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The Software Engineering Research Center

(SERC)

Memorandum of Agreement

This Memorandum of Agreement is effective the _____ day of _____, 19__ by and among (1) The Purdue Research Foundation, an Indiana Corporation with its principal offices in West Lafayette, Indiana (hereinafter referred to as "PRF"), (2) West Virginia University, located in Morgantown, West Virginia, and (3) each of the undersigned universities:  

WHEREAS Purdue University, a state university in the State of Indiana and The West Virginia University in Morgantown did establish in 1998 an operating entity known as The Software Engineering Research Center (hereinafter referred to as "SERC") under the auspices of and with the aid of a grant from The National Science Foundation (hereinafter referred to as "NSF") for the purposes of performing research into scientific and engineering aspects of computer software technology.

WHEREAS the activities of SERC are funded by (1) NSF and other agencies of the U S Government, (2) Industrial Members, and (3) other funds that may be received from time to time.

WHEREAS SERC has been in continuous operation since its establishment and Purdue University and The West Virginia University have made and observed certain agreements and conventions between them with respect to the subject matter contained herein.

WHEREAS Purdue University and West Virginia University are desirous of formalizing and memorializing these agreements and conventions.

WHEREAS each of the undersigned universities in addition to Purdue University and West Virginia University are desirous of joining such agreements and conventions.

NOW THEREFORE, for, and in consideration of, the mutual promises and covenants herein contained and intending to be legally bound the parties hereto agree as follows:

1.         Definitions

(a)     "Research Member" is defined as "PRF", West Virginia University, as well as any college, university or affiliated research corporation that subsequently joins this Agreement for the purposes of participating in the activities of SERC.

(b)     "Institution" shall refer to Purdue University, West Virginia University or any of the colleges or universities on whose behalf a Research Member joins this agreement as the context so requires.

(c)       "Industrial Member" is defined as any company, corporation, agency or organization that: (1) has joined and been accepted as a sponsor of SERC by signing an "Industry/University Cooperative Research Center for Software Engineering Research Agreement" (hereinafter referred to as "The Affiliation Agreement") that has been signed by authorized institutional representatives of the Research Members and (2) has paid annual fees to sponsor research activities in SERC pursuant to said agreement. An Industrial Member is deemed to be "current" unless such Member is in violation of its Affiliation Agreement by failing pay annual fees according to the terms of its Affiliation Agreement or by violating any other provision of said agreement and has taken no steps to remedy the violation.

(d)       "Industrial Advisory Board" (hereinafter referred to as "IAB") shall refer to a board comprised of one representative appointed by each of the Industrial Members and designated in that member's signed Affiliation Agreement, which designation may be changed from time to time at the written request of the Industrial Member.

(e)       "SERC Policy Board" (hereinafter referred to as "SPB") shall refer to a board comprised of (1) one institutional representative from each Research Member with personnel and financial authority over the SERC activities at his or her Institution, (2) the current and previous chair of the IAB, as defined by the currently approved By-Laws of the IAB, (3) a non-voting representative of NSF.

(f)        "Inventor" is defined as the discoverer of any patentable invention, the author of any copyrightable work, or the author of any licensable computer program.

(g)       "Intellectual Property" is defined to be (1) all inventions, discoveries or patentable ideas conceived or reduced to practice as well as (2) all computer software and copyrightable material or data developed during the term of this agreement.

(h)       "Royalty Income" is defined as all income of any kind received in exchange for a license to use any Intellectual Property.

(i)         “Intellectual Property Costs" shall refer to all costs directly associated with a particular Intellectual Property including, without limitation, patent application charges, attorneys' fees, costs of outside evaluation, patentability searches, preparing patent applications, preparing assignments, applications, obtaining the issuance of patents, maintaining patents, preparing license agreements, recording license agreements, preparing security agreements, recording security agreements, travel, administrative proceedings such as interferences and appeals within any agency or office, litigation such as actions for royalty collection, infringement, product liability, antitrust or the like including prosecution or defense of same and compromise, settlement and judgment satisfaction of same; the foregoing costs include but are not limited to attorneys' fees, agency and office fees, court costs and judgment satisfactions.

(j)       "Normal Operating Procedures" are defined by the currently approved edition of the manual "SERC Operating Procedures and Guidelines" which, in addition to administrative and technical practices and procedures, additionally documents SPB and IAB by-laws and the amendments to such practices, procedures and by-laws that may be made from time to time by vote of the IAB, SPB or Executive Committee or by administrative action of the Director.

