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COOPERATIVE RESEARCH AND DEVELOPMENT
AGREEMENT
FOR
NOVEL RESERVE CELL TECHNOLOGIES and
HIGH SENSITIVITY MAGNETOMETER
TECHNOLOGY
BETWEEN
MPHASE TECHNOLOGIES, INC.
150 CLOVE ROAD
LITTLE FALLS, NEW JERSEY
07424
AND
U.S. ARMY ARMAMENT RESEARCH, DEVELOPMENT AND
ENGINEERING CENTER
PICATINNY, NJ 07806-5000
mPhase Technologies Inc
Victor Lifton
Principal Investigator
908-582-3105
U.S. ARMY ARMAMENT RESEARCH, DEVELOPMENT AND ENGINEERING
CENTER:
Mr. Tim Ryan
Mr. John Moran
Office of Research and Technology Applications
Legal Counsel
(973) 724-7953
(973) 724-6590
Mr. Carlos M. Pereira and
Mr. Preston Haney
Co-Principal Investigators
(973) 724-1542 / 9764
The purpose of this AGREEMENT is to establish a
cooperative effort between the U.S. Army Armament Research,
Development and Engineering Center (ARDEC) and mPhase
Technologies, Inc. (MPHASE) in order to develop power source and
sensor technology for munitions guidance and control. This work
falls within the mission of ARDEC.
NTIS Category: 76C - Navigation &
Guidance System Components
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Table of Contents
Article 1 Definition
Article 2 Cooperative Researches
Article 3 Reports
Article 4 Financial Obligations
Article 5 Titles to Property
Article 6 Software
Article 7 Inventions and Patents
Article 8 Data and Publication
Article 9 Representations and Warranties
Article 10 Termination
Article 11 Disputes
Article 12 Liabilities
Article 13 Miscellaneous
Article 14 Duration of Agreement and Effective Date
Appendix A Statement of Work
Appendix B Estimate of the Parties Resources
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MPHASE TECHNOLOGIES, INC.
AND
U.S. ARMY ARMAMENT RESEARCH, DEVELOPMENT AND ENGINEERING CENTER
COOPERATIVE RESEARCH AND DEVELOPMENT AGREEMENT
The Parties to this Cooperative Research and
Development Agreement (AGREEMENT), authorized under Public Law
99-502, as amended, and Executive Order 12591 (10 April 1987)
are mPhase Technologies, Inc. (MPHASE) incorporated in the State
of New Jersey and the U.S. Army Armament Research, Development
and Engineering Center (ARDEC), a laboratory of the United
States Army.
A.
Whereas, MPHASE and ARDEC desire to collaborate
in the further advancement of the Technology relating to the
design, fabrication and implementation of nanostructure material
and devices which has commercial application to power cells and
magnetometer sensors and military application to alternative
batteries and sensors.
B.
Whereas, the use by MPHASE of ARDEC Technology
will benefit the ARDEC mission.
NOW, THEREFORE, THE PARTIES HERETO AGREE AS
FOLLOWS:
Article 1. Definitions
As used in this AGREEMENT, the following terms
shall have the following meanings and such meanings should be
equally applicable to both the singular and plural forms of the
terms defined
1.1
"Agreement" means this Cooperative Research and
Development Agreement (CRADA).
1.2
"Invention" means any invention or discovery
which is or may be patentable under Title 35 of the United
States Code or any novel variety of plant which is or may be
protected under the Plant Variety Protection Act (7 U.S.C. 7321
et seq.).
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1.3
"Made" in relation to any invention means the
conception or first actual reduction to practice of such
invention.
1.4
"Proprietary Information" means information that
embodies trade secrets developed at private expense prior to or
independent of this AGREEMENT, or information which is
confidential business or financial information provided that
such information:
(i) is not generally known or available from other sources without
obligations concerning its confidentiality;
(ii) has not been made available by the owners to others without
obligation concerning its confidentiality; and
(iii) is not already available to the Government without obligation
concerning its confidentiality.
1.5
"Subject Data" means all recorded information
first produced in the performance of this AGREEMENT.
1.6
"Subject Invention" means any invention made in
the performance of work under this AGREEMENT.
1.7
"Subject Software" means all software, software
databases or software documentation first produced in the
performance of this AGREEMENT.
1.8
"Subject Improvement" means any improvement
first produced in the performance of this AGREEMENT.
1.9
“Government License” means
non-exclusive, irrevocable, paid-up license to use, practice or
have practiced a Subject Invention, Subject Software, or Subject
Data throughout the world by or on behalf of the U.S.
Government.
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1.10
"Final Products" means any product produced for
sale by MPHASE or any other duly authorized third party which
embodies Subject Data, Subject Software or Subject Invention as
defined in 1.5 to 1.8 above or Government owned patent(s) which
are licensed to MPHASE by the Government.
