EXHIBIT 10.5
TEAMING AGREEMENT BETWEEN TENSIODYNE CORPORATION
AND
SOUTHWEST RESEARCH INSTITUTE
TEAMING AGREEMENT
No. 96-058
THIS AGREEMENT made and entered into by and between SOUTHWEST RESEARCH
INSTITUTE (hereinafter referred to as "SwRI") located at ▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇, ▇▇▇
▇▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇-▇▇▇▇, and TENSIODYNE SCIENTIFIC CORPORATION (hereinafter
referred to as the "Subcontractor") located at 11835 ▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇,
▇▇▇▇▇ ▇▇▇, ▇▇▇▇ ▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇.
WHEREAS, SwRI intends to submit a proposal as prime contractor to the
Government in response to a Task Order Request that may be issued pursuant to
an existing SwRI ID/IQ contract concerning a program entitled
"ELECTROCHEMICAL METAL FATIGUE MONITORING TECHNOLOGY" (hereinafter referred
to as "the Program");
WHEREAS, the existing Electrochemical Metal Fatigue Monitoring Technology
("EPS") is a proprietary technology previously developed by Subcontractor and
the University of Pennsylvania.
WHEREAS, SwRI and the Subcontractor desire to combine their respective
capabilities with the capabilities of the University of Pennsylvania in a team
effort to submit said proposal for the Program and to complete the work required
by any work statement in any task order (hereinafter referred to as "Task
Order") resulting from such proposal; and
WHEREAS, SwRI and the Subcontractor desire to define their mutual rights
and obligations during the preparation and submittal of said proposal and under
any subsequent Task Order resulting therefrom, consistent with federal/state
laws governing restraint of trade or competition as applicable.
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NOW THEREFORE, to effect the foregoing, SwRI and the Subcontractor in
consideration of the mutual covenants hereinafter contained, agree as follows:
1. The proposal will be based on SwRI acting as the prime contractor to
the Government for any resultant Task Order, and Tensiodyne Scientific
Corporation and the University of Pennsylvania acting as subcontractors to SwRI,
furnishing of support to the Prime Contractor under the Program. Any resulting
subcontract to the Subcontractor will involve, but may not be limited to, work
set forth in Exhibit "A" in Statement of Work attached hereto.
2. SwRI will prepare and submit its proposal to the Government with
assistance from the Subcontractor in the following areas: inputs on selected
Statement of Work tasks, related experience information, tailored resumes on key
personnel, and appropriate costs information, all to be used in preparation of
the SwRI proposal. Details and formats for these inputs will be provided
separately.
3. SwRI will recognize and identify the Subcontractor in its proposal and
use its diligent efforts to secure Government approval of the use of the
Subcontractor in the Program for the area of responsibility described in Exhibit
A, including but not limited to affording Subcontractor an opportunity to
accompany SwRI on a visit to the Government for the purpose of securing such
approval. SwRI will keep the Subcontractor fully advised of any changes which
affect its area of responsibility.
4. In the event SwRI is awarded the Task Order contemplated by the
Request for Task Order Proposal identified on Page One of this Agreement, to
accomplish the work set forth in Exhibit "A" of this Agreement, it is agreed
that SwRI and the Subcontractor will, in good faith, proceed in a timely manner
to negotiate a mutually acceptable subcontract(s) for the selected portions of
the work identified in Exhibit "A" and described in a responsible technical/cost
proposal prepared by the Subcontractor, unless otherwise directed by the
Government. The
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subcontract shall embody, among other provisions, those terms and conditions of
the prime contract which must be passed on to the Subcontractor in order to
comply with such prime contract (a) terms and conditions setting forth the work
specified on Exhibit A; (b) provisions setting forth the prices contained in the
Subcontractor's proposal or those approved in writing by Subcontractor prior to
their inclusion in the Proposal; and (c) other provisions mutually agreed to by
and between SwRI and the Subcontractor including those set forth on Exhibit B.