2.        Enrollment of New Industrial Members. The Research Members shall endeavor to enroll new SERC Industrial Members. For a period of two years from the effective date hereof, fees collected from Industrial Members enrolled by Research Members other than Purdue University and West Virginia University  shall be allocated, less the approved Center administrative expenses as hereinafter defined in Paragraph 8, to software engineering Research Projects proposed by the personnel of such Research Member and approved, with the advice of the IAB, by the Director. Thereafter there shall be no obligation to allocate such funds as herein above provided. It is provided, however, that this obligation to allocate such funds is subject to such Research Member enrolling new SERC Industrial Members on or before ________________. In the event any Research Member, other than Purdue University and West Virginia University, fails to enroll ______ new SERC Industrial Members by such date, there shall be no obligation to allocate any research funds to any such Research Member.

3.         Promotional Material. No Research Member shall authorize or commission the publication of any promotional materials containing any reference to the other Research Members without the prior written approval of the other Research Member. It is provided, however, that each Research Member may include any Other Research Member's name and Research Projects titles in published material intended to enroll new Industrial Members, communicate research results and other information about SERC to current Industrial Members or disseminate scientific facts and findings in accordance with customary research practices.

4.         SERC Policy Board. The SPB shall recommend the appointment of the SERC Director and Site Director(s) to the Institutions, annually review the performance of the SERC Director and Site Directors, including input using a process defined by the SPB and the IAB, and ensure that appropriate Institutional policies are defined and enforced to enable the conduct of the SERC research programs and make recommendations to the Institutions on other matters as required.

5.        Directorship of SERC. The SPB with advice from the IAB will recommend to the appropriate Institution the appointment of a SERC Director. The SERC Director serves in this capacity at the pleasure of the SPB. The SERC Director shall be the primary decision-maker for the SERC and shall have responsibility and authority for all aspects of SERC's operation and performance. Specific responsibilities of the SERC Director shall include, but not be limited to, soliciting research proposals, conducting peer reviews, determining funding levels for Research Projects based upon recommendations from the Executive Committee and the IAB, allocating and distributing SERC administrative funds within the distribution limits established in Paragraph 8 below, and providing accurate and timely financial information to the IAB and the Site Directors as specified in Paragraph 8 below.  In matters of policy, the SERC Director shall receive guidance from and report to the SPB. The SERC Director shall be the principal interface between the Center, the Industrial Members, NSF and the IAB.

6.         Site Directors. With the approval of the SPB and the advice of the SERC Director and the IAB, each Institution may select a Site Director. In addition to duties specified herein above the SERC Director shall serve as the Site Director at the Institution in which his or her academic appointment is held. The Site Directors serve in this capacity at the pleasure of the SPB. In matters related to the operation of SERC, the Site Directors shall report to the SERC Director. Specific responsibilities of the Site Directors shall include, but not be limited to, encouraging and assisting in the preparation of new research proposals, ensuring quality in the supported Research Projects, providing accurate and timely financial information from the Institution to the SERC Director, managing SERC administrative funds allocated to such, collecting, reviewing and forwarding research proposals and technical reports to the SERC Director and other Site Directors and hosting the meetings of the IAB that occur at such Institutions.

7.         Executive Committee. The SERC Director and the Site Directors shall comprise the SERC Executive Committee. The Executive Committee shall have responsibility for implementing plans and procedures that support, facilitate and enhance SERC operations and capabilities. Specific responsibilities of the Executive Committee shall include, but not be limited to, recruiting new affiliates, recommending administrative budgets at each Institution, consulting with researchers and the IAB regarding policy decisions, disseminating operational and financial information to the researchers and the IAB, and recommending research funding levels to the SERC Director based on IAB guidance subject to the provisions of Paragraph 9 below.

8.         Administrative Support and Reporting. The SERC Director with the advice of the Executive Committee and the IAB shall determine the requirements and administrative funding levels for SERC as a whole and for each Institution subject to the provisions described hereinafter. The SERC Director shall also determine the reporting arrangements for administrative support personnel and shall report financial information at each IAB meeting to the IAB and Site Directors following procedures and formats defined and approved by the SPB. The total administrative budget of SERC shall be limited to no more than 30% of the total SERC funds, with a minimum of 1/(N+2) of such 30% to go to each of the N Research Members. The exact amount within these limits shall be determined by the SERC Director. Administrative funding above these limits shall be approved by the SPB or come from Institutional sources.