1.11 "Nonreleasable
ARDEC information" shall mean any information marked by
ARDEC as "Nonreleasable ARDEC information." "Nonreleasable
ARDEC information " may include, but is not limited to:
any operational security information (OPSEC), limited
distribution information, financial data, advanced procurement
information (e.g., future requirements, statements of work, and
acquisition strategies), source selection information (e.g.,
bids before made public, source selection plans, and rankings of
proposals), trade secrets and other confidential business
information (e.g., confidential business information submitted
by a contractor), attorney work product, information protected
by the Privacy Act (e.g., social security numbers, home
addresses and telephone numbers), and other sensitive
information (e.g., program, planning and budgeting system
information).
Article 2. Cooperative Research
2.1
Statement of Work . Cooperative research
performed under this AGREEMENT shall be performed in accordance
with the Statement of Work (SOW) attached hereto as Appendix A.
An estimate of the Parties’ resources to be devoted to
this effort is attached as Appendix B. Each party agrees
to participate in the cooperative research and to utilize such
personnel, resources, facilities, equipment, skills, know-how,
and information, as it considers necessary, consistent with its
own policies, missions and requirements. While assigned to
this effort, employees of both Parties shall remain employees of
their respective employers.
2.2
Review of Work . Periodic conferences
shall be held between ARDEC and MPHASE to review the progress of
work. It is understood that the nature of this cooperative
research is such that completion within the period of
performance specified, or within the limits of financial support
allocated, cannot be guaranteed. Accordingly, it is agreed
that all cooperative research is to be performed on a best
efforts basis.
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2.3
Principal Investigation . ARDEC
agrees that its portion of the work will be performed under the
supervision of Carlos Pereira and Preston Haney as principal
investigators, who have the responsibility for the scientific
and technical conduct of this project at ARDEC. The principal
investigator for MPHASE is Victor Lifton, who has the
responsibility for the scientific and technical conduct of this
project at MPHASE.
2.4
Scope Change . Each party may
request changes to the SOW, which shall be made in writing and
agreed by both Parties. Both Parties agree to make a good
faith effort to agree on any necessary change to the SOW.
Article 3. Reports
3.1
Final
Report . Within 1 month after the completion of work under
this AGREEMENT, ARDEC and MPHASE shall together prepare a final
written report on the technical progress made and the results
obtained, identifying such problems as may have been
encountered, and establishing goals and objectives requiring
further effort.
Final Report .
Within 1 month after the completion of work under this
AGREEMENT, ARDEC and MPHASE shall together prepare a final written
report on the technical progress made and the results obtained,
identifying such problems as may have been encountered, and
establishing goals and objectives requiring further effort.
3.2
If,
however, the work under this AGREEMENT extends beyond one year
from the date of this AGREEMENT, ARDEC and MPHASE. shall prepare
annual interim reports describing the technical progress made,
identifying such problems as may have been encountered, and
establishing goals and objectives requiring further effort. The
ultimate responsibility for timely completion of said reports
shall be ARDEC’s principal investigator.
If, however, the work under this AGREEMENT extends beyond one year
from the date of this AGREEMENT, ARDEC and MPHASE. shall prepare
annual interim reports describing the technical progress made,
identifying such problems as may have been encountered, and
establishing goals and objectives requiring further effort.
The ultimate responsibility for timely completion of said
reports shall be ARDEC’s principal investigator.
Article 4. Financial Obligation
4.1
No Cost Option . The performance of research by ARDEC
under this AGREEMENT is not conditioned on the payment of a sum
certain by the MPHASE.
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Article 5. Title to Property
5.1
Equipment . Title to all equipment
acquired prior to or during this AGREEMENT shall remain the
property of the party, which purchased the same unless otherwise
transferred, in writing. Any Government Furnished
Equipment (GFE) made available to MPHASE under this AGREEMENT
shall remain the property of the government and be used solely
for the performance of the effort contemplated by this
AGREEMENT. MPHASE shall own co-developed equipment.
Upon completion of research under this AGREEMENT, MPHASE
shall be responsible for all costs attendant to the maintenance,
removal, storage, and shipping of their equipment to MPHASE.
5.2
Disposal of Toxic or Other Waste .
The responsibility for proper disposal at completion or
termination of this AGREEMENT of any equipment or materials that
an originating party transfers to the facilities of a receiving
party and which constitute hazardous, toxic or other waste shall
remain with the originating party.
Article 6. Software
6.1
Prior Software . The Parties agree that
all software, software databases and/or software documentation
created prior to this AGREEMENT shall remain the property of the
party, which owned or controlled such material prior to
execution of this AGREEMENT.
6.2
Reporting . The Parties have no
expectation that any “Subject Software” will be
created during the term of this AGREEMENT. If, however,
any Subject Software is created during the performance of the
AGREEMENT, title shall be held jointly, unless the Parties
otherwise agree, in which case a written modification to this
AGREEMENT must evidence such accord.
6.3
Limits on Rights to Software .
ARDEC does not own all software resident in its computers
that may be used in the course of work under this AGREEMENT, and
characteristically is the licensee of such software.
