EXHIBIT 6.5
Ratification and Amendment A
to
COOPERATIVE RESEARCH AND DEVELOPMENT AGREEMENT
(hereinafter "CRADA") No. ORNL96-0454
By and Between
Lockheed Xxxxxx Energy Research Corporation (hereinafter "Contractor")
And
DCH Technology, Inc. (hereinafter "Participant")
This Ratification and Amendment A to CRADA No. ORNL96-0454 by and between the
Contractor and the Participant is made effective upon approval by the DOE. The
Contractor and the Participant will hereinafter jointly be referred to as the
"Parties."
WITNESS:
The Parties hereby desire to ratify and amend said CRADA.
THEREFORE, the Parties hereto agree to be bound as follows:
Revise Article III: FUNDING AND COSTS, as follows:
-----------------
Replace Paragraph A with: "The Participant's estimated in-kind
contribution is [*]. The Government's estimated contribution, which is
provided through the Contractor's contract with DOE, is [*], subject
to available funding."
Replace the last sentence of Paragraph D with: "The work to be
performed under this CRADA shall be completed within thirty-six (36) months
from the effective date.
Revise Appendix A, STATEMENT OF WORK as follows:
At page A-2, Revise the date of completion for Task 2 from six months to 18
-----------
months.
Revise the date of completion for Task 3 from 12 to 30 months.
Revise the date of completion for Task 4 from 12 to 36 months.
[*] Omitted pursuant to request for confidentiality filed with the Securities
and Exchange Commission.
At page A-3, Estimated Cost and Source of Support, replace the entire
-----------
section with:
The total cost of this project is $1,170,000. The Government's estimated
in-kind contribution, which is provided through the Contractor's contract
with DOE, is [*] from the Energy Efficiency and Renewable Energy
Program; the Participant's in-kind contribution is [*].
Contribution Break Down
-----------------------
[*]
At page A-3, Schedule, replace, "The duration of this project is 12
months." With "The duration of this project is thirty-six (36) months."
IN WITNESS WHEREOF, the Parties hereto have caused this ratification and
amendment to be duly executed in their respective names by their duly authorized
representatives.
FOR THE CONTRACTOR:
By: /s/ Xxxxx X. Xxxxxxxxxxx
----------------------------------------------
Name: Xxxxx X. Xxxxxxxxxxx, President
----------------------------------------------
Lockheed Xxxxxx Energy Research Corporation,
Title: and Director, Oak Ridge National Laboratory
----------------------------------------------
Date: 10/23/97
----------------------------------------------
[*] Omitted pursuant to request for confidentiality filed with the Securities
and Exchange Commission.
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By: /s/ Xxxxxxxxx Xxxxx for
--------------------------------------
Name: Xxxx X. Xxxxxx, Acting Director
--------------------------------------
Title: Technology Transfer
--------------------------------------
Date: 10/27/97
--------------------------------------
FOR THE PARTICIPANT
By: /s/ Xxxxx X. Xxxxxx
--------------------------------------
Name: Xxxxx X. Xxxxxx
--------------------------------------
Title: Vice President
--------------------------------------
Date: 10/31/97
--------------------------------------
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XXXXXXXXX-XXXXXX (15 USC 3710)
COOPERATIVE RESEARCH AND DEVELOPMENT
AGREEMENT (hereinafter "CRADA") No. ORNL 96-0454
BETWEEN
Lockheed Xxxxxx Energy Research Corporation
under its U.S. Department of Energy Contract
No. DE-AC05-96OR22464 (hereinafter "Contractor")
AND
DCH Technology, Inc. (hereinafter "Participant"),
both being hereinafter jointly referred to as the "Parties"
ARTICLE I: DEFINITIONS
-----------
A. "Government" means the United States of America and agencies thereof.
B. "DOE" means the Department of Energy, an agency of the United States of
America.
C. "Contracting Officer" means the DOE employee administering the
Contractor's DOE contract.
D. "Generated Information" means information produced in the performance of
this CRADA.
E. "Proprietary Information" means information which embodies (i) trade
secrets or (ii) commercial or financial information which is privileged
or confidential under the Freedom of Information Act (5 USC 552 (b)(4)),
either of which is developed at private expense outside of this CRADA
and which is marked as Proprietary Information.