9.         Distribution of Research Funds. Funds shall be allocated by the SERC Director for the support of Research Projects subject to the conditions and provisions defined herein above subject to the condition that each of the N Research Members shall receive an allocation of funds no less than 4/(5N) and not to exceed (4+ N)/(5N) times the funds available for distribution. Funds allocations either above or below these limits must be approved by the IAB and SPB. This rule will govern each distribution of funds except for such temporary distribution formulas that might be in effect during the time that a new Research Member is subject to the provisions of Paragraph 2 above. The distribution formula specified herein above may be changed by majority vote of the IAB at any time and any such new formula is deemed part of this agreement and supersedes all previously approved formulas.

10.     Transfers of Funds between Institutions. The SERC Director shall prepare and submit to the SPB an allocation recommendation for Research Projects funding that includes (1) an accounting of all Institutional funds available for allocation to SERC projects subject to the provisions defined herein above, and (2) a funds transfer plan that specifies how the total pool of funds available for allocation to SERC projects shall be allocated to individual Research Projects. Such accounting of Institutional funds available for allocation shall include from each Institution a certification by an authorized institutional representative of available funds. Such funds transfer plan shall include directions for transferring funds that have been certified to be available between Research Members i n order to ensure that adequate funds are available at each Institution to support the approved and authorized Research Projects at such Institution. Upon acceptance of such allocation recommendation by the SPB, the Research Members shall subcontract or otherwise cause the transfer of appropriate funds to other Research Members if directed to do so by the funds transfer plan.

11.     Authorized Expenditures. No Research Member shall expend, obligate or otherwise remove from the total pool of funds available for allocation to SERC Research Projects or SERC administrative functions, any funds collected from Industrial Members except as authorized by the funds transfer plan defined herein above.

12.     Timely and Expedient Transfers. Each Research Member shall transfer funds to other Research Members by an approved funds transfer plan as defined herein above shall complete such transaction in a timely fashion. In carrying out said transfers of funds, each Research Member acknowledges that the remaining Research Members must satisfy the fiscal transaction requirements established by their respective institutions and state laws.

13.     Termination. Each Institution shall remain a Research Member for so long as: (1) SERC continues to function, and (2) such Institution is actively conducting research pursuant to this agreement. Furthermore, each institution other than Purdue University and the University of Florida shall remain a Research Member for so long as: (3) at least one Industrial Member enrolled by such Institution is a current Industrial Member of SERC, and (4) the SERC Director upon consultation with the SPB deems it in the best interest of SERC. Additionally, any Research Member may resign upon giving thirty (30) days written notice to each other Research Member Affiliation Agreements to which the terminated Research Member is a party, even if enrolled by such Research Member, remain binding on the Industrial Member and the remaining Research Members.

14.     Ownership of Intellectual Property. Subject to the rights of the Industrial Members, all rights, title, and interest in and to all Intellectual Property shall be as follows:

(a)      All Intellectual Property conceived and/or developed solely by one Research Member shall belong solely to that Research Member.

(b)      All Intellectual Property conceived and/or developed jointly by personnel of two or more Research Members will belong to each such Institution. For purposes of sharing income or other financial rewards from joint sale or licensing of said Intellectual Property, each owner shall share in proportion to the percentage contribution of the Inventors from each Institution. If the Inventors cannot agree among themselves as to their proportionate contribution in the Intellectual Property, then the SERC Director shall attempt to mediate the dispute. In the event that the Inventors cannot then agree as to the proportionate contribution of each Inventor then the Inventors shall be deemed to have contributed in equal shares to the Intellectual Property.

15.     License to Use Intellectual Property for Internal Use. Each Research Member agrees to and does hereby grant to each of the other Research Members, subject to the terms of this agreement and subject to restriction of any sponsor, a non- exclusive, nontransferable, royalty-free license (without the right of sublicense) to (1) utilize any information and materials published by SERC and (2) practice any invention resulting from research funded in whole or in part from fees paid by Industrial Members during this or any subsequent term of this agreement for educational and research purposes only. Such licenses are granted in addition to licenses granted by the Research Members to Industrial Members (1) by a valid Affiliation Agreement or (2) by separate agreements executed between Research Members and Industrial Members pursuant to paragraph 7 of the Affiliation Agreement.

16.     Center Publications. Subject to normal SERC operating procedures for approval and distribution of reports and research products, all manuscripts being submitted for publication shall have the prior approval of the Director, or, at the Director's discretion, the Site Director(s) from the authors(s) Institution(s).

