SPONSORED RESEARCH AGREEMENT

This Sponsored Research Agreement, effective as of______, ______is entered into by and betweenResearch Foundation of the City University of New York on behalf of The City College of New York, having a principal place of business at 230 West 41 Street, 7th Floor, New York, NY, and acting on behalf of The City University of New York and its various schools, colleges and institutes, being a not-for-profit educational corporation of the State of New York (“University”), and______, having its main office at ______, (“Sponsor”).

WHEREAS, the efforts contemplated by this Agreement are of mutual interest and benefit to the University and to the Sponsor, with further instructional and/or research objectives of the University, and may derive benefits for both the Sponsor and the University through inventions, improvements, and/or discoveries;

WHEREAS, the parties desire to enter into this Sponsored Research Umbrella Agreement to define certain terms and conditions relating to Projects which shall be described in Project Annexes that may be attached to this Agreement from time to time.

NOW THEREFORE, in consideration of the premises and mutual covenants contained herein, the parties agree to the following:

  1. Definitions.

1.1.“Sponsored Research Agreement” (SRA) or the “Agreement” shall mean the terms and conditions set forth in this SRA and any attachment referenced in the SRA and attached hereto or any Project Annex executed separately and supplemental to the SRA.

1.2.“Project” shall mean a specific task described by an associated scope of work funded under this Agreement and attached as an Annex hereto.

1.3.“Project Annex” shall be a separately executed document to be attached to this Agreement from time to time which shall indicate with specificity at least the following: Duration of the Project; Key Personnel for each party; cost and payment schedule; Field; and Scope of work for each Project. Each Project Annex must be reviewed and approved by University and Sponsor forexecution and incorporation into this Agreement.

1.4.“Field of Use” shall be specifically defined in a Project Annex for each Project. Generally, the Field of Use shall be that specific area of Sponsor’s commercial interest for each Project.

  1. Scope of Work

Upon review and approval of individual Projects by University, the University agrees to use reasonable efforts to perform such approved Projects which will be attached in the

Project Annexes.

  1. Key Personnel

Sponsor shall identify a Technical Coordinator, and University shall identify a Principal Investigator, for each Project. If for any reason the Principal Investigator or any other key personnel become unable to continue a particular Project, the University and Sponsor shall attempt to agree upon a successor. If agreement cannot be reached, such Project shall be terminated.

  1. Duration

Subject to the terms of any attached Project Annex, this Agreement shall be in effect for five (5) years from the Effective Date of this Agreement, and shall automatically renew for one additional term, unless terminated earlier pursuant to Article 16 herein. Any further extension or renewal of this Agreement shall be made at least sixty (60) days prior to the expiration of the original term.

  1. Costs
  2. It is agreed to and understood by the parties that the University shall be reimbursed for costs incurred in connection with the research up to the amount established by the budget and/or payment schedule specified in each Project Annex. Sponsor shall not be obligated to make any payment in excess of such amounts unless a particular Project Annex is modified in writing and executed by authorized representatives of the University and Sponsor. Within sixty (60) days of the termination or expiration of each Annex, the University shall submit a final financial report setting forth costs incurred for each Project Annex.
  3. All invoices must reference Sponsor’s purchase order and must be sent to:

______

______

______

University shall maintain complete and accurate accounting records, in a form in accordance with standard accounting practices for a university, to substantiate charges made hereunder. Sponsor shall have access to such records for purpose of audit and verification of such charges at mutually agreeable times during the term of this Agreement and for a period of one year after completion of each Project.

5.3.All checks shall be made payable to “Research Foundation of CUNY” and sent to Accounts Receivable at the address specified in Article 19. Payments shall be made according to the budget and/or payment schedule set forth in each Project Annex. For identification purposes, all checks shall identify University’s Project account number as issued by the Research Foundation so that the proper Project can be credited.