F. "Protected CRADA Information" means Generated Information which is
marked as being Protected CRADA Information by a Party to this CRADA and
which would have been Proprietary Information had it been obtained from
a non-federal entity.
G. "Subject Invention" means any invention of the Contractor or Participant
conceived or first actually reduced to practice in the performance of
work under this CRADA.
H. "Intellectual Property" means patents, Trademarks, copyrights, Mask
Works, Protected CRADA Information and other forms of comparable
property rights protected by Federal Law and other foreign counterparts.
I. "Trademark" means a distinctive xxxx, symbol or emblem used in commerce
by a producer or manufacturer to identify and distinguish its goods or
services from those of others.
J. "Mask Work" means a series of related images, however fixed or encoded,
having or representing the predetermined, three-dimensional pattern of
metallic, insulating or semiconductor material present or removed from
the layers of a semiconductor chip product; and in which series the
relation of the images to one another is that each image has the pattern
of the surface of one form of the semiconductor chip product. (17 USC
901(a)(2)).
K. "RD&D" means research, development and demonstration performed by the
Contractor and the Participant under this CRADA.
L. "Background Intellectual Property" means the Intellectual Property
rights in the items identified by the Parties in Appendix C, Background
Intellectual Property, which were in existence prior to or are first
produced outside of this CRADA, except that in the case of inventions in
those identified items, the inventions must have been conceived outside
of this CRADA and not first actually reduced to practice under this
CRADA to qualify as Background Intellectual Property. Licensing of
Background Intellectual Property, if agreed to by the Parties, shall be
the subject of separate licensing agreements between the Parties.
Background Intellectual Properties are not Subject Inventions.
ARTICLE II: STATEMENT OF WORK
-----------------
Appendix A, Statement of Work, is hereby incorporated into this CRADA by
reference.
ARTICLE III: FUNDING AND COSTS
-----------------
A. The Participant's estimated contribution is [*]. The Government's
estimated contribution, which is provided through the Contractor's contract
with DOE, is [*], subject to available funding.
B. Neither Party shall have an obligation to continue or complete performance
of its work at a cost in excess of its estimated cost as contained in
Article III A above, including any subsequent amendment.
C. Each Party agrees to provide at least thirty (30) days notice to the other
Party if the actual cost to complete performance will exceed its estimated
cost.
D. The effective date of this CRADA shall be the latter date of (1) the date
on which it is signed by the last of the Parties hereto or (2) the date on
which it is approved by DOE. The work to be performed under this CRADA
shall be completed within twelve (12) months from the effective date.
ARTICLE IV: PERSONAL PROPERTY
-----------------
All tangible personal property produced under this CRADA shall become the
property of the Participant or the Government depending upon whose funds were
used to obtain it. Such property is identified in Appendix A, Statement of Work.
Personal property shall be disposed of as directed by the owner at the owner's
expense. All jointly funded property shall be owned by the Government.
ARTICLE V: DISCLAIMER
----------
THE GOVERNMENT, THE PARTICIPANT, AND THE CONTRACTOR MAKE NO EXPRESS OR IMPLIED
WARRANTY AS TO THE CONDITIONS OF THE RESEARCH OR ANY INTELLECTUAL PROPERTY OR
PRODUCT MADE, OR DEVELOPED UNDER THIS CRADA, OR THE OWNERSHIP, MERCHANTABILITY
OR FITNESS FOR A PARTICULAR PURPOSE OF THE RESEARCH OR RESULTING PRODUCT.
NEITHER THE GOVERNMENT, THE PARTICIPANT, NOR THE CONTRACTOR SHALL BE LIABLE FOR
SPECIAL, CONSEQUENTIAL OR INCIDENTAL DAMAGES ATTRIBUTED TO SUCH RESEARCH OR
RESULTING PRODUCT, INTELLECTUAL PROPERTY, OR PRODUCT MADE OR DEVELOPED UNDER
THIS CRADA.
ARTICLE VI: PRODUCT LIABILITY
-----------------
Except for any liability resulting from any negligent acts or omissions of
Contractor, Participant indemnifies the Government and the Contractor for all
damages, costs and expenses, including attorney's fees, arising from personal
injury or property damage occurring as a result of the making, using or selling
of a product, process or service by or on behalf of the Participant, its
assignees or
[*] Omitted pursuant to a request for confidentiality filed with the Securities
and Exchange Commission.