The subcontract will be negotiated at a fair and reasonable price(s) to be
established after cost or price analysis in accordance with the requirements of
the applicable Government procurement regulation. In the event that
negotiations with the Government result in a substantial reduction of the
Subcontractor's area of responsibility from that proposed by the Prime
Contractor, SwRI shall afford Subcontractor an opportunity to accompany SwRI on
a visit to the Government for the purpose discussing the Government's decision
and making a presentation to the Government for the purpose of reversing the
Government's decision and securing the Government approval for Subcontractor of
the original areas of responsibility. It is understood between SwRI and the
Subcontractor that any such subcontract will be subject to the approval of the
Contracting Officer of the procuring authority of the United States Government,
regardless of the provisions hereof.
The subcontract shall include the following clause as well as those
contained on Exhibit B:
"In the event any cost negotiated in connection with the contract
between the Government and SwRI or any cost that is reimbursable under
such contract is reduced as a result of a formal demand by the
Government Contracting Officer because cost or pricing data furnished
and certified to by the Subcontractor is defective, the Subcontractor
will reimburse SwRI for such cost. However, the Subcontractor shall
not be liable for SwRI's profit on the Subcontractor's cost or pricing
data.
For the purposes of administering this clause and interpreting the
rights and obligations of the parties, the various rules and
guidelines provided for in FAR 15.804 and 15.806 shall govern.
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SwRI agrees that the Subcontractor shall have the right in accordance
with the intent set forth in the applicable FAR clause, to proceed
under SwRI's name (by asserting the prime contract) by entering appeal
from any decision of the Contracting Officer concerning the alleged
submission of defective cost or pricing data by the Subcontractor
under the subcontract, and SwRI agrees that it will give the
Subcontractor prompt notice of such decision in order that an appeal
may be perfected."
Each party shall exert its diligent efforts toward the successful
performance of the Task Order contemplated by the Request for Task Order
Proposal identified on Page One of this Agreement, assuming award of the Task
Order and the subcontract to the parties hereto, and shall provide appropriate
and high quality managerial, marketing, advisory, technical, and other personnel
to perform and support such contracts.
5. LIMITATIONS ON USE OF DATA AND INFORMATION
a. The parties anticipate that under this Agreement it may be
necessary for either party to transfer to the other information
of a proprietary nature. Proprietary information shall be
clearly identified by the disclosing party at the time of
disclosure by (i) appropriate stamp or markings on the document
exchanged; or (ii) written notice, with attached listings of all
material, copies of all documents, and complete summaries of all
oral disclosures (under prior assertion of the proprietary nature
of the same) to which each notice relates, delivered within two
(2) weeks of the disclosure to the other party.
b. Each of the parties agrees that it will use the same reasonable
efforts to protect such information as are used to protect its
own proprietary information. Disclosures of such information
shall be restricted to those
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individuals who are directly participating in the proposal,
contract and subcontract efforts identified in Articles 1, 2, 3,
and 4 hereof.
c. Neither party shall make any reproduction, disclosure, or use of
such proprietary information except as follows:
(1) Such information furnished by the Subcontractor may be used,
reproduced and/or disclosed by SwRI in performing its
obligations under this Agreement.
(2) Such information furnished by SwRI may be used, reproduced
and/or disclosed by the Subcontractor in performing its
obligations under this Agreement.
(3) Such information may be used, reproduced and/or disclosed
for other purposes only in accordance with prior written
authorization received from the disclosing party.
d. The limitations on reproduction, disclosure, or use of
proprietary information shall not apply to, and neither party
shall be liable for reproduction, disclosure, or use of
proprietary information with respect to which any of the
following conditions exist:
(1) If, prior to the receipt thereof under this Agreement, it
has been developed or learned independently by the party
receiving it, or has been lawfully received from other
sources without any restriction of non-disclosure, including
the Government, provided such other source did not receive
it due to a breach of this Agreement or any other agreement.
