Team for Research in Ubiquitous Secure Technology (TRUST)

A CITRIS Center

Industry Membership Agreement

This membership agreement (“Agreement”) is made by and between The Regents of the University of California, a California Corporation, whose legal address is 1111 Franklin Street, 12th Floor, Oakland, CA 94607-5200, acting through its Industry Alliances Office at the University of California, Berkeley, 2150 Shattuck Avenue, Suite 950, Berkeley, CA 94720-1610, (hereinafter called “University”), parent organization for the Team for Research in Ubiquitous Secure Technology (hereinafter called “TRUST”), and ______, with primary business address of ______(hereinafter called “Company”).

This agreement identifies the terms of sponsorship and collaboration between the University and all companies as Members of TRUST.

A. Notices. Company has the following contact people, to whom University will direct any authorized and required notices under this Agreement:

Scientific/Technical:

Name: / Phone:
Title: / E-mail:
Address:

Financial/Administrative:

Name: / Phone:
Title: / E-mail:
Address:

B. Membership Level. Company wishes to join at the following level, to become a Member of TRUST:

Affiliate Partner Premium Partner

C. Background. TRUST is a cooperative research center supported by government and member companies. It is devoted to the development of a new science and technology that will radically transform the ability of organizations (software vendors, operators, local and federal agencies) to design, build, and operate trustworthy information systems for our critical infrastructure.

D. Program Participants. This agreement’s operations for TRUSTwill be operated by certain faculty, staff, and students at the University of California, Berkeley. As of the Effective Date, faculty members who are affiliated with TRUST are the professors listed in Appendix A of this Agreement (“TRUST Faculty Members”). TRUST Faculty Members may be affiliated with other research programs and centers, and be engaged in non-TRUST research.

E. Program Management. TRUST operations shall be administered by the then-current TRUST board of directors. Decisions regarding distribution of membership funds contributed under this agreement shall be made by UC employees working in TRUST. New TRUST Faculty Members may be added by TRUST. TRUST will also maintain a TRUST Industrial Advisory Board, which provides guidance to TRUST on investment of research resources, on research direction, and on administration and organization of the center. The Industrial Advisory Board may also suggest research topics to TRUST Faculty Members, although the TRUST board of directors will make the final decisions.

F. Membership and Membership Fees. Industry members may join at one of three levels, each with an associated annual fee (“Membership Fee”); such fees shall become available as program funds to TRUST. Benefits and obligations of such membership are listed on Appendix B, as updated from time-to-time with the review of the Industrial Advisory Board and the approval of TRUST and as approved in writing by University. In the second and subsequent years of the program, Indirect Costs, a percentage of the Membership Fees payable for the relevant year, will be assessed by the University, and hence will not available directly as program funds for TRUST. The percentages used to calculate the Indirect Costs are specified in Appendix F of this Agreement.

G. Membership Fee Payment. The Membership Fees should be made by check payable to “The Regents of the University of California”. Each check should bear a reference to “TRUST Membership Fees.” Payment of Membership Fees shall be made by June 30 of each year for membership to apply in the following fiscal year (July 1 through June 30), or in four equal quarterly installments due on June 30, September 30, December 31, and March 31 of each year of sponsorship. Fees will be prorated according to the effective date of this Agreement. Company selects ANNUAL or QUARTERLY payments (circle one).

Payments should be mailed to:

Extramural Funds Accounting

ATTN: Cynthia Kane, Manager

2195 Hearst Avenue, Room 130

Mail Code 1103

University of California

Berkeley, California 94720-1103

H. Membership Term. The period of performance of this agreement is for five years beginning ______. This term may be extended upon mutual concurrence of the parties. Membership fees are not refundable.

Because research of the type to be done by TRUST takes time and research results may not be obvious immediately, Company is expected to join TRUST with the intention of remaining a fee-paying member for at least three years. However, either party may terminate membership by written notice to the other at least ninety (90) days prior to the end of the fiscal year, and fees for the following year will not be due. For the University, notice should be sent to: Associate Director, Industry Alliances Office, 2150 Shattuck Ave Suite 950, Berkeley CA 94720 with a copy to Professor Shankar Sastry, TRUST Director, 337 Cory Hall #1770, Berkeley, CA 94720-1770. For the Company, notice may be sent to the Technical Contact identified in this Agreement.

Members who join after the date of this agreement may be subject to additional fees if they wish to exercise benefits to intellectual property as defined in this Agreement.

I. Visiting Industrial Fellows (VIF). A VIF is a full-time employee of the Company, paid by the Company, with health insurance and other benefits provided by the Company, who participates in research projects supported with TRUST funds at the University of California, Berkeley. Company, provided Company is a member at the Partner or Premium Partner level, may request that one (1) VIF participate in TRUST at a time. The Company may nominate a VIF, and TRUST approves the nomination if the individual is qualified to participate in TRUST research. A VIF is required to sign the University VIF agreement attached as Appendix E. Company may request additional VIFs participate in TRUST, and TRUST will review the request.

