Software Engineering Research Center (SERC)
Affiliation Agreement
This Agreement is made by and between _______________________________, (hereinaf(ter called RESEARCH MEMBER), located in _________________________ and __________________________________ (hereinafter called AFFILIATE) located in _________________________.
WHEREAS, the parties to this Agreement intend to join together in a cooperative effort to support an Industry/University Cooperative Research Center in Software Engineering (hereinafter called CENTER) at Ball State University, Purdue University Research Foundation and West Virginia University (hereinafter called RESEARCH MEMBERS) to maintain a mechanism whereby the RESEARCH MEMBERS' environment can be used to develop a better understanding of software engineering and stimulate industrial innovation.
WHEREAS this program will strengthen the RESEARCH MEMBERS' research, teaching and service capabilities.
NOW, THEREFORE, for the mutual promises and covenants contained herein, the parties hereto agree as follows:
1. Center Organization: RESEARCH MEMBERS agree that the personnel and facilities required for the CENTER will be made available through the RESEARCH MEMBERS. The CENTER shall be operated by the RESEARCH MEMBERS under the leadership of a Director. The CENTER will be supported jointly by various private and public sponsoring organizations, including AFFILIATE, the National Science Foundation (hereinafter called NSF), and RESEARCH MEMBERS.
2. Affiliate Membership: Any company incorporated in the United States or a partnership in the United States or any agency of government, government office, or government organization duly authorized by the United States Government or the government of any State may become a SPONSORING AFFILIATE of one or more research projects (hereafter called PROJECT/S) for the CENTER.
3. Affiliate Representative: Each AFFILIATE agrees to appoint an individual to serve as the AFFILIATE REPRESENTATIVE to the Industrial Advisory Board. The AFFILIATE REPRESENTATIVE is identified at the end of this Agreement and shall serve in that capacity until a replacement is named in a written modification to this Agreement in accordance with Article 17 (Modification).
4. Membership Fees: AFFILIATE agrees to pay an annual fee for one of the membership categories as indicated below:
4.1. Membership Categories: AFFILIATES may choose one of two membership categories:
A. SPONSORING AFFILIATE: Thirty Thousand Dollars ($30,000) annually for one (1) year in support of CENTER to become/remain a SPONSORING AFFILIATE of the PROJECTS;
B. NON-SPONSORING AFFILIATE: Five Thousand Dollars ($5,000) should they wish to become/remain a NON-SPONSORING AFFILIATE of the PROJECTS.
4.2 Payment of Membership Fees: Upon execution of this Agreement, payment will be made within thirty (30) days of final signature of this Agreement. The payment due will be either the full amount or the first payment due in accordance with one of the payment schedules indicated below:
Annual payment with one payment being due ________________________20__
Quarterly payments with the first payment being due ________________________20__
4.3 Where to Send Payments: Checks shall be made payable as indicated below to the RESEARCH MEMBER that is the AFFILIATE’S primary contact. The RESEARCH MEMBERS’S addresses for receiving payments are listed below:
Ball State University: Contracts and Grants Office
Ball State University
2000 University Avenue
Muncie, IN 47306-0750
Purdue University: Treasurer
Purdue Research Foundation Corporation
Purdue University Attn: Donna Leary
West Lafayette, Indiana 47907-2004 OR
West Virginia University West Virginia University Research Corporation
886 Chestnut Ridge Road
Morgantown, WV 26506-6845
5. Use and Distribution of Membership Fees:
5.1 Distribution of each $30,000 Membership Fee:
$5,000 $5,000 will be used for Administration of the CENTER.
$25,000 $25,000 will be used for sponsoring PROJECTS. The AFFILIATE may designate, at its sole discretion, the PROJECT into which its funds are to be directed. Some PROJECTS may require Enhancement Funding.
5.2 Expenditure and Use of Funds: Expenditures will be in accordance with the policies of the RESEARCH MEMBER conducting a PROJECT. PROJECT expenses may include, but will not necessarily be limited to: capital purchases, start-up expenses, support of post-doctoral and graduate fellowships, technology transfer, and publications.
5.3 Title to Equipment: Equipment acquired by a RESEARCH MEMBERS for the conduct of a CENTER PROJECT will become the property of that RESEARCH MEMBER. Any funds not expended during the membership year will be carried forward to the next year.
6. Term of Agreement and Termination: This Agreement is valid for a period of one (1) year from the date of last signature to this Agreement (ANNIVERSARY DATE) and shall renew automatically each year on the ANNIVERSARY DATE, unless the AFFILIATE submits a written notice of termination to the CENTER Director at least ninety (90) days prior to the ANNIVERSARY DATE. Payment of annual dues, either the full amount or the first installment indicated in Article 4.2 (Payment of Membership Fees) shall be due each year within thirty (30) days of the ANNIVERSARY DATE. Such termination shall be subject to Article 9.3.b(3) (“Termination and Effect on Rights”).