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(2) If, subsequent to the receipt thereof under this Agreement,
(i) it is published by the party furnishing it or is
disclosed, by the party furnishing it to others, including
the Government, without restriction; or (ii) it has been
lawfully obtained, by the party receiving it, from other
sources without any restriction of non-disclosure including
the Government, provided such other source did not receive
it due to a breach of this or any other agreement; or (iii)
such information otherwise comes within the public knowledge
or becomes generally known to the public without breach of
this Agreement;
(3) If any part of the proprietary information has been or
hereafter shall be disclosed in a United States patent
issued to the party furnishing the proprietary information
hereunder, the limitations on such proprietary information
as is disclosed in the patent shall be only that afforded by
the United States Patent Laws after the issuance of said
patent.
e. Neither the execution and delivery of this Agreement, nor the
furnishing of any proprietary information by either party shall
be construed as granting to the other party either expressly, by
implication, estoppel, or otherwise, any license under any
invention or patent now or hereafter owned or controlled by the
party furnishing the same.
f. Notwithstanding the expiration of the other portions of this
Agreement, the obligations and provisions of this Article 5 shall
continue for a period of
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three (3) years from the date of this Agreement, however, any
resulting contract shall take precedence.
g. Each party will designate in writing one (1) or more individuals
within its organization as the only point(s) for receiving
proprietary or security information exchanged between the parties
pursuant to this Agreement.
6. RIGHTS IN INVENTIONS
Inventions conceived or first reduced to practice during the course of
work under the Contract contemplated by this Agreement shall remain the property
of the originating party. In the event of joint inventions, the parties shall
establish their respective rights by negotiations between them. In this regard,
it is recognized and agreed that the parties may be required to and shall grant
license or other rights to the Government to inventions, data and other
information under such standard provisions which may be contained in the
Government Contract contemplated by this Agreement, provided, however, such
license or other rights shall not exceed those required by said Contract.
7. No publicity or advertising regarding any proposal or contract under
the Program or relating to this Agreement shall be released by either party
without the prior written approval of the other party. No advertising or
publicity containing any reference to the Subcontractor or any of its employees,
either directly or by implication, shall be made use of by SwRI or on SwRI's
behalf, without the Subcontractor's prior written approval.
8. All communication relating to this Agreement shall be directed only to
the specific person designated to represent SwRI and the Subcontractor on this
Program. Each of the parties to this Agreement shall appoint one (1) technical
and one (1) administrative representative. These appointments shall be kept
current during the period of this Agreement. Communications which are not
properly directed to the persons designated to represent SwRI and the
Subcontractor shall
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not being binding upon SwRI or the Subcontractor. For purposes of this section,
"properly directed" shall mean an oral communication or a written correspondence
addressed and transmitted to the individuals identified below.
All technical notices shall be addressed to:
As to SwRI:
▇▇. ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇, ▇▇.
Director, Materials Engineering Department
Southwest Research Institute
P.O. Drawer 28510
▇▇▇ ▇▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇-▇▇▇▇
210/522-2330
As to SUBCONTRACTOR:
▇▇. ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇
TENSIODYNE SCIENTIFIC CORPORATION
11835 ▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇
▇▇▇▇ ▇▇▇ ▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
All contractual notices shall be addressed to:
As to SwRI:
▇▇. ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇
Director, Contracts
Southwest Research Institute
P.O. Drawer 28510
▇▇▇ ▇▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇-▇▇▇▇
210/522-2235
As to SUBCONTRACTOR:
▇▇. ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇
TENSIODYNE SCIENTIFIC CORPORATION
11835 ▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇
▇▇▇▇ ▇▇▇ ▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
9. Except for the conditions expressed in Articles 4 and 5 hereof, this
Agreement, which is effective upon the date of its execution by the last of the
signatory parties hereto, shall
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automatically expire and be deemed terminated effective upon the date of the
happening or occurrence of any one of the following events or conditions,
whichever shall first occur:
a. Official Government announcement or notice of the cancellation of
the Program.
b. The receipt by SwRI of written notice from the Government that
it will not award to it the Task Order for the Program.
c. The receipt of written notice from the Government that it has
awarded a Contract or Task Order for the Program to someone other
than SwRI.
d. The receipt of official Government notice that the Subcontractor
will not be approved as a major subcontractor under the Task
Order to SwRI on the Program or that substantial areas of the
Subcontractor's proposed responsibility AND/OR RELATED COSTS have
been eliminated from the requirements, OR DISAPPROVED BY THE
GOVERNMENT as long as the parties have met their obligations as
set forth in Sections 3 and 4 above.
e. Award of a subcontract to the Subcontractor by SwRI for its
designated portion of the Program.
f. Mutual agreement of the parties to terminate the Agreement.
g. The expiration of a three (3) month period commencing on the
effective date of this Agreement unless such period is extended
by mutual agreement of the parties during which the Government
fails to issue the Task Order for the Program OR, ALTERNATIVELY,
THE PARTIES FAIL TO REACH AGREEMENT ON THE COSTS/PRICES AND TASKS
TO BE INCLUDED IN THE SUBCONTRACTOR'S PROPOSAL TO BE SUBMITTED TO
THE GOVERNMENT AS PART OF SwRI'S PROPOSAL.
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h. FAILURE OF THE PARTIES DESPITE GOOD FAITH NEGOTIATIONS TO REACH
AGREEMENT AND EXECUTE A SUBCONTRACT BASED UPON EXHIBIT A ON OR
BEFORE DECEMBER 15, 1996 UNLESS MUTUALLY EXTENDED IN WHICH EVENT
SwRI SHALL END ALL ACTIVITIES RELATING TO PERFORMANCE OF THE
PROGRAM.
i. If this Agreement terminates for any of the reasons set forth
above, excluding (e) above, SwRI shall either decline to submit a
proposal for the Program or alternatively, if SwRI has submitted
a proposal to the
9A
Government, withdraw its proposal for the Program from further
consideration by the Government.
10. This Agreement pertains only to the proposal relating to the Program
and to no other joint or separate effort undertaken by SwRI or the
Subcontractor. The parties hereto shall be deemed to be independent contractors
and the employees of one (1) party shall not be deemed to be employees of the
other. This Agreement shall not constitute, create, or in any way be
interpreted as a joint venture, partnership, agency relationship or formal
business organization of any kind.
11. This Agreement may not be assigned or otherwise transferred by either
party, in whole or in part, without the express prior written consent of the
other party.
12. This Agreement shall not preclude either party from bidding or
contracting independently from the other on any Government or industry program
which may develop or arise in the general area of business related to this
Agreement or in any other area.
13. This Agreement shall be governed, construed and interpreted in
accordance with the laws of the United States and the State of Texas.
14. Access to security information classified "Top Secret," "Secret," and
"Confidential," shall be governed by the provisions of FAR 52.204-2. Should
provisions be established by the Government for special access handling of
selected information relating to this Program, access will be governed by such
provisions.
15. This Agreement contains the entire agreement of the parties and
cancels and supersedes any previous understanding or agreement related to the
Program, whether written or oral. All changes or modifications to this
Agreement must first be agreed to in writing between the parties.
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16. Each party to this Agreement will bear its respective costs, risks, and
liabilities incurred by it as a result of its obligations and efforts under this
Agreement. Therefore, neither SwRI nor the Subcontractor shall have any right
to any reimbursement, payment, or compensation of any kind from each other
during the period prior to the award and execution of any resulting subcontract
between SwRI and the Subcontractor for the Program and work described in this
Agreement.
17. To the extent permitted by law, during the effective term of this
Agreement SwRI and the Subcontractor each agree that it will not participate in
any manner in other teaming efforts that are competitive to this Teaming
Agreement. Moreover, during the effective term of this Agreement, SwRI and the
Subcontractor each agree that it will not compete independently (including the
independent submission of a proposal to the Government) for the work specified
in this Agreement. The term "participate" as used herein includes (but is not
limited to) the interchange of technical data with competitors.
18. Either party hereto is authorized to disclose the terms and conditions
of this Agreement to appropriate Government officials upon their request.
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19. In the event a Task Order is not awarded to SwRI as a result of a
proposal each party will, at the request of the other party, return all
materials such as, but not limited to, those that are written, printed, drawn,
or reproduced, to the originating party.
20. This Agreement is executed in multiple originals upon the date set
forth beside the final execution signature.
21. Exhibit C attached contains agreed to language of Federal Lobbying Act.
SOUTHWEST RESEARCH INSTITUTE
By /s/ ▇▇▇▇▇▇ ▇▇▇▇
---------------------------
for ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇
Title Director, Contracts
Date August 22, 1996
TENSIODYNE SCIENTIFIC
CORPORATION
By /s/ ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇
--------------------------
Name ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇
--------------------------
Title Pres.
--------------------------
Date 8/23/96
--------------------------
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EXHIBIT A
In anticipation of the issuance by the San Antonio Air Logistics Center,
▇▇▇▇▇ Air Force Base, San Antonio, Texas, of a task order and a statement of
work pursuant to Contract No. F41608-96-D-0108, for services to improve fatigue
life prediction utilizing the Electrochemical Fatigue Sensor and its related
technology (the "Services"), Southwest Research Institute ("SwRI") and
Tensiodyne Scientific Corporation ("Tensiodyne") agree that Tensiodyne shall
perform as subcontractor to SwRI which shall act as the prime contractor in the
performance of the Services. The University of Pennsylvania ("Penn") shall also
be a subcontractor to SwRI and close technical interactions will be required
among Tensiodyne, Penn, and SwRI as indicated below.
The purpose of the work is to improve the U.S. Air Force's capability to
perform durability assessments of military aircraft, including both airframes
and engines using novel Electrochemical Fatigue Sensor (EFS) technology to
detect the stages of fatigue damage prior to, and after, the onset of fatigue
cracking. The proposed program will include the following three phases: 1)
Phase 1: Feasibility, 2) Phase 2: Development, and 3) Phase 3:
Validation; work on the feasibility phase is proposed for the first year and
a half of the project. The overall objectives of this phase are to 1)
characterize the phenomena of current transients in representative airframe
and engine materials, 2) assess the feasibility of constructing sensors from
electrolytic gels and combination electrodes, and 3) evaluate both the
fundamental and practical limitations associated with key technical
challenges. Provided the milestones of this phase are met, the Phase 1 work
will provide the basis for proceeding in subsequent years to Phase 2 and
Phase 3 in development of a suitable breadboard device in support of the EFS.
The tasks to be performed in the first year and a half are provided in the
following Work Breakdown Structure (WBS).
PHASE 1: FEASIBILITY
*1.1 Establish viability of transient current measurements on a range of
typical aircraft alloys (e.g., 7075-I73, Ti-6-4, and 4130 steel).
------------------
* Penn shall have the primary technical responsibility for these tasks
and be supported by Tensiodyne.
+ SwRI shall have the primary technical responsibility for these tasks
and be supported by Tensiodyne.
A-1
*1.2 Establish viability of measurements under bounding load ratios,
frequencies, and waveforms associated with typical spectrum fatigue
loading of fighter/trainer and transport aircraft.
*1.3 Develop nondamaging electrolytic gel and establish shelf-life.
*1.4 Establish possible influence of electrolytic gel on fatigue damage
in selected aircraft alloys under both continuous and intermittent
exposure.
*1.5 Develop suitable reference electrodes which are compatible with
electrolytic gel and optimize for use in aircraft component tests
in Phase 2: Development.
*1.6 Develop general relationships among transient current traces, key
loading variables, and extent of fatigue damage for selected aircraft
alloys. The key loading variables shall include loading frequency and
waveform, load ratio, and load amplitude (including both elastic and
plastic loading).
*1.7 Explore fundamental relationship between transient current response
under elastic versus elastic-plastic strains.
+1.8 Establish practicality of measurements on protected (e.g., anodized,
primed and painted) as well as corroded surfaces, and if necessary,
develop methods to remove/reapply protective surface coatings without
altering underlying fatigue damage. This effort shall be coordinated
with the USAF's Coating Technology Integration Office (CTIO).
+1.9 Perform tests and develop associated signal analysis techniques to
establish that the sensor output will be interpretable for typical
aircraft spaces.
+1.10 Resolve electrical isolation issues associated with application of
EFS to aircraft components and structures.