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licensees, which was derived from the work performed under this CRADA. In
respect to this Article, neither the Government nor the Contractor shall be
considered assignees or licensees of the Participant, as a result of reserved
Government and Contractor rights. The indemnity set forth in this paragraph
shall apply only if Participant shall have been informed as soon and as
completely as practical by the Contractor and/or the Government of the action
alleging such claim and shall have been given an opportunity, to the maximum
extent afforded by applicable laws, rules, or regulations, to participate in and
control its defense, and the Contractor and/or Government shall have provided
all reasonably available information and reasonable assistance requested by
Participant. No settlement for which Participant would be responsible shall be
made without Participant's consent unless required by final decree of a court of
competent jurisdiction.
ARTICLE VII: OBLIGATIONS AS TO PROPRIETARY INFORMATION
-----------------------------------------
A. If Proprietary Information is orally disclosed to a Party, it shall be
identified as such, orally, at the time of disclosure and confirmed in a
written summary thereof within ten (10) days as being Proprietary
Information.
B. Each Party agrees to not disclose Proprietary Information provided by
another Party to anyone other than the CRADA Participant and Contractor
without written approval of the providing Party, except to Government
employees who are subject to the statutory provisions against disclosure of
confidential information set forth in the Trade Secrets Act (18 USC 1905).
C. All Proprietary Information shall be returned to the provider thereof, upon
request by the disclosing Party at the conclusion of this CRADA at the
provider's expense.
D. All Proprietary Information shall be protected for a period of three (3)
years from the date of execution of this CRADA, unless and until such
Proprietary Information shall become publicly known without the fault of
the recipient, shall come into recipient's possession without breach of any
of the obligations set forth herein by the recipient, or shall be
independently developed by recipient's employees who did not have access to
such Proprietary Information.
E. In no case shall the Contractor provide Proprietary Information of
Participant to any person or entity for commercial purposes, unless
otherwise agreed to in writing by such Participant.
ARTICLE VIII: OBLIGATIONS AS TO PROTECTED CRADA INFORMATION
---------------------------------------------
A. Each Party may designate as Protected CRADA Information, as defined in
Article 1, any Generated Information produced by its employees and, with
the agreement of the other Party, may xxxx any Generated Information
produced by the other Party's employees. All such designated Protected
CRADA Information shall be appropriately marked.
B. For a period of three (3) years from the date Protected CRADA Information
is produced, Parties agree not to further disclose such Protected CRADA
Information except:
(1) as necessary to perform this CRADA;
(2) as provided in Article XI [REPORTS AND ABSTRACTS];
(3) as requested by the DOE Contracting Officer to be provided to other
DOE facilities for use only at those DOE facilities with the same
protection in place; or
(4) as mutually agreed by the Parties in advance.
C. The obligations of (B) above shall end sooner for any Protected CRADA
Information which
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shall become publicly known without fault of either Party, shall come into
a Party's possession without breach by that Party of the obligations of (B)
above, or shall be independently developed by a Party's employees who did
not have access to the Protected CRADA Information.
ARTICLE IX: RIGHTS IN GENERATED INFORMATION
-------------------------------
The Parties agree that they shall have no obligations of non-disclosure or
limitations on their use of, and the Government shall have unlimited rights in,
all Generated Information, all Protected CRADA Information after the expiration
of the period set forth in Article VIII B above and information provided to the
Government or Contractor under this CRADA which is not marked as being
copyrighted (subject to Article XIII) or as Protected CRADA Information (subject
to Article VIII B) or Proprietary Information (subject to Article VII B), or
which is a Subject Invention disclosure which may later be the subject of a U.S.
or foreign patent application.
ARTICLE X: EXPORT CONTROL
--------------
A. THE PARTIES UNDERSTAND THAT MATERIALS AND INFORMATION RESULTING FROM THE
PERFORMANCE OF THIS CRADA MAY BE SUBJECT TO EXPORT CONTROL LAWS AND THAT
EACH PARTY IS RESPONSIBLE FOR ITS OWN COMPLIANCE WITH SUCH LAWS.
ARTICLE XI: REPORTS AND ABSTRACTS
---------------------
A. The Parties agree to produce the following deliverables:
(1) an initial abstract suitable for public release;
(2) other abstracts (final when work is complete, and others as
substantial changes in scope and dollars occur);
(3) a final report, to include a list of Subject Inventions;
(4) other topical/periodic reports where the nature of research and
magnitude of dollars justify; and
(5) computer software in source and object code format as defined within
the Statement of Work.