  1. Technical Reports
  2. Progress reports shall be furnished to the Sponsor at mutually agreeable times throughout the term of each Project (but in any event at least a quarterly basis). A final report setting forth the accomplishments and significant findings shall be submitted by the University to Sponsor within ninety (90) days after the completion of each Project.
  3. During the term of this Agreement, representatives of the University will meet as needed with representatives of the Sponsor at times and places mutually agreed upon to discuss the progress and results, as well as ongoing plans, or changes therein, of each Project.
  4. Other than as otherwise set forth in this Agreement, all research results generated by University in the performance of this Agreement are owned by the University. Subject to Article 9, Sponsor shall have the right to use such research results as negotiated.
  1. Confidential Information
  2. “Confidential Information” shall mean that information provided by one party to the other party in writing and clearly marked as confidential by the disclosing party in connection with, and during the term of this Agreement. Confidential Information shall be disclosed in writing or, if disclosed orally, shall be confirmed in writing, identified as “Confidential” or similar marking by the disclosing party and delivered to the receiving party within thirty (30) days following oral disclosure. Confidential Information shall not mean any information which the receiving party can demonstrate was previously known to it without obligation of confidence, without breach of this Agreement, is or was in the public domain, is or was disclosed to it from a third party without obligation of confidence, or is developed by it independent of the work performed under this Agreement or Confidential Information provided by the disclosing party.
  3. The receiving party agrees to hold all Confidential Information in trust and confidence for the disclosing party and not to use Confidential Information other than for the benefit of the disclosing party in the performance of this Agreement. Except as may be authorized by the disclosing party in writing for such period of time, the receiving party agrees not to disclose any Confidential Information, by publication or otherwise, to any person other than those persons whose services the receiving party requires who have a need to know the Confidential Information for purposes of carrying out the terms of this Agreement, and who agree in writing to be bound by, and comply with the provisions of this Article 7.
  4. In the event of a loss of any items containing Confidential Information, the receiving party shall promptly notify the disclosing party in writing.
  5. The above obligations set forth in this Article 7 shall terminate five (5) years from the date of disclosure of such Confidential Information to the receiving party hereunder.
  6. Publications

8.1.Sponsor recognizes that under University policy, the University shall have the right, at its discretion to release information or to publish any material resulting from the research, provided that such material does not include any Sponsor Confidential Information and that such publication would not disclose or otherwise jeopardize any potential patent rights, either U.S. or foreign, in technology developed hereunder.

8.2.Thirty (30) days in advance of the proposed publication date, the University shall furnish Sponsor with a copy of any proposed publication, including any student thesis or dissertation that includes information developed under this Agreement. Within thirty (30) days of receipt, Sponsor shall notify the University in writing if such proposed publication includes Sponsor Confidential Information or is related to any potential patent rights, and if so, Sponsor may request the University to delay publishing such proposed publication for a maximum of sixty (60) days from its receipt of the proposed publication in order to protect the potential patentability of any invention described therein.

8.3.The Sponsor will be given full credit and acknowledgment for any support provided to the University in any publication resulting from this Agreement, unless requested otherwise by Sponsor. The Sponsor will give credit to the University in any Sponsor submitted publications or press release resulting from this Agreement unless requested otherwise by University.

  1. Intellectual Property

9.1 Ownership of Intellectual Property

9.1(a)No party hereunder makes any claim to any other party’s technology or intellectual property existing prior to the Effective Date of this Agreement (collectively referred to as “Background Intellectual Property”). No rights in Background Intellectual Property are granted to any party unless expressly set forth in a written agreement signed by the parties

9.1(b)Any inventions or discoveries solely conceived and reduced to practice by one or more students, faculty members, or employees of University during the performance of a Project pursuant to this Agreement shall be owned by the University (collectively referred to as “University Intellectual Property”).

9.1(c)Any inventions or discoveries conceived and reduced to practice jointly by one or more students, faculty members, or employees of University with one or more employees of Sponsor during the performance of a Project pursuant to this Agreement shall be jointly owned by both parties (“Joint Intellectual Property”). Joint Intellectual Property shall be assigned by their respective inventors to University and Sponsor, each party having the same non-exclusive rights thereto, absent a signed agreement to the contrary.