Consequently, in such instances ARDEC will not provide
software, nor rights to software to MPHASE. ARDEC will
only demonstrate the software on ARDEC computer systems. It will
be the responsibility of MPHASE to obtain the appropriate
hardware and software rights to run the Technology developed
under this AGREEMENT. In cases where ARDEC doe not own the
software, ARDEC will use best effort to notify MPHASE of who
owns the software so MPHASE can try and obtain a license
from 3 rd party vendor if required.
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Article 7. Inventions and Patents
7.1
Prior Patents . The Parties
hereto agree that neither party shall have rights in any
invention made by the other before the date of this AGREEMENT,
except for those rights provided by law or under specific
agreement. The Parties additionally agree that for
this AGREEMENT "Excluded Subjects" shall mean any
invention, technique, device, discovery or procedure, whether or
not patentable and whether or not patented, conceived or first
actually reduced to practice by MPHASE Technologies, Inc. prior
to the date of this Agreement, and all rights and title in and
to the foregoing, including the following patents/patent
applications relating to the design, fabrication and
implementation of nanostructured material know-how are
considered prior inventions by MPHASE Technologies, Inc.:
"Method And Apparatus For Variably Controlling The Movement Of
A
Liquid On A Nanostructured Surface", Kornblit, Kroupenkine,
Mandich,
Schneider, Taylor, Yang, 10/403159, 03/31/2003
"Method And Apparatus For Reducing Friction Between A Fluid And
A
Body", Kornblit, Kroupenkine, Mandich, Schneider, Taylor, Weiss,
Yang,
10/649285, 08/27/2003
"Reversible Transitions On Dynamically Tunable Nanostructured
Or
Microstructured Surfaces", Hodes, Kolodner, Kroupenkine, Lyons,
Mandich,
Taylor", 10/674448, 09/30/2003
"Battery Having A Nanostructured Electrode Surface",
Kroupenkine,
Taylor, Weiss, 10/716084, 11/18/2003
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"Tunable Liquid Microlens with Lubrication Assisted
Electrowetting",
Kroupenkine, Yang, 6,545,815, 4/8/03
"Nanostructured Battery Having End of Life Cells", Krupenkine,
Lyons,
Simon, 2/20/2004
“Magnetometer Having An Electromechanical
Resonator”, Greywall 37, 10/889,977, 07/13/2004
7.2
Reporting . The Parties shall
promptly report to each other any Subject Invention made.
7.3
MPHASE Employee Inventions . The
Parties agree that MPHASE shall have the initial option to
retain title to any Subject Invention made only by MPHASE
employees. MPHASE shall promptly notify ARDEC upon making
this election and in the event that MPHASE retains title to said
Subject Invention, MPHASE agrees to timely file patent
applications on such Subject Inventions at its own expense.
MPHASE further agrees to grant to the U.S. Government a
Government License. MPHASE agrees to prepare such a
license in a form satisfactory to ARDEC. MPHASE may
release the rights provided for by this paragraph to its
employee inventors subject to an ARDEC Government License
7.4
ARDEC Employee Inventions . The
Parties agree that ARDEC, on behalf of the U.S. Government shall
have the initial option to retain title to each Subject
Invention made only by its employees. ARDEC shall promptly
notify MPHASE upon making this election, and in the event that
ARDEC retains title to said Subject Inventions, ARDEC agrees to
timely file patent applications thereon at its own expense and
agrees to grant to MPHASE a non-exclusive, irrevocable paid-up
license to practice such Subject Invention throughout the world.
ARDEC may release the rights provided for by this
paragraph to its employee inventors subject to a license in the
MPHASE as described above. (See Exclusive License 7.7)
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7.5
Joint Employee Inventions.
The Parties agree that ARDEC, on behalf of the U.S.
Government shall have the initial option to retain title to each
Subject Invention Made jointly by MPHASE and ARDEC employees.
ARDEC shall promptly notify MPHASE upon making this
election and in the event that ARDEC informs MPHASE that it
elects to retain title to such joint Subject Invention, MPHASE
agrees to assign to ARDEC whatever right, title and interest
MPHASE has in and to such joint Subject Invention. ARDEC agrees
to timely file patent applications on such Subject Invention at
its own expense and agrees to grant to MPHASE a non-exclusive,
irrevocable paid-up license to practice such Subject Invention
throughout the world. (See Exclusive License, 7.7)
7.6
Filing of Patent Applications . The party
having the right to retain title and file patent applications on
a specific Subject Invention must elect to file patent
applications thereon and advise the other party within 180 days
from the date it reports the Subject Invention to the other
party. In the event that the party fails to make such an
election and so advise the other party within 180 days from the
date it reports the Subject Invention, the other party may elect
to file patent applications on such Subject Invention. If the
other party elects to file patent applications, the party
initially reporting such Subject Invention agrees to assign its
rights, title and interest in such Subject Invention to the
other party and to cooperate with such other party in the
preparation
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