B. It is understood that the Contractor has the responsibility to provide the
above information at the time of its completion to the DOE Office of
Scientific and Technical Information.
ARTICLE XII: PRE-PUBLICATION REVIEW
----------------------
A. The Parties agree to secure pre-publication approval from each other which
shall not be unreasonably withheld or denied beyond thirty (30) days.
B. The Parties agree that neither will use the name of the other Party or its
employees in any promotional activity, such as advertisements, with
reference to any product or service resulting from this CRADA, without
prior written approval of the other Party.
ARTICLE XIII: COPYRIGHTS
----------
A. The Parties may assert copyright in any of their Generated Information.
B. Copyrights arising under this CRADA which are authored solely by employees
of Participant
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shall be owned by Participant.
Copyrights which are authored solely by employees of Contractor and which
are obtained by Contractor shall be owned by Contractor.
For copyrights arising under this CRADA authored by employees of both
Parties, each Party shall have undivided rights in ownership of such
copyrights, provided the copyrights are generated with the intention that
the Parties' contributions be merged into inseparable or independent parts
of a unitary whole. Jointly owned rights in copyrights shall be without
accounting.
For a period of up to six (6) months from the date of completion or
termination of this CRADA, Contractor agrees to offer an option to
Participant to negotiate a nonexclusive Copyright License Agreement for any
Copyright arising under this CRADA and obtained by Contractor. The U.S.
Competitiveness Clause shall apply to all such Agreements.
C. For Generated Information, the Parties acknowledge that the Government has
for itself and others acting on its behalf, a royalty-free,
nontransferable, nonexclusive, irrevocable worldwide copyright license to
reproduce, prepare derivative works, distribute copies to the public, and
perform publicly and display publicly, by or on behalf of the Government,
all copyrightable works produced in the performance of this CRADA, subject
to the restrictions this CRADA places on publication of Proprietary
Information and Protected CRADA Information.
D. For all copyrighted computer software produced in the performance of this
CRADA the Party owning the copyright will provide source code, an expanded
abstract as described in Appendix B, and the object code and the minimum
support documentation needed by a competent user to understand and use the
software to DOE's Energy Science and Technology Software Center, P. 0. Xxx
0000, Xxx Xxxxx, XX 00000. The expanded abstract will be treated in the
same manner as Generated Information in subparagraph C of this Article.
E. The Contractor and the Participant agree that, with respect to any
copyrighted computer software produced in the performance of this CRADA,
DOE has the right, at the end of the period set forth in paragraph B of
Article VII hereof and at the end of each two-year interval thereafter, to
request the Contractor and the Participant and any assignee or exclusive
licensee of the copyrighted software to grant a nonexclusive, partially
exclusive, or sole commercial license to a responsible applicant upon terms
that are reasonable under the circumstances, provided such grant does not
cause a termination of any licensee's right to use the copyrighted computer
software. If the Contractor or the Participant or any assignee or exclusive
licensee refuses such request, the Contractor and the Participant agree
that DOE has the right to grant the license if DOE determines that the
Contractor, the Participant, assignee, or licensee has not made a
satisfactory demonstration that it is actively pursuing commercialization
of the copyrighted computer software.
Before requiring licensing under this paragraph E, DOE shall furnish the
Contractor/Participant written notice of its intentions to require the
Contractor/Participant to grant the stated license, and the
Contractor/Participant shall be allowed thirty (30) days (or such longer
period as may be authorized by the cognizant DOE Contracting Officer for
good cause shown in writing by the Contractor/Participant) after such
notice to show cause why the license should not be required to be granted.
The Contractor/Participant shall have the right to appeal the decision by
the DOE to the grant of the stated license to the Invention Licensing
Appeal Board as set forth in paragraphs (b)- (g) of 10 CFR 781.65,
"Appeals".
F. The Parties agree to place copyright and other notices, as appropriate for
the protection of
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copyright, in human readable form onto all physical media, and in digitally
encoded form in the header of machine readable information recorded on such
media such that the notice will appear in human readable form when the
digital data are off-loaded or the data are accessed for display or
printout.