A VIF is eligible for all the features the University identifies in the Visiting Industrial Fellow program, such as a University ID card, which gives access to many general facilities commonly available to University employees (such as libraries and sports facilities). VIFs will be provided with a desk, telephone access, and computer networking services. VIFs are also welcome to participate in University and TRUST seminars and colloquia.

J. Intellectual Property.

TRUST Intellectual Property. TRUST is a collaborative research effort, with several participating institutions and partner companies, and several sources of funding, including funding from the National Science Foundation under grant number ______. It is focused on long-term, pre-competitive research. As such, TRUST is not expected to conduct narrowly targeted development efforts for the direct commercial benefit of individual partner companies. Members have rights to TRUST intellectual property as identified on Appendix C.

University Partner Intellectual Property. Inventions created jointly between the University of California, Berkeley and other universities may not be available under the terms identified on Appendix C.

Visiting Industrial Fellows and Intellectual Property. Visiting Industrial Fellows must sign the University VIF agreement attached as Appendix E. Company acknowledges that Visiting Industrial Fellows must disclose inventions that the VIF conceives and reduces to practice during the course of the VIF’s involvement in University research projects fully supported by funds from the TRUST Program to the University’s Office of Technology Licensing (“OTL”) in order for the University to determine its rights and obligations in the invention.

After determination by the OTL that the University has an interest in an invention naming a VIF as an inventor, the OTL may require the VIF to assign his/her rights solely to the University or jointly to the University and the Company. In determining what assignment will be sought, the University will examine funding sources, named inventors,governing statutes/regulations, if any, and use of resources to determine University’s ownership interests. The University has obligations to the federal government under the Bayh-Dole Act, which require inventions conceived or first actually reduced to practice with federal funding to be solely owned by the University. If the University requires title to be assigned solely to University on a specific invention, and provided the University has no conflicting obligations, the University will grant to the Company of the inventing VIF a royalty-free, non-exclusive license to make, have made, use, sell, import, and offer for sale the specific invention. If University and Company are joint owners of a specific invention, responsibilities and obligations for that given invention shall follow U.S. federal law of joint ownership of a patent. If the University has an ownership interest in a specific invention, but elects not to file a patent application(s), University shall discuss options with Company.

Prior University Obligation: All licenses granted in this Agreement shall be subject to University’s obligations under federal and state laws, policies and practices (“Obligations”). University will use reasonable care to promptly inform Members of any changes in Obligations that would preclude University from granting licenses to the full extent permitted in this Agreement. In the event of a conflict between such Obligations and the terms of this Agreement, University agrees to grant the rights contemplated herein to the maximum extent permissible while meeting Obligations, and will implement a modification to Appendix C.

No party to this Agreement expressly or impliedly grants a license to its intellectual property except as expressly set forth herein.

K. Confidential Information. TRUST may, from time to time, engage in projects that involve use of proprietary or sensitive information or products from a Member. Before such information or products are provided to TRUST, the Member and University will negotiate the required non-disclosure agreements. Absent such separate agreements, all information received by the University from all Members is assumed to be non-confidential.

Company agrees that University and partner universities may post Company’s name and affiliation with TRUST on TRUST websites and communications and other University communications regarding TRUST and industry collaboration.

L. General. This Agreement shall be governed by, and construed in accordance with, the laws of the State of California applicable to contracts executed in and to be performed entirely within that state without application of its conflict of laws. The provisions of this Agreement are severable, and in the event that any provision of this Agreement is determined to be invalid or unenforceable under applicable law, such invalidity or enforceability shall not in any way affect the validity or enforceability of the remaining provisions hereof. Neither party may assign its rights or delegate its obligations hereunder in whole or in part without the prior written consent of the other party and any attempt to make such assignment or delegation in contravention hereof, shall be null and void. In making and performing this Agreement, the parties act and shall act at all times as independent contractors and nothing contained in this Agreement shall be construed or implied to create an agency, partnership or employer and employee relationship between California and Company. At no time shall one party make commitments or incur any charges or expenses for or in the name of the other party. This Agreement may be modified only by a written agreement executed by both parties, and in conformance with identical corresponding changes to all other agreements signed by Members. The observance of any provision of this Agreement may be waived (either generally or in any particular instance and either retroactively or prospectively) only with the written consent of the waiving party signed by a duly authorized officer. This Agreement states the entire contract between the parties in respect to the subject matter of this Agreement and supersedes any previous or contemporaneous written or oral representations, statements, negotiations, or agreements relating to the subject matter hereof.

In witness whereof, the parties hereto have executed this Agreement in duplicate originals by their duly authorized representatives.