17.     Publication, Sale and or Use of Research Results on Jointly Owned Intellectual Property

(a)       Subject to SERC Affiliation Agreements and Normal Operating Procedures for review and approval for unlimited distribution of research reports by Industrial Members, each Institution shall have the right to publish research results on jointly owned intellectual property. It is provided, however that the Institution desiring to publish such research results shall submit a draft of any such proposed publication to the other Institution(s) with whom ownership of such Intellectual Property is shared at least thirty (30) days prior to the submission o f the research results for publication. All partial or complete copies of such drafts shall bear the proprietary notations and labels specified by Normal SERC Operating Procedures. Within this thirty day period and with good reason, any party shall have the right to further delay any publication for a period of not more than six (6) additional months by making an appropriate notation in the "Limit ed Distribution Review Copy" legend of such draft and returning the annotated legend to the SERC Director. For purposes of this Memorandum of Agreement, the following shall be deemed to be "publication": (1) cataloging and placing reports of research results in the library of any Institution, (2) electronic distribution of such reports and computer software in a form suitable for execution on a computer through public bulletin boards and file transfer directories.

(b)       No party shall conduct any activity or knowingly allow any activity to be conducted that would constitute a bar against filing a foreign or domestic patent without first giving the other parties sixty (60) days prior written notice.

(c)       All jointly owned Intellectual Property is deemed to be "Proprietary Information". Except as otherwise provided herein, each party agrees to keep all Proprietary Information confidential for a period of three (3) years from its date of disclosure. Each party shall protect and avoid disclosure of jointly owned Proprietary Information with the same degree of care it uses to protect and avoid disclosure of its own Proprietary Information. The obligation of nondisclosure shall not apply if:

1.      such information is, at the time of disclosure, in the public domain or such information thereafter becomes a part of the public domain with a breach of this Agreement by any party; or

2.      such information is known to the receiving party at the time of disclosure; or

3.      such information is independently developed by the receiving party; or

4.      such information is received by the receiving party from a third party who had a lawful right to disclose such information to the receiving party; or

5.      such information is disclosed with the written approval of the parties; or

6.      such information is obligated to be produced by the receiving party under the order of a court of competent jurisdiction or pursuant to state or federal law.

18.     Proprietary Nature of Research Proposals, Financial Reports and Planning Documents. Research proposals, whether funded or not, research and administrative budgets, income and expense statements, other statements of financial status, lists of prospective Industrial Members, planning documents that assess Industrial Member research needs, technology transfer plans, the annual report of the Center Evaluator and other documents that bear proprietary legends and markings are deemed to be Intellectual Property with ownership rights as defined herein above.  All such Property is deemed to be Proprietary Information and each Research Member shall protect and avoid disclosure of such Information with the same degree of care it uses to protect and avoid disclosure of its own Proprietary Information subject to the obligations and exceptions noted in Paragraph 17(c) above.

19.     Administration of Intellectual Property. Any Intellectual Property conceived or developed solely by one of the parties to this Agreement shall be administered solely by such party. Any Intellectual Property conceived or developed jointly by two or more Research Members shall be administered as hereinafter set forth. In the event that one Institution has contributed greater than any other Institution to the Intellectual Property, that Institution shall administer the Intellectual Property. In the event the Institutions have contributed equally to an Intellectual Property then the Director shall determine who shall administer the Intellectual Property. The Institutions shall jointly review any Intellectual Property, evaluate its commercial potential, and may enter into confidential nondisclosure agreements with third parties for the disclosure of the Intellectual Property. If one Institution elects to proceed with a patent application or other commercialization of the Intellectual Property and the other Institution elects not to proceed with a patent application or other commercialization of the Intellectual Property, then the Institution that has elected not to proceed with a patent application or other commercialization of the Intellectual Property shall receive ten percent of any royalty income received from such commercialization but shall incur no Intellectual Property Costs and shall have a perpetual, non-exclusive, royalty-free license, without the right to sublicense, to practice or use any Intellectual Property for educational or research purposes. The parties further agree to cooperate with each other with any administrative or court proceedings involving any Intellectual Property. The party responsible for the administration of any Intellectual Property shall substantially comply with all enforceable regulations and valid agreements pertaining to that Intellectual Property.