ARTICLE XIV: REPORTING SUBJECT INVENTIONS
----------------------------
A. The Parties agree to disclose to each other each and every Subject
Invention which may be patentable or otherwise protectable under the Patent
Act. The Parties acknowledge that the Contractor will disclose all Subject
Inventions to the DOE within two (2) months after the inventor first
discloses the Subject Invention in writing to the person(s) responsible for
patent matters of the disclosing Party.
B. These disclosures should be in such detail as to be capable of enabling one
skilled in the art to make and use the Subject Invention under 35 USC 112.
The disclosure shall also identify any known actual or potential statutory
bars, i.e., printed publications describing the Subject Invention or the
public use or on sale of the Subject Invention in this country. The Parties
further agree to disclose to each other any subsequently known actual or
potential statutory bar that occurs for a Subject Invention disclosed but
for which a patent application has not been filed. All Subject Invention
disclosures shall be marked as confidential under 35 USC 205.
ARTICLE XV: TITLE TO SUBJECT INVENTIONS
---------------------------
Whereas DOE has granted rights to Subject Inventions to the Participant and to
the Contractor:
A. Each Party shall have the first option to elect to retain title to any
Subject Invention made by its employees. If a Party elects not to retain
title to any Subject Invention of its employees, then the other Party shall
have the second option to elect to retain title to such Subject Invention.
The DOE shall retain title to any Subject Invention which is not retained
by any Party. Each Party shall have the option to elect to retain title to
its undivided rights in any Subject Invention made jointly by employees of
Contractor and employees of Participant.
B. The Parties acknowledge that the DOE may obtain title to each Subject
Invention reported under Article XIV for which a patent application or
applications are not filed pursuant to Article XVI and for which any issued
patents are not maintained by any Party to this CRADA.
C. The Parties acknowledge that the Government retains a nonexclusive,
nontransferable, irrevocable, paid-up license to practice or to have
practiced for or on behalf of the United States every Subject Invention
throughout the world.
D. Participant has entered into a Sole Commercial Patent License Agreement
with Contractor having an effective date of September 30, 1996, subject to
Participant executing this CRADA, for Contractor's Background intellectual
Property listed in Appendix C of this CRADA in the "Licensed Field" defined
by the use of sensors and systems in:
(a) Production, storage and transportation of hydrogen for use in the
generation of power;
(b) Use of hydrogen in fuel cells and high yield energy storage not
including commercial batteries;
(c) Safety applications in the chemical industry where hydrogen is a by-
product of a chemical manufacturing process; and
(d) Safety applications in the petroleum industry.
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For a period of 1) up to six (6) months from the date of filing of any
patent application Contractor or 2) up to six (6) months from the date of
completion or termination of this CRADA, whichever period expires first,
Contractor agrees to offer to license to Participant in the "Licensed
Field" any patents or patent applications resulting from Subject Inventions
developed under this CRADA made solely by employees of Contractor and for
the undivided rights of Contractor in any patents or patent applications
resulting from joint Subject Inventions developed under this CRADA made by
employees of Contractor and employees of Participant. Such offer shall be
effective for a period of 1) up to six (6) months from the date of filing
of any patent application by Contractor or 2) up to six (6) months from the
date of completion or termination of this CRADA, whichever period expires
first. If Participant accepts such offer, Participant's existing Sole
Commercial Patent License Agreement with Contractor in the "Licensed Field"
shall be amended to include such patents or patent applications and to
include the U.S. Competitiveness Clause in such Sole Commercial Patent
License Agreement. If Participant does not accept such offer and execute
such Sole Commercial Patent License Agreement within a period of 1) up to
six (6) months from the date of filing of any patent application by
Contractor or 2) up to six (6) months from the date of completion or
termination of this CRADA, whichever period expires first, such offer will
be withdrawn and Contractor shall be free to license such Subject
Inventions or such joint Subject Inventions in the "Licensed Field" to any
party. The U.S. Competitiveness Clause shall apply to all such Agreements.
ARTICLE XVI: FILING PATENT APPLICATIONS
--------------------------
A. The Parties agree that the Party initially indicated as having an ownership
interest in any Subject Inventions shall have the first opportunity to file
U.S. and foreign patent applications; but if such Party does not file such
applications within six (6) months after disclosure, then the other Party
to this CRADA may file patent applications on such Subject Inventions and
the Party initially having ownership interests shall fully cooperate in
this effort. The Parties shall share equally in the costs for the
prosecution, filing and maintenance of joint Subject Inventions where both
Parties elect to retain title to their undivided rights.