7. Operation of the CENTER: The organization and operation of the CENTER shall be in accordance with all applicable State and Federal laws.
8. Industrial Advisory Board: An Industrial Advisory Board comprised of one (1) AFFILIATE REPRESENTATIVE from each AFFILIATE, shall advise the Director regarding the by-laws of the Industrial Advisory Board. This Industrial Advisory Board shall advise the Director concerning the following:
8.1 The research projects to be implemented by the PROJECTS conducted by the CENTER;
8.2 The apportionment of resources to these PROJECTS;
8.3 PROJECTS to be conducted by the CENTER;
8.4 Changes in operating procedures and policies;
8.5 Industrial/Intellectual property protection.
9. Intellectual Property: It is anticipated that development leading to commercially viable products/processes will generally be performed by industrial firms rather than the CENTER. However, if new technology consisting of copyrightable or copyrighted materials and patentable or patented intellectual property (hereafter “Intellectual Property”) is developed through CENTER PROJECTS, the following policies shall apply:
9.1 Ownership of Intellectual Property:
9.1.a Research Member Intellectual Property: Title to Intellectual Property first actually reduced to practice solely by one of the RESEARCH MEMBERS in the course of research conducted under the CENTER, shall be vested in that RESEARCH MEMBER.
9.1.b AFFILIATE Intellectual Property: Title to Intellectual Property developed by an employee of AFFILIATE’S organization solely as a direct result of such employee’s participation in a PROJECT of the CENTER shall be vested in the AFFILIATE.
9.1.c Joint Intellectual Property: Title to Intellectual Property conceived or first actually reduced to practice jointly by two or more RESEARCH MEMBERS, or by employees of both the RESEARCH MEMBER and the AFFILIATE, in the course of a PROJECT conducted under the auspices of the CENTER, shall vest jointly with the developing parties.
9.2 Bayh-Dole Act: All patents derived from inventions conceived or first actually reduced to practice in the course of research conducted by the CENTER shall be subject to the Bayh-Dole Act (Title 35 United States Code, Chapter 18).
9.3 Intellectual Property Rights to AFFILIATES
9.3.a Non-Exclusive Licenses: RESEARCH MEMBERS shall grant to any interested AFFILIATES an irrevocable, non-exclusive, royalty-free license for AFFILIATE’S in-house noncommercial use of any Intellectual Property developed by RESEARCH MEMBERS under the auspices of the CENTER and which is not the subject of an exclusive license to another AFFILIATE. At the request of the AFFILIATE, the RESEARCH MEMBER will negotiate with the AFFILIATE an irrevocable, non-exclusive, royalty-bearing license for external use of such Intellectual Property.
9.3.a (1) Patent Costs: If AFFILIATE exercises its right to a non-exclusive license to newly developed Intellectual Property, AFFILIATE shall inform RESEARCH MEMBERS within 90 days following disclosure, and AFFILIATE shall pay its pro rata share of patent application, prosecution, and maintenance costs, or copyright registration costs. AFFILIATE and RESEARCH MEMBERS will cooperate in deciding on whether to file patent applications or copyright registrations, the countries in which such applications or registrations are to be filed, and which party will assume responsibility for filing and prosecuting such applications or registrations.
9.3.b Exclusive Licenses: AFFILIATE may request a limited exclusive license to Intellectual Property developed by a RESEARCH MEMBER under the auspices of the CENTER. RESEARCH MEMBERS agree to consider such requests within 90 days of submission thereof, provided that no other company exercises its right to a non-exclusive license and to negotiate with AFFILIATE on terms and conditions for an exclusive, royalty-bearing license.
9.3.b (1) Patent Costs: RESEARCH MEMBER shall have the right to designate, at its sole option, a patent attorney in private practice to prepare, file and prosecute patent applications, and AFFILIATE requesting an exclusive license shall bear the cost to prepare, file, prosecute and maintain the patent application/patent on each such invention.
9.3.b (2) Failure to Commercialize/Utilize Intellectual Property: RESEARCH MEMBER shall have the right at any time after one (1) year from the grant of each such exclusive license to require a written report reflecting the AFFILIATE’S commercialization and/or utilization of the Intellectual Property. The RESEARCH MEMBER shall terminate the exclusivity of the license agreement if the AFFILIATE fails within ninety (90) days after receipt of the written notice from the RESEARCH MEMBER to provide a written report reflecting the commercialization and/or utilization of the Intellectual Property, or satisfactory progress in the efforts to commercialize and/or utilize the Intellectual Property that is the subject of such exclusive license.
