DETERMINATION OF
INTELLECTUAL PROPERTY RIGHTS AGREEMENT
This
Determination of Intellectual Property Rights Agreement
(“Agreement”) is made as of the first day of July, 2002
(“Effective Date”), between the University of
Rochester, an educational institution chartered by the State of New
York with offices at 518 Hylan Building, Box 270140, Rochester, New
York 14627-0140 (“University”), and VirtualScopics,
LLC, a for-profit New York limited liability company with offices
at 350 Linden Oaks, Rochester, New York 14625
(“VirtualScopics”).
University and VirtualScopics are parties to a
certain Sale of Intellectual Property Agreement, dated April 5,
2002, pursuant to which VirtualScopics acquired rights in and to
University patents and patent applications listed in Attachment
A.
WHEREAS, University permits its faculty members
under its “Policy on External Activities Relating to Research
and Scholarship” to pursue consulting relationships with
external organizations; and
WHEREAS, Kevin J. Parker, Ph.D (“Dr.
Parker”) has a faculty appointment at University and is a
co-inventor of the patents and patent applications listed in
Attachment A; and
WHEREAS,
VirtualScopics represents that it has retained Dr. Parker as a
consultant pursuant to a Consulting Agreement dated July 1, 2002
("Consulting Agreement") to assist VirtualScopics in development of
image-based biomarkers and related software for measuring
image-based biomarkers as described in detail in Attachment B
(hereinafter “Fields of Invention”), as amended from
time to time, and that such Consulting Agreement will contain a
representation from Dr. Parker that the Consulting Agreement is not
inconsistent with University policies pertaining to consulting
services by full-time faculty members, copies of which are attached
to this Agreement at Attachment C (the “University
Policies”);
THEREFORE, in consideration of the premises and
promises in this Agreement, the Parties agree as
follows:
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“VirtualScopics' Subject
Invention(s)” means all intellectual property, including
without limitation those listed on Attachment A and
Attachment B and all technical information, know-how,
copyrights, models, drawings, specifications, prototypes,
inventions and software, whether or not patentable, that is
discovered, created or reduced to practice by Dr. Parker in
performance of work on behalf of VirtualScopics under his
consulting arrangement with VirtualScopics.
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2.
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VirtualScopics
acknowledges that Dr. Parker is a faculty member at the University
and as such performs work for the University in fields other than
those fields that are within the Fields of Invention or the
VirtualScopics' Subject Inventions.
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3.
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For the purpose
of complying with the terms of this agreement, the Parties agree to
disclose to each other, in writing, each and every VirtualScopics'
Subject Invention during the term of this Agreement. The Parties
will disclose VirtualScopics' Subject Inventions to each other
within thirty (30) days after Dr. Parker first discloses the
invention in writing to the person(s) responsible for invention
matters of the disclosing Party. In addition, each Party will
disclose to the other, in writing, any VirtualScopics' Subject
Invention disclosed to it by Dr. Parker during the time period
beginning on the Effective Date and ending on the date of execution
of this Agreement by both Parties, within thirty (30) days of such
execution. All written disclosures of such inventions shall contain
sufficient detail of the invention and identification of any
statutory bars, and shall be marked confidential.
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4.
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Each Party
agrees that all information disclosed hereunder is Confidential
Information ("Confidential Information") and shall be held in the
strictest confidence. Each Party agrees that it will use the
Confidential Information disclosed to it by the other Party under
this Agreement only for the purpose of monitoring and enforcing
compliance with their respective intellectual property policies,
and will not disclose such Confidential Information to a third
party; provided that a Party may so disclose Confidential
Information that: (a) was independently known by it prior to the
disclosure by the other Party; (b) becomes generally known to the
public through no act or omission of the Party or any other party
with no duty to keep such information confidential; (c) has been or
is made available to the Party by a third party having the lawful
right to do so without breaching any obligation to either Party; or
(d) the Party is required to disclose pursuant to a judicial or
administrative order, provided that the Party shall notify the
disclosing Party of the order and cooperate with the disclosing
Party in obtaining a protective order if it opts to seek one. This
provision shall survive the expiration or termination of this
Agreement.
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5.
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The University
agrees that it shall have no rights to or interest in any of the
VirtualScopics’ Subject Inventions set forth on
Attachments A and B .
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6.
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With respect to
any VirtualScopics’ Subject Inventions (other than those set
forth on Attachments A and B which are addressed separately
in Section 5 above), the University agrees that it shall have no
rights to any VirtualScopics' Subject Inventions made by Dr. Parker
during the performance of this Agreement within the Fields of
Invention that are developed by Dr. Parker solely or jointly with
VirtualScopics or any third party other than the University in any
laboratory, research facility, or other building of VirtualScopics
or a partner of VirtualScopics other than the
University.
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7.
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VirtualScopics
acknowledges that the University does not waive any interest it may
have in inventions, other than those inventions set forth on
Attachments A and B , developed by Dr. Parker within the
scope of his employment by the University, and that all inventions
made by Dr. Parker during the term of this Agreement, other than
those inventions set forth on Attachments A and B , directly
or indirectly developed with the use of significant University
resources and/or facilities, as defined in the University Policies,
shall be the sole property of the University.
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8.
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Each party
shall indemnify and hold the other harmless from and against any
and all claims, liability, damage, loss, cost or expense (including
reasonable attorneys’ fees and costs), whether incurred in a
third party action or in an action to enforce this Agreement,
arising as a result of the party’s negligence, misconduct or
breach of this Agreement. This indemnity shall survive termination
of this Agreement and shall be effective notwithstanding the limits
of any applicable insurance coverage on the part of either
party.
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9.
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This Agreement
will have a term beginning with the Effective Date and ending one
hundred eighty (180) days after the termination or expiration of
Dr. Parker’s consulting arrangement with
VirtualScopics.
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10.
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This Agreement
may be terminated by a non-breaching party if another Party fails
to comply with any term herein and such failure is not cured to the
reasonable satisfaction of the non-breaching Party within thirty
(30) days after the breaching Party’s receipt of notice of
such breach. If the breach has not been cured within such time, Dr.
Parker’s consulting arrangement with VirtualScopics will
terminate at the end of the calendar month in which the time period
expir
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