B. The Parties agree that DOE has the right to file patent applications in any
country if neither Party desires to file a patent application for any
Subject Invention. Notification of such negative intent shall be made in
writing to the DOE Contracting Officer within nine (9) months after the
initial disclosure of such Subject Invention or not later than sixty (60)
days prior to the time when any statutory bar might foreclose filing of a
U.S. patent application.
C. A Party electing title or filing a patent application in the United States
or in an foreign country shall advise the other Party and the DOE if it no
longer desires to continue prosecution or retain title in the United States
or any foreign country. The other Party and then the DOE will be afforded
the opportunity to take title and retain the patent rights in the United
States or any such foreign country.
D. Every twelve (12) months from the date of the CRADA, each Party shall
deliver to the other Party interim reports listing the Subject Inventions,
if any, it has produced during the preceding twelve (12) month period. If a
Party has produced no Subject Invention for any twelve (12) month period,
the Party's interim report for that period will explicitly state so.
ARTICLE XVII: TRADEMARKS
----------
A. The Parties may seek to obtain Trademark/service xxxx protection on
products or services generated under this CRADA in the United States or
foreign countries. The Parties hereby acknowledge that the Government shall
have the right to indicate on any similar goods or services produced by or
for the Government that such goods or services were derived from and are a
DOE version of the goods or services protected by such Trademark/service
xxxx with the Trademark/service xxxx and the owner thereof being
specifically identified. In
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addition, the Government shall have the right to use such Trademark/service
xxxx in print or communications media.
B. For a period of up to six (6) months from the date of completion or
termination of this CRADA, Contractor agrees to offer an option to
Participant to negotiate a nonexclusive Trademark License Agreement for any
Trademark arising under this CRADA and obtained by Contractor. The U.S.
Competitiveness Clause shall apply to all such Agreements.
ARTICLE XVIII: MASK WORKS
----------
A. The Parties may seek to obtain legal protection for Mask Works fixed in
semiconductor products generated under this CRADA as provided by Chapter 9
of Title 17 of the United States Code. The Parties hereby acknowledge that
the Government or others acting on its behalf shall retain a nonexclusive,
paid-up, worldwide, irrevocable, nontransferable license to reproduce,
import, or distribute the covered semiconductor product by or on behalf of
the Government, and to reproduce and use the Mask Work by or on behalf of
the Government.
B. For a period of up to six (6) months from the date of completion or
termination of this CRADA, Contractor agrees to offer an option to
Participant to negotiate a nonexclusive Mask Works License Agreement for
any Mask Works arising under this CRADA and obtained by Contractor. The
U.S. Competitiveness Clause shall apply to all such Agreements.
ARTICLE XIX: COST OF INTELLECTUAL PROPERTY PROTECTION
----------------------------------------
Each Party shall be responsible for payment of all costs relating to copyright,
Trademark and Mask Work filing, U.S. and foreign patent application filing and
prosecution, and all costs relating to maintenance fees for U.S. and foreign
patents hereunder which are owned by that Party. Government/DOE laboratory funds
contributed as DOE's cost share to a CRADA cannot be given to Participant for
payment of Participant's costs of filing and maintaining patents or filing for
copyrights, Trademarks and Mask Works.
ARTICLE XX: REPORTS OF SUBJECT INVENTION USE
--------------------------------
Participant agrees to submit, upon request of DOE, a nonproprietary report no
more frequently than annually on efforts to utilize any Subject Invention.
ARTICLE XXI: DOE MARCH-IN RIGHTS
-------------------
The Parties acknowledge that the DOE has certain march-in rights to any Subject
Inventions in accordance with 48 CFR 27.304-1(g).
ARTICLE XXII: U.S. COMPETITIVENESS
--------------------
The Parties agree that a purpose of this CRADA is to provide substantial benefit
to the U.S. economy.
In exchange for the benefits received under this CRADA, the Parties therefore
agree to the following:
A. Products embodying Intellectual Property developed under this CRADA shall
be substantially manufactured in the United States;
B. Processes, services, and improvements thereof which are covered by
Intellectual Property developed under this CRADA shall be incorporated into
the Participant's manufacturing facilities in the United States either
prior to or simultaneously with implementation outside the United States.