9.3.b (3) Termination and Effect on Rights: AFFILIATE may terminate its status as a “AFFILIATE” at any time by providing written notice to CENTER, in accordance with Article 6 (“Term of Agreement and Termination”) and, upon doing so, shall forfeit all rights to an exclusive license. In the event of such termination, the AFFILIATE shall be responsible for its share of the patent-related expenses incurred or obligated prior to submission of the notice to CENTER. CENTER shall promptly notify the remaining AFFILIATES in writing of an AFFILIATE’S intention to discontinue participation.
9.4 Sublicenses: AFFILIATE shall have the right to license the rights set forth in Articles 9.3.a and 9.3.b to AFFILIATE’S wholly-owned subsidiaries and divisions, provided that such sublicenses shall be subject to the terms and conditions of the license granted to AFFILIATE by the RESEARCH MEMBER. AFFILIATE agrees to report to the RESEARCH MEMBER the name and address of each subsidiary or division receiving a sublicense and the date of issuance of the sublicense. A copy of each sublicense will be provided to the RESEARCH MEMBER within sixty (60) days of issuance.
9.4.a Third Party Sublicenses: There shall be no right under this Agreement to grant sublicenses to any third parties other than the AFFILIATE’S wholly owned subsidiaries and divisions, unless third party license is approved by the RESEARCH MEMBER.
9.5 Licensing to NON-AFFILIATES: RESEARCH MEMBERS may negotiate license agreements with companies that are not affiliates of the CENTER. Such license agreements shall be at terms less favorable than those negotiated with AFFILIATES and shall be royalty-bearing.
9.6 Disclosure: Intellectual Property developed under a PROJECT shall be promptly disclosed to CENTER and SPONSORING AFFILIATES on a confidential basis. RESEARCH MEMBER shall file for and prosecute patent applications if patent protection is desired by RESEARCH MEMBER, CENTER and/or SPONSORING AFFILIATES. Each SPONSORING AFFILIATE shall have thirty (30) days from receipt of the RESEARCH MEMBER’S invention disclosure to notify the RESEARCH MEMBER of that AFFILIATE’S interest in acquiring license rights beyond those provided under Article 9.3.a and a willingness to support the cost of patent filings.
9.7 Declination of Patent Protection: Should all AFFILIATES decline patent protection on any Intellectual Property resulting from a PROJECT, the REARCH MEMBER/S participating in the PROJECT may, at its/their own expense, pursue patent protection for that Intellectual Property. In these cases, AFFILIATES shall retain the internal use license as stated in Article 9.3.a; however, RESEARCH MEMBER/S may license the technology for commercial purposes without any obligation to AFFILIATES.
9.8 Delays in Licensing: RESEARCH MEMBERS agree to a delay in licensing to a SPONSORING AFFILIATE for a period of six (6) months following the disclosure of copyrightable materials or patentable inventions to sponsoring companies participating in the CENTER.
9.9 Educational and Research Use: RESEARCH MEMBERS and their investigators shall be free at all times to use for educational and research purposes any Intellectual Property as described in Article 9.1 (“Ownership of Intellectual Property”), subject to Article 9.3, resulting from the PROJECTS, including Intellectual Property that has been licensed on an exclusive or non-exclusive basis; however, they shall not commercially exploit or permit commercial exploitation by a third party.
10. Publication: Publication of research results is of fundamental importance to universities, faculty members and their PROJECTS. Therefore, RESEARCH MEMBERS reserve the right to publish in scientific journals the results of all research performed at the CENTER, giving due consideration to scheduling such publications in order to allow time for obtaining appropriate patent or copyright protection for any patentable invention or copyrightable materials that might result from the research.
10.1 Delay of Publication: RESEARCH MEMBERS agree to provide a copy of all manuscripts resulting from PROJECTS to SPONSORING AFFILIATE REPRESENTATIVES on the Industrial Advisory Committee for review ninety (90) days prior to submission for publication. SPONSORING AFFILIATES may request delay of the proposed publication for a period not to exceed six (6) months from the date of submission to the SPONSORING AFFILIATE. SPONSORING AFFILIATE agrees to request said delay only in order to permit the filing of appropriate documents (e.g., patent applications, copyright registrations, etc.) on any patentable invention or copyrightable materials made by the CENTER; and SPONSORING AFFILIATE must make said request in writing, including justification thereof, within thirty (30) days from the date the proposed publication was received by SPONSORING AFFILIATE. Should the proposed publication be a student thesis or dissertation, RESEARCH MEMBERS and SPONSORING AFFILIATE hereby agree to use their best efforts to complete all reviews of material contained therein and any necessary property protection filings so as to not impede the completion of activities to satisfy graduation and/or degree requirements by such a student. However, the provisions of this Article shall not be applied by any party so as to impede or delay the academic progress of any student.
