I/UCRC Sample Membership Agreement for Industry Partners
Industry/University Cooperative Research Center
Typical Membership Agreement
This Agreement is made……….this day of …… by and between the University of … (hereinafter called “University”) and …… (hereinafter called “Company”) for the Center comprising and acting through the i/ucrc for Spatiotemporal Thinking, Computing and Applications(hereinafter called “Spatiotemporal Innovation Center”), which is defined as all Center Research Sites funded by the Industry/University Cooperative Research Center Program of the National Science Foundation.
WHEREAS, the parties to this Agreement intend to join together in a cooperative effort to support an Industry/University Cooperative Research Center for Spatiotemporal Innovation (hereinafter called “CENTER”) at the UNIVERSITY to maintain a mechanism whereby the UNIVERSITY environment can be used to perform research to ____________.
WHEREAS, the CENTER will be funded through a grant provided by the National Science Foundation on _Sept.15__, 2013 bearing NSF Award No. (insert the award # for specific site)_ and made in response to the proposal submitted by (enter site university name) entitled “I/UCRC: Spatiotemporal thinking, computing and applications” (the “NSF Grant”)
The parties hereby agree to the following terms and conditions
A. CENTER will be operated by certain faculty, staff and students at the UNIVERSITY. For the first five years, the CENTER will be supported jointly by industrial firms, Federal agencies and laboratories, the National Science Foundation (NSF), the State and the UNIVERSITY. It is possible that the UNIVERSITY may receive support from NSF for an additional ten years.
B. Any COMPANY, Federal Research and Development organization, or any Government-owned Contractor Operated laboratory may become a sponsor of the CENTER, consistent with applicable state and federal laws and statutes.
C. COMPANY agrees to contribute $___ annually in support of the CENTER and thereby becomes a member. Payment of these membership fees shall be made to the University of ___ as a lump sum effective___; or in four equal quarterly installments on _____, ____, ____ and ____ of each year of sponsorship. Checks from COMPANY should be mailed to ___ and made payable to _____. On agreement of the parties, some or all of the contribution may be in kind. Because research of the type to be done by the CENTER takes time and research results may not be obvious immediately, COMPANY should join CENTER with the intention of remaining a fee paying member for at least two years. However, COMPANY may terminate this Agreement by giving UNIVERSITY 30 days written notice prior to the termination date. The COMPANY’s contribution will in all cases be non-refundable.
D. There will be an Industrial Advisory Board composed of one representative from each member. This board makes recommendations on (a) the research projects to be carried out by CENTER (b) the apportionment of resources to these research projects, and (c) changes in the bylaws.
E. UNIVERSITY reserves the right to publish in scientific or engineering journals the results of any research performed by CENTER. COMPANY, however, shall have the opportunity to review any paper or presentation containing results of the research program of CENTER prior to publication of the paper and make comments. and/or identify a possible patent application should be filed to protect an invention described in the publication, COMPANY shall have the right to request a delay in publication for a period not to exceed 30 day(s) from the date of the COMPANY’s request provided that COMPANY makes the written request within 30 days from the date the proposed publication is submitted to COMPANY. In the event a publication delay is requested to allow a patent application to be filed, the COMPANY(IES) requesting the filing shall reimburse the inventing UNIVERSITY for the costs of such filing and maintenance of the patent .
F. All patents derived from inventions conceived or first actually reduced to practice in the course of research conducted by the CENTER shall belong to the UNIVERSITY(IES) whose employee(s), under U.S. Patent Law, are determined to be inventors of such invention. UNIVERSITY, pursuant to chapter 18 of title 35 of the United States Code, commonly called the Bayh-Dole Act, will have ownership of all patents developed from this work, subject to “march-in” rights as set forth in this Act.
G. To the extent legally permissible, UNIVERSITY agrees that all COMPANIES who are members of the CENTER in good standing are entitled to a nonexclusive royalty-free license to any invention or software fully invented by UNIVERSITY, or persons obligated directly or indirectly to assign their rights to UNIVERSITY, in the performance of a grant or grants to the Center. COMPANY will have the right to sublicense such invention or software to its subsidiaries and affiliates. COMPANIES that wish to exercise rights to a royalty-free license agree to pay for the costs of patent application and maintenance. COMPANIES must request a non-exclusive, royalty-free license within ninety (90) days of receipt of the disclosure from the inventing UNIVERSITY describing the invention or software. In no event will such license extend to any background or pre-existing intellectual property. In the case of software, COMPANY will have the right to enhance and to re-market enhanced software with royalties due to UNIVERSITY to be negotiated, based on the worth of the initial software
H. If only one COMPANY seeks a license, that COMPANY may obtain an exclusive fee-bearing license and, to the extent legally permissible, the inventing UNIVERSITY will negotiate such exclusive license in good faith. COMPANY has the right to sublicense such invention to its subsidiaries and affiliates. COMPANIES must request a exclusive license within ninety (90) days of receipt of the disclosure from the inventing UNIVERSITY describing the invention. In no event will such license extend to any background or pre-existing intellectual property
I. Any royalties and fees received by UNIVERSITY under this Agreement, over and above expenses incurred, will be distributed according to the university policy.
J. Neither party is assuming any liability for the actions or omissions of the other party. Each party will be responsible for all claims, liability, injury, damage or cost based upon injury or death to persons, or loss of, damage to, or loss of use of property that arises out of the performance of this agreement to the extent that such claims, liability, damage, cost or expense results from the negligence of their own agents or employees.