Company / University
By: / By:
Name: / Name:
Title: / Title: Associate Director, Industry Alliances Office
Date: / Date:

Appendix A: TRUST Faculty List

Team for Research in Ubiquitous Secure Technology (TRUST)

A CITRIS Center

TRUST Industry Membership AgreementPage 1 of 12

Key TRUST faculty at Berkeley:

  • Venkatachalam Anantharam
  • Ruzena Bajcsy
  • David Culler
  • Thomas A. Henzinger
  • Anthony Joseph
  • Edward A. Lee
  • Daniel McFadden
  • George Necula
  • Pamela Samuelson
  • Ion Stoica
  • Justin Douglas Tygar
  • Hal Varian
  • David Wagner
  • Steven Weber

Appendix B: Membership Benefit & Obligation Information

Team for Research in Ubiquitous Secure Technology (TRUST)

A CITRIS Center

Industry Membership Agreement

Type of Member / Annual Fee / Benefits
Affiliate / No less than $75,000 /
  • Invitation to periodic reviews of TRUST.
  • Access to selected internal TRUST websites.
  • Access to publications, reports and presentations by TRUST researchers.
  • Access to students and faculty in TRUST.
  • An annual research report of the activities of TRUST.
  • Advance notice of intellectual property created by TRUST.
  • Intellectual property access as defined in the agreement.
    (See Appendix C(1))

Small or Minority-Owned Business / No less than $10,000 / All of the benefits of an Affiliate
Partner / No less than $150,000 / All of the benefits of an Affiliate, plus the following:
  • Opportunity to nominate a member of the Industrial Advisory Board of TRUST on an annual basis.
  • Opportunity to place visitors, as Visiting Industrial Fellows (VIF), at the University using the process identified in section I. VIF appointments are subject to standard University of California policies; see section I for further information.
  • Company may request VIF status for additional people, and TRUST will review and provide approval conditions.
  • Selected early access to software developed by TRUST. When possible, and for software projects within TRUST that use networked version control systems (such as CVS) for collaborative software development, early access to pre-release development versions of the software is available.
  • Intellectual property access as defined in the agreement.
    (See Appendix C(2))

Premium Partner / No less than $300,000 / All of the benefits of a Partner, plus the following:
  • Intellectual property access as defined in the agreement.
    (See Appendix C(3))
  • No more frequently than once per year, if requested by the company a private research review meeting at the University or at a mutually agreeable site. Travel and related expenses for the participants, if any, will be covered by the individual Premium Partner.

Appendix C: Intellectual Property Rights

Team for Research in Ubiquitous Secure Technology (TRUST)

A CITRIS Center

Industry Membership Agreement

The objective of TRUST is to maximize the impact of its research. To achieve this, TRUST will maintain an open atmosphere that encourages early and frequent publication and other public dissemination of research results. Software will primarily be released using an open source license such as the BSD. Selected software, such as those subject to third party obligations, may be released under different licenses.

Patents are expected to be rare. For the purposes of this Agreement, inventions shall mean patentable subject matter conceived and reduced to practice in the performance of research funded solely by funds from the TRUST program and that is owned exclusively by the University (“Inventions”). Inventions may be subject to restrictions under P.L. 96-517, the Bayh-Dole Act.

Members in good standing at the time of the filing of a patent on an Invention receive the following benefits solely for Inventions, subject to the University’s ability to grant such licenses:

(1) Affiliate. Members in this category shall receive: advance formal notification to Company’s Technical Contact of licensing opportunities for Inventions; a non-exclusive, royalty-free license to patent rights filed to claim Inventions for internal purposes only (“Enterprise License”); and a time-limited option in patent rights to execute a non-exclusive license to make, use, have made, import, offer for sale and sell products practicing an Invention (“Commercial License”) in advance of such a license being made available to non-TRUST organizations.

(2) Partner. Members in this category have the right set forth in (1) above, and in addition shall receive a time-limited option to execute a standard non-exclusive royalty-free but fee-bearing Commercial License in advance of such a license being made available to non-TRUST organizations.

(3) Premium Partners. Members in this category have the rights set forth in (1) and (2), above, and in addition shall receive a time-limited option in patent rights to execute a standard non-exclusive no-cost Commercial License in advance of such a license being made available to non-TRUST organizations.

Patent Costs: All Members obtaining a license under this section shall pay a pro-rata share of out-of-pocket costs incurred by the University for preparation, filing and prosecution of patent applications and maintenance of resulting patents.

The University is not obligated to file a patent application on any Inventions without a commitment from at least one (1) Member to underwrite at least a pro-rata portion of the patent costs. If Member pays for patent costs in order to protect the patent rights in an Invention and those patent rights are later licensed to more than one Member or other third party, then such costs shall be shared among the licenses of the Invention on a pro-rata basis and the Member’s patent costs shall be reimbursed as a credit on a pro-rated, retroactive basis.

The University may offer non-Member for-profit companies licenses to patent rights filed to claim Inventions, but only after the time period for TRUST review has elapsed, and such licenses shall not be on more favorable financial terms than an equivalent license granted to a Member.

Appendix D: Software License Agreement

Team for Research in Ubiquitous Secure Technology (TRUST)

A CITRIS Center

Industry Membership Agreement

TRUST expects to create software modules and systems for modeling and design of secure and robust systems and their applications. Such software will primarily be made available broadly as a supplement to publication of papers as a mechanism for dissemination of research results. Software will primarily be released using an open source license such as the BSD. Selected software, such as those subject to third party obligations, may be released under different licenses. Software released under a BSD license would be released under terms substantially similar to these: