Rights of Parties Regarding Intellectual Property for DOE


Rights in Technical Data-Use of Facility [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 following definitions shall be used:


1.                  “Technical Data” as used throughout this Agreement means recorded information regardless of form or characteristic, of a scientific or technical nature. It may, for example, document research; document experimental, developmental, demonstrations, or engineering work; or be usable or used to define a design or process; or to procure, produce, support, maintain, or operate material. The data may be graphic or pictorial delineations in media such as drawings or photographs, test specifications or related performance or design type documents or computer software (including computer programs, computer software data bases, and computer software documentation).


2.                  “Generated Information” means information first produced in the performance of this Agreement.


3.                  “Proprietary Information” means information which is developed outside of this Agreement at private expense, is marked as Proprietary Information, and embodies (1) trade secrets or (2) commercial or financial information which is privileged or confidential under the Freedom of Information Act (5 U.S.C. 552 (b)(4)).


a.                   A trade secret is any formula, plan, pattern, process, tool, mechanism, compound, procedure, production data, or compilation of information which is not patented and which is generally known only to certain individuals with a commercial concern and are using it to fabricate, produce or compound an article of trade or a service having commercial value and which gives its user an opportunity to obtain a business advantage over competitors who do not know or use it.


b.                  Commercial or financial information is information about the operation of a specific business. It includes information concerning the cost and pricing of goods, supply sources, cost analyses, characteristics of customers, books and records of the business, sales information including mailing lists, business opportunities, information regarding the effectiveness and performance of personnel, and information incidental to Agreement administration.

4.                   “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.


5.                  “Deliverable” data is that which, under the terms of this Agreement, is required to be delivered to the Sponsor.


6.                  “Copyrighted Project Work” means any copyrightable work as defined under U.S. copyright law that is first created by the DOE and Facility Operator in the performance of this Agreement, is not a scholarly work, and to which the Facility Operator has acquired the rights to assert copyright in accordance with its M&O Contract with the U.S. Department of Energy.


B.                 The Sponsor agrees to furnish to the DOE and Facility Operator or leave at the facility that information, if any, which is (1) essential to the performance of work by the Facility Operator personnel or (2) necessary for the health and safety of such personnel in the performance of the work. Any information furnished to the DOE and Facility Operator shall be deemed to have been delivered with Unlimited Rights unless marked as Proprietary Information. The Sponsor agrees that it has the sole responsibility for appropriately identifying and marking all documents containing Proprietary Information, whether such documents are furnished by the Sponsor or are incorporated within report(s) generated under this Agreement and made available to the Sponsor for review.


If Proprietary Information is disclosed orally, electronically, visually, or in any other intangible form, it shall be identified as such, at the time of disclosure and confirmed in writing within ten (10) days as being Proprietary Information.


C.                 The Sponsor, Facility Operator, and the Government shall have Unlimited Rights in all Generated Information, except for information which is disclosed in a Subject Invention disclosure being considered for patent protection or information which is marked as either Proprietary Information or copyrighted in accordance with the provisions set forth herein below. Subject Invention information which may be disclosed to the Sponsor prior to issuance of a patent shall be treated as confidential in accordance with 35 U.S.C. 205 and shall not be further disclosed by the Sponsor during pendency of the patent application.


D.                 The Government and Facility Operator agree not to disclose properly marked Proprietary Information of the Sponsor without written approval, except to

Government employees who are subject to the statutory provisions against disclosure of confidential information set forth in the Trade Secrets Act (18 U.S.C. 1905).


E.                  The Sponsor is solely responsible for the removal of all of its Proprietary Information from the facility by or before termination of this Agreement. The Government and Facility Operator shall have Unlimited Rights in any Proprietary Information which is incorporated into the facility or equipment under this Agreement to such an extent that the facility or equipment is not restored to the condition existing prior to such incorporation. The Government and Facility Operator shall have Unlimited Rights in any information which is not removed from the facility by termination of this Agreement.


F.                  The Sponsor has the right to obtain from the DOE through its Facility Operator as a deliverable, a copy of all Technical Data first produced in performance of this Agreement which the Sponsor has not excluded as being unusable to the PIER Program. The Sponsor agrees that the Facility Operator will also provide the Department of Energy with a nonproprietary description of the work performed under this Agreement.


G.                 Copyrights. The Sponsor may assert copyright in any of its Generated Information. Except for software which is separately treated hereinbelow and to the extent the Facility Operator is given permission to assert copyright in accordance with its M&O Contract with the U.S. Department of Energy, the Sponsor is hereby granted a royalty-free, non-exclusive, irrevocable, non-transferable, worldwide license to produce, translate, publish, distribute, duplicate, exhibit, prepare derivative works, perform, use and dispose of, and to authorize others to produce, translate, publish, use, distribute, duplicate, exhibit, prepare derivative works, perform and dispose of all Generated Information copyrighted by the Facility Operator for State governmental purposes. Subject to the other provisions of this article, and to the extent that copyright is asserted, the U.S. 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 Generated Information copyrighted by the Facility Operator or the Sponsor.


1.                  In the event software is first produced in performance of this Agreement, Facility Operator shall have the right to copyright and/or patent such software in accordance with its M&O Contract with the U.S. Department of Energy and hereby grants the Sponsor a royalty-free, no-cost, non-exclusive, irrevocable, non-transferable, worldwide, license to produce and use the software, and to prepare derivative works for State governmental purposes.


2.                  For all Facility Operator Generated Information, which becomes a Copyrighted Project Work, the Facility Operator will apply a notice in accordance with 17 U.S.C. 401 et seq.


H.                 The terms and conditions of this article shall survive the Agreement, in the event that the Agreement is terminated in whole or in part before completion of the Statement of Work.

[1] The Provisions of this Exhibit H-2-C are taken directly from Appendix C (California Energy Commission – Rights in Technical Data – Use of Facility) from the DOE Funds-In Agreement for Research and Development