Such processes, services, and improvements, when implemented outside the
U.S., shall not result in reduction of the use of the same processes,
services, or improvements in the United States.
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ARTICLE XXIII: ASSIGNMENT OF PERSONNEL
-----------------------
A. Each Party may assign personnel to any other Party's facility as part of
this CRADA to participate in or observe the research to be performed under
this CRADA. Such personnel assigned by the assigning Party shall not during
the period of such assignments be considered employees of the receiving
Party for any purpose.
B. The receiving Party shall have the right to exercise routine administrative
and technical supervisory control of the occupational activities of such
personnel during the assignment period and shall have the right to approve
the assignment of such personnel and/or to later request their removal by
the assigning Party.
C. The assigning Party shall bear any and all costs and expenses with regard
to its personnel assigned to the receiving Party's facilities under this
CRADA. The receiving Party shall bear facility costs of such assignments.
ARTICLE XXIV: FORCE MAJEURE
-------------
No failure or omission by Contractor or Participant in the performance of any
obligation under this CRADA shall be deemed a breach of this CRADA or create any
liability if the same shall arise from any cause or causes beyond the control of
Contractor or Participant, including but not limited to the following, which,
for the purpose of this CRADA, shall be regarded as beyond the control of the
Party in question: Acts of God, acts or omissions of any government or agency
thereof, compliance with requirements, rules, regulations, or orders of any
governmental authority or any office, department, agency, or instrumentality
thereof, fire, storm, flood, earthquake, accident, acts of the public enemy,
war, rebellion, insurrection, riot, sabotage, invasion, quarantine, restriction,
transportation embargoes, or failures or delays in transportation.
ARTICLE XXV: ADMINISTRATION OF CRADA
-----------------------
It is understood and agreed that this CRADA is entered into by the Contractor
under the authority of its prime contract with DOE. The Contractor is authorized
to and will administer this CRADA in all respects unless otherwise specifically
provided for herein. Administration of this CRADA may be transferred from the
Contractor to DOE or its designee with notice of such transfer to the
Participant, and the Contractor shall have no further responsibilities except
for the confidentiality, use and/or nondisclosure obligations of this CRADA.
ARTICLE XXVI: RECORDS AND ACCOUNTING FOR GOVERNMENT PROPERTY
----------------------------------------------
The Participant shall maintain records of receipts, expenditures, and the
disposition of all Government property in its custody related to the CRADA.
ARTICLE XXVII: NOTICES
-------
A. Any communications required by this CRADA, if given by postage prepaid
first class U.S. Mail addressed to the Party to receive the communication,
shall be deemed made as of the day of receipt of such communication by the
addressee, or on the date given if by verified facsimile. Address changes
shall be given in accordance with this Article and shall be effective
thereafter. All such communications, to be considered effective, shall
include the number of this CRADA.
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B. The addresses, telephone numbers and facsimile numbers for the Parties are
as follows:
Contractor:
Xx. Xxxxx X. Xxxxxxxx Telephone:
Business Manager (000) 000-0000
Lockheed Xxxxxx Energy Research Corp. Facsimile:
P. 0. Xxx 0000 (000) 000-0000
Xxx Xxxxx, Xxxxxxxxx 00000-0000
Participant:
Xx. Xxxxx X. Xxxxxxxx Telephone:
DCH Technology, Inc. (000) 000-0000
00000 Xxxxxxx Xxxxxxxxx, Xxxxx 000 Facsimile:
Xxxxxxx Xxxx, XX 00000 (000) 000-0000
ARTICLE XXVIII: DISPUTES
--------
The Parties shall attempt to jointly resolve all disputes arising from this
CRADA. If the Parties are unable to jointly resolve a dispute within a
reasonable period of time, the dispute shall be decided by the DOE Contracting
Officer, who shall reduce his/her decision to writing within sixty (60) days of
receiving, in writing, the request for a decision by either Party to this CRADA.
The DOE Contracting Officer shall mail or otherwise furnish a copy of the
decision to the Parties. The decision of the DOE Contracting Officer is final
unless, within one hundred and twenty (120) days, the Participant brings an
action for adjudication in a court of competent jurisdiction in the State of
Tennessee. To the extent that there is no applicable U.S. Federal law, this
CRADA and performance thereunder shall be governed by the law of the State of
Tennessee.