9.1(d)Any inventions or discoveries solely conceived and reduced to practice by employees of Sponsor during the performance of this Agreement shall be owned by Sponsor (“Sponsor Intellectual Property”).

9.1(e)Any inventions or discoveries conceived or reduced to practice solely by one or more students, faculty members, and/or employees of University during the performance this Agreement but outside of the Field shall be owned by University (“Non-Field University Intellectual Property”) without any obligation to Sponsor.

9.2. Patents Filing and Patents Expenses

9.2(a)University shall promptly provide to Sponsor a confidential written disclosure of any invention or discovery under University Intellectual Property and Joint Intellectual Property first conceived during performance of a Project funded under this Agreement. Sponsor shall provide a confidential written disclosure of any invention or discovery under Joint Intellectual Property first conceived during performance of a Project funded under this Agreement.

9.2(b)Sponsor shall have a period of sixty (60) days from the date of mailing of any such University disclosure under 9.2(a) to request University to file on and prosecute any patentable subject matter for a patent application, domestic or foreign, based upon such disclosure. If Sponsor so requests, University thereafter shall engage patent counsel, reasonably acceptable to Sponsor, and shall be responsible for filing, prosecuting and maintaining such patent applications and patents, all at Sponsor’s expense, wherein Sponsor shall pay any related expenses within 30 days of the date invoiced by or on behalf of University, wherein such invoices may include advanced payments for related foreign patent services as estimated by patent counsel, and wherein Sponsor’s failure to make timely payments therefor shall cause Sponsor to lose all rights related thereto. Sponsor agrees to assist in the preparation and prosecution of all patent applications, including providing access to the inventors as needed.

9.2(c)In the event Sponsor does not request University to file and prosecute any patent application in accordance with Article 9.2(b) within sixty (60) days of such disclosure, or chooses not to continue prosecution of a patent application, or not to maintain a patent and payment therefor, University shall have the option to file such patent application, continue prosecution of such patent application, or maintain such patent at its own discretion and expense, wherein any such patent applications and patents shall be excluded from Sponsor’s rights under Article 9.3, and wherein University shall have the right at its discretion to license any such patent applications and patents to third parties without further obligation to Sponsor, and wherein Sponsor shall assist University in the prosecution of any such patent matters (including by providing access to the inventors) at University’s cost as needed to protect University’s interest.

9.3License Option Election

9.3(a)By giving written notice to University within sixty (60) days after disclosure of any University Intellectual Property or Joint Intellectual Property per Article 9.2, Sponsor shall have the following rights:

(i)For University Intellectual Property and/or Joint Intellectual Property: Sponsor shall have an option to negotiate an exclusive, royalty-bearing, world-wide license to make, have made, use or sell products or practice any process under any University Intellectual Property and/or University’s interest in Joint Intellectual Property, in the Field Of Use. If after good faith negotiations, the parties fail to reach to an agreement on the license terms within ninety (90) days from the date of submission of the final report per Article 6.1 for the Project out of which the relevant Intellectual Property arises, then University shall be free to offer commercial license rights to any third party or to dispose of its inventions or other rights resulting therefrom in any manner as it deems appropriate and without any obligation to Sponsor other than promptly following its request to reimburse Sponsor for its costs incurred pursuant to 9.2(b).

(ii)If Sponsor fails to give written notice to University within sixty (60) days under Article 9.3(a), then UNIVERSITY shall have no further obligation to Sponsor as to that Intellectual Property and may license the UNIVERSITY’s interest in such Intellectual Property to third parties in any manner as it deems appropriate and without any further obligation to Sponsor.

(iii)If Sponsor obtains any rights to University Intellectual Property and/or Joint Intellectual Property pursuant to this Agreement, Sponsor shall be responsible for the expenses of patent filing, prosecution and maintenance in the United States and any in foreign country in which Sponsor has rights, and shall lose such rights upon failure to pay relevant fees and expenses when due.

9.3(b)Any license granted to Sponsor pursuant to Article 9.3(a) hereof shall be subject, if applicable, to the rights of the United States government reserved under Public Laws 96-517, 97-256 and 98-620, codified at 35 U.S.C. 200-212, and any regulations issued thereunder.

