California Energy Commission from the DOE Funds – In Agreement for Research and Development.  Only minor clarifying changes have been made for the purpose of the Agreement between the California Energy Commission and UC.  The provisions in Exhibit H-2-A are the same as the following articles in the Modified Terms and Conditions from the Funds – In Agreement for Research and Development: IA-C; XI; XII; XIII; and XX-B.

[2] This paragraph is the last sentence from Article XX.B of the Funds – In Agreement for Research and Development, Modified Terms and Conditions for the California Energy Commission.