ARTICLE XXIX: ENTIRE CRADA AND MODIFICATIONS
------------------------------
A. It is expressly understood and agreed that this CRADA with its Appendices
contains the entire agreement between the Parties with respect to the
subject matter hereof and that all prior representations or agreements
relating hereto have been merged into this document and are thus superseded
in totality by this CRADA. This CRADA shall not be effective until approved
by DOE.
B. Any agreement to materially change any terms or conditions of this CRADA or
the Appendices shall be valid only if the change is made in writing,
executed by the Parties hereto, and approved by DOE.
ARTICLE XXX: TERMINATION
-----------
This CRADA may be terminated by either Party upon ninety (90) days written
notice to the other Party. The terminating Party shall provide the other Party a
clear rationale for termination prior to final termination.
In the event of termination by either Party, each Party shall be responsible for
its share of the costs incurred through the effective date of termination, as
well as its share of the costs incurred after the effective date of termination,
and which are related to the termination. The confidentiality, use, and/or
nondisclosure obligations of this CRADA shall survive any termination of this
CRADA.
10
FOR CONTRACTOR:
By: /s/ Xxxxx X. Xxxxxxxxxxx
----------------------------------------------
Name: Xxxxx X. Xxxxxxxxxxx, President
--------------------------------------------
Lockheed Xxxxxx Energy Research Corporation, and
Title: Director, Oak Ridge National Laboratory
-------------------------------------------
Date: 9/4/96
--------------------------------------------
By: /s/ Xxxxx X. Xxxxxxxxx
----------------------------------------------
Name: for Xxxxxxx X. Xxxxxx
--------------------------------------------
Title: Vice President, Technology Transfer
-------------------------------------------
Date: 9/6/96
-------------------------------------------
FOR PARTICIPANT:
By: /s/ Xxxxx X. Xxxxxx
----------------------------------------------
Name: Xxxxx X. Xxxxxx
--------------------------------------------
Title: Vice President, Operations
-------------------------------------------
Date: 9/26/96
--------------------------------------------
11
Appendix A
Statement of Work
for
CRADA No. ORNL 96-0454
with
DCH Technology, Incorporated
for
Development of Low Cost Hydrogen Sensors and Detectors
Purpose and Background
The purpose of this Cooperative Research and Development Agreement (CRADA)
between Lockheed Xxxxxx Energy Research Corporation (Contractor) and DCH
Technology, Incorporated (Participant), is to develop and commercialize hydrogen
sensor prototypes for the Department of Energy (DOE) Hydrogen Program. The
Contractor and the Participant are hereinafter jointly referred to as the
"Parties". Current hydrogen sensor prototypes, developed and patented at the
Contractor are monolithic, thick-film devices that are inherently robust with
respect to temperature and humidity and cost very little to manufacture. The
sensors have demonstrated a good response to hydrogen at the lower explosive
limit and preliminary tests also indicate a fast enough response and sufficient
hardiness for many applications relevant to hydrogen production, storage, and
transport. The technical challenges that must be met to commercialize this
device involve materials optimization; detector electronics and packaging design
that enable inexpensive and reliable manufacture, as well as ease of deployment;
and comprehensive evaluation of the device performance for identified
application areas.
Technical Objectives [*]
[*] Omitted pursuant to request for confidentiality filed with the Securities
and Exchange Commission.
A-1
Scope of Work
[*]
[*] Omitted pursuant to request for confidentiality filed with the Securities
and Exchange Commission.
A-2
Estimated Cost and Source of Support
The total estimated cost of this CRADA is $1,500,000. The Government's estimated
contribution, which is provided through the Contractor's contract with DOE, is
[*] from the Energy Efficiency and Renewable Energy Program Office. The
Participant's in-kind contribution is [*]. The amount of funds, in thousands of
dollars, is summarized below for each project year.
[*]
Deliverables
[*]
Schedule
[*]
[*] Omitted pursuant to request for confidentiality filed with the Securities
and Exchange Commission.
A-3
Program Management
The principal investigators for this CRADA are X. X. Xxxxxxxxx (Contractor), and
X. X. Xxxxxxxx (Participant).
The principal investigators for the Parties will meet as needed to review the
program and to ensure that the project continues on schedule. Brief quarterly
status reports will be jointly issued by the 15th day of the month following the
end of the reporting period. A more detailed final report for the project will
be prepared for wider distribution after full review by the Parties.
A-4