20.     Division of Royalty Income. The Institutions shall negotiate in good faith to set Royalty Fees for any jointly owned Intellectual Property. All Intellectual Property Costs of jointly owned Intellectual Property shall be borne by each Institution in relation to their proportionate interest in the Intellectual Property. All Royalty Income shall be shared by each Institution in proportion to t heir respective interest in the Intellectual Property. All such Royalty Income shall be distributed at least semi-annually within sixty (60) days after the end of the half fiscal year of the administering Institution. Each Institution shall be responsible for paying royalties to the Inventors of its Institution in accordance with its Intellectual Property Policy. The Institution administering any Intellectual Property shall keep the other Institution advised as to the activities in administering the Intellectual Property including any progress on commercialization, patent prosecution, or copyright protection. All such information received by either Institution shall be deemed confidential.

21.     Equipment Procurement and Title to Equipment. Any capital equipment whose total purchase price exceed $5,000 purchased with SERC funds shall require the approval of the Director, who may at his or her discretion seek the advice of the IAB.  Unless otherwise agreed in writing, all right, title, and interest in and to said equipment purchased with SERC funds shall remain with the Research Member conducting the research or the administrative function for which the equipment was purchased.

22.     Partnership not Intended. Any language herein that tends to indicate the formation of any partnership, joint venture or any other form of legal entity between or among the Members, Purdue University and the University of Florida has been used for convenience only. The Industrial Members have jointly sponsored research to be conducted by SERC. SERC is not a legal entity. Research Members may subcontract all or part of this research work to other Research Members. Although the Industrial Members shall share in any research results, no partnership, joint venture, or any other form of legal entity is intended to be formed between or among any Industrial Members.

23.     Agreement Executed in Counterparts. This agreement may be executed in sever al counterparts each of which is deemed an original and which together constitute one and the same agreement.

24.     Notices. All notices acquired and desirable hereunder shall be given by first class certified mail, postage prepaid to the following address or other such address as shall be designated in writing by the parties from time to time:

For All SERC Matters:                Dr. Aditya P. Mathur

Software Engineering Research Center

1398 Department of Computer Sciences

Purdue University

West Lafayette, Indiana 47907-1398

To Purdue University                             Dr. Aditya P. Mathur, Director

For Technical Matters:,                        Software Engineering Research Center

1398 Department of Computer Sciences

Purdue University

West Lafayette, Indiana 47907-1398

For Administrative Matters           Dr. Michael Forman, Associate Dean

School of Science

Purdue University

West Lafayette, Indiana 47907

To West Virginia University                  Dr. Ali Mili

For Technical Matters:              Department of Computer Science and Electrical Engineering

West Virginia University

Morgantown, West Virginia 26506-6109 

For Administrative Matters:                Robert David Cowan, Assistant Director

Software Engineering Research Center

Computer Science and Electrical Engineering

West Virginia University

Morgantown, West Virginia 26506-6109 

25.     General Provisions.

(a)       This Agreement contains the entire understanding between and among the parties with respect to the subject matter hereof and any representation, promise , or condition in connection therewith not incorporated herein shall not be binding on the parties. No modifications to the terms of this Agreement shall be valid unless made in writing and signed by authorized representatives of the parties as herein described. It is further agreed that nothing contained in this agreement shall modify, amend, or supersede any prior or subsequent arrangement made between Research Members and Industrial Members with respect to activities outside the scope of this Agreement.

(b)       If any term of this Agreement is held invalid or unenforceable, such term shall be considered omitted herefrom and shall not affect the validity or enforceability of the rest of the Agreement. Failure of any party to force compliance or exercise power given by this Agreement does not invalidate the Agreement.

(c)       This Agreement shall bind and inure to the benefit of the parties hereto and their respective successors and permitted assigns. This Agreement may not be assigned by any party without written consent of the other parties.

(d)      No party to this Agreement shall be held in breech of Agreement for acts of God or other causes beyond the control of the parties including, but not limited to, fire, floods, labor disputes, civil disorder, or other unforeseen circumstances.

IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be duly executed by their duly authorized officers as of the day and year set forth next to each signature.

PURDUE UNIVERSITY

By ____________________________________________________________________

Typed Name: ___________________________________________________________

Title: _______________________________ Date Signed ________________________

WEST VIRGINIA UNIVERSITY

By ____________________________________________________________________

Typed Name: ___________________________________________________________

Title: _______________________________ Date Signed ________________________

INSTITUTION: ________________________________________________________

By ____________________________________________________________________

Typed Name: ___________________________________________________________

Title: _______________________________ Date Signed ________________________