11. Use of Names: AFFILIATE shall not use the names, logos or trademarks of any of the RESEARCH MEMBERS or the CENTER, or the names of any of their employees or students, in any advertising or promotional material without the specific written consent of the University whose name the AFFILIATE proposes to use. In the event of such use of the name of the CENTER, the written consent of all RESEARCH MEMBERS is required. Written requests for approval, accompanied by copies of all materials requiring approval, shall be submitted to the appropriate Administrative Contact identified in Article 18 (“Notices”). A general exception is hereby granted to AFFILIATE to use the name of the CENTER and to cite the fact that the CENTER is operated by Ball State University, Purdue University and West Virginia University in written publicity and other promotional materials provided that:
11.1 Such use is limited to describing the AFFILIATE relationship to the CENTER, as herein defined by this Agreement;
11.2 No endorsements by the CENTER, Ball State University, Purdue University or West Virginia University of AFFILIATE products or other commercial activities may be reasonably inferred from such use;
11.3 Such use does not represent that a partnership, joint venture or other legal entity has been formed between and among the parties to this Agreement;
11.4 Similarly, RESEARCH MEMBERS are prohibited from using any of the trade names or trademarks, or logos whether registered or unregistered, belonging to an AFFILIATE, for any purpose whatsoever, without its prior written authorization;
12. Independent Contractor Status: The relationship between an AFFILIATE and RESEARCH MEMBERS shall be that of independent contractor; this Agreement shall not bind either RESEARCH MEMBERS or the CENTER as agents or legal representatives of AFFILIATE. RESEARCH MEMBERS assume all risk and liability, to the extent permitted by applicable State Statutes, for injury to persons or damage to property occurring during the period of the agreement and caused by the acts of its employees, agents and students while performing work under the terms of this Agreement. The obligations of RESEARCH MEMBERS hereunder shall not apply to liability arising from use of information furnished pursuant to this Agreement.
13. Entire Agreement: The provisions contained herein constitute the entire Agreement and supersede all previous communications or representations, either verbal or written, between the parties hereto with respect to the subject material hereof. This Agreement may not be changed, altered, or supplemented except by written amendment hereto, signed by all parties. It is further agreed that nothing contained in the agreement shall modify, amend, or supersede any prior or subsequent arrangement between AFFILIATE and the RESEARCH MEMBERS with respect to activities outside the scope of this Agreement.
14. Governing Law: The validity, construction and effect of this Agreement shall be governed by the laws of the state of Indiana.
15. Liability: The liability of CENTER, as an entity of Ball State University, a state-assisted university of the State of Indiana, for bodily injury, property damage, infringement of proprietary rights and patents, and other items is limited by the Indiana Tort Claims Act (IC 34-31-3).
AFFILIATES will indemnify and hold harmless RESEARCH MEMBERS, their employees, officers, trustees and agents from and against any liabilities, damages, or claims (including attorney’s fees) arising out of injuries
16. Breach of Contract: In the event of violation or breach of contract terms, both parties will make a good faith effort to take necessary remedial actions to correct said breach. However, nothing in this Agreement shall constitute a waiver by Ball State or Subgrantee of any rights to pursue any applicable administrative, contractual, or legal remedies in instances where the other party violates or breaches contract terms.
17. Modification: This Agreement and attachments hereto contain the entire agreement between the parties. All modifications must be in writing and signed by the duly authorized officials of each party. No oral agreement or conversation with any officer or employee of either party shall affect or modify any of the terms and conditions of this Agreement. Requests for modification must be submitted in writing to the Center’s Administrative Contact as identified in Article 18 (Notices).
18. Notices: Any official notice, invoice, and other correspondence between the parties under this Agreement shall be in writing and delivered by no less than First Class U.S. Mail service or facsimile transmission addressed to the other party's administrative contact as follows:
SERC Administrative Contact Affiliate Administrative
Contact
Sharon Armbrust, Director
Contracts and Grants Office
Ball State University
Muncie, Indiana 47306
Phone: (765) 285-5289 Phone:
Fax: (765) 285-5224 Fax:
19. Non-assignment: This Agreement shall not be assignable by either party without the prior written consent of the other party
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IN WITNESS WHEREOF, this Agreement is effective as of the date of last signature set forth below, which day and month in subsequent years in which AFFILIATE adheres to the terms of this Agreement shall be called the anniversary date of this Agreement.
____________________________________________________ ________________________
Typed
Name: (Date)
____________________________________________________ ________________________
Typed
Name: (Date)
AFFILIATE
Representative to Industrial Advisory Board (as described in Article 3):
Name: _________________________________________________________________________________
Title: _________________________________________________________________________________
Address: _________________________________________________________________________________
City: ___________________________________________ State: ___________ Zip Code: ____________
Phone: _________________________
Fax: _________________________
Email: _________________________