9.3(c) Notwithstanding any of the foregoing, University retains the right to practice the subject matter of any intellectual property hereunder for educational and research purposes.

  1. Publicity

Neither party shall use the name or trademark of the other party for advertising purposes or share the content of this Agreement to another party without prior written approval from the other party. However, University has the right to publish the existence of this Agreement in its normal listing of University research activities. Sponsor has the right to publish the existence of this Agreement in its normal Press Releases, financial disclosures and other related legal and business matters.

11. Universities Obligations-Employees/Other

11.1.University will have an appropriate agreement with each of its employees, students or others whose services University may require, sufficient to enable University to comply with all the terms of this Agreement.

11.2Personnel provided by University are employees of University and will not for any purpose be considered employees or agents of Sponsor.

12.Warranties

UNIVERSITY MAKES NO WARRANTIES, EXPRESSED OR IMPLIED, AS TO ANY MATTER WHATSOEVER, INCLUDING, WITHOUT LIMITATION, THE CONDITION, ORIGINALITY, OR ACCURACY OF THE RESEARCH OR ANY UNIVERSITY INTELLECTUAL PROPERTY OR JOINTLY-OWNED INTELLECTUAL PROPERTY OR PRODUCT(S), WHETHER TANGIBLE OR INTANGIBLE, CONCEIVED, DISCOVERED, OR DEVELOPED UNDER THIS AGREEMENT; OR THE OWNERSHIP, MERCHANTABILITY, OR FITNESS FOR A PARTICULAR PURPOSE OF THE RESEARCH OR ANY SUCH UNIVERSITY INTELLECTUAL PROPERTY OR JOINTLY-OWNED INTELLECTUAL PROPERTY OR PRODUCT. UNIVERSITY WILL NOT BE LIABLE FOR ANY DIRECT, INDIRECT, CONSEQUENTIAL, OR OTHER DAMAGES SUFFERED BY SPONSOR, ANY LICENSEE, OR ANY OTHERS RESULTING FROM THE USE OF THE RESEARCH OR ANY SUCH UNIVERSITY INTELLECTUAL PROPERTY OR JOINTLY-OWNED INTELLECTUAL PROPERTY OR PRODUCT.

UNIVERSITY MAKES NO REPRESENTATION OR WARRANTY REGARDING ACTUAL OR POTENTIAL INFRINGEMENT OF PATENTS, COPYRIGHTS OR OTHER INTELLECTUAL PROPERTY OF THIRD PARTIES, AND SPONSOR ACKNOWLEDGES THAT THE AVOIDANCE OF SUCH INFRINGEMENT IN THE DESIGN, USE AND SALE OF PRODUCTS AND PROCESSES RELATED TO THE RESEARCH WILL REMAIN THE RESPONSIBILITY OF SPONSOR.

13. Indemnification

To the maximum extent permitted by law, Sponsor hereby agrees to indemnify, defend, and hold harmless University and its present and former officers, directors, governing board members, employees, agents, and students from any claim, loss, cost, expense, damage or liability of any kind, including reasonable attorney's fees and expenses, arising out of or connected with its use of the University Intellectual Property or Jointly-Owned Intellectual Property.

Without limiting the foregoing, Sponsor agrees to hold harmless, indemnify and defend University from all claims, liabilities, demands, damages, expenses and losses (including reasonable attorney fees and expenses of litigation) arising out of the use by Sponsor, or by any third party acting on behalf of or under authorization from Sponsor, of any University Intellectual Property or Jointly-Owned Intellectual Property subject to possible license hereunder or out of any use, sale or other disposition by Sponsor, or by any third party acting on behalf of or under authorization from Sponsor, of products made or developed as a result of information or materials received from University. The provisions of this paragraph shall survive termination or expiration of this Agreement.

14. Independent Entities

Neither party is authorized or empowered to act as an agent for the other for any purpose and shall not on behalf of the other enter into any contract, warranty, or representation as to any matter. Neither shall be bound by the acts or conduct of the other.