In anticipation of receiving funding in the amount of $2.5 million
pursuant to the anticipated task order to be issued by ▇▇▇▇▇ Air Force Base
pursuant to Contract No. F41608-96-D0108 and based upon the description of
tasks and division of task responsibilities in the above WBS, Tensiodyne
shall receive $820,000 for their respective responsibilities. The actual
funding to Tensiodyne will be based upon their cost proposals as
subcontractors to SwRI in response to the Government's SOW and the subsequent
acceptance of SwRI's technical and cost proposal by the Government.
Tensiodyne will assist both SwRI and Penn as indicated in the above WBS.
Tensiodyne assistance to Penn will be supplied by providing staff members to
work under the direction of ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇.
A-2
EXHIBIT B
Agreed to Terms and Conditions as per telephone conversation on August 22, 1996.
I. Termination for Convenience
II. Rights in Inventions and Works of Authorships
III. Proprietary Rights
IV. Government Data Rights
V. Dispute Resolution
VI. Indemnification
EXHIBIT C
No Federal appropriated funds have been paid or will be paid, by or on behalf of
the undersigned, to any person for influencing or attempting to influence an
officer or employee of any agency, a Member of Congress, an officer or employee
of Congress, or an employee of a Member of Congress in connection with the
awarding of any Federal contract, the making of any Federal grant, the making of
any Federal loan, the entering into of any cooperative agreement, and the
extension, continuation, renewal, amendment, or modification of any Federal
contract, grant, loan, or cooperative agreement.
If any funds other than Federal appropriated funds have been paid or will be
paid to any person for influencing or attempting to influence an officer or
employee of any agency, a Member of Congress, an officer or employee of
Congress, or an employee of a Member of Congress in connection with this Federal
contract, grant, loan, or cooperative agreement, the undersigned shall complete
and submit Standard Form -LLL, "Disclosure Form to Report Lobbying," in
accordance with its instructions.
The undersigned shall require that the language of this certification be
included in the award documents for all subawards at all tiers (including
subcontracts, subgrants, and contracts under grants, loans, and cooperative
agreements) and that all subrecipients shall certify and disclose accordingly.
This certification is a material representation of fact upon which reliance was
placed when this transaction was made or entered into. Submission of this
certification is a prerequisite for making or entering into this transaction
imposed by section 1352, title 31, U.S. Code. Any person who fails to file the
required certification shall be subject to a civil penalty of not less than
$10,000 and not more than $100,000 for each such failure.
ADDITIONAL TERMS AND CONDITIONS TO BE INCLUDED IN THE SUBCONTRACT BY AND
BETWEEN SOUTHWEST RESEARCH INSTITUTE AND TENSIODYNE SCIENTIFIC CORPORATION AS
AGREED TO BY THE PARTIES ON AUGUST 22 AND 23, 1996 AND AS REFERENCED IN
THE TEAMING AGREEMENT BETWEEN THE PARTIES EXECUTED ON AUGUST 23, 1996
I. TERMINATION FOR CONVENIENCE
Performance of work under this Subcontract may be terminated in whole or in
part by SwRI, at any time, only if and to the extent that the Government
terminates the corresponding work set forth in the Task Order issued to SwRI
pursuant to Contract ______________. Any such termination shall be effected by
delivery to Subcontractor of a Notice of Termination specifying the extent to
which performance of work under this Subcontract is terminated and the date upon
which such termination becomes effective. Such termination of this Subcontract
shall be in accordance with FAR _________ as incorporated by reference pursuant
to Exhibit __ of this Subcontract.
II. RIGHTS IN INVENTIONS AND WORKS OF AUTHORSHIP
A. During the performance of this Subcontract, subject to the rights
granted to the Government as discussed in Article __ of this Subcontract,
inventions, works of authorship and other proprietary technical data (as well as
the copyrights, patents and similar rights attendant thereto):
(1) conceived and reduced to practice, or, in the cases of works of
authorship, authored solely by employees of, or persons under contract
to, either party shall be owned exclusively by that party:
(2) conceived and reduced to practice, or, in the cases of works of
authorship, authored jointly by the parties shall be owned as
determined by the parties' good faith negotiations to establish their
respective rights. Failing agreement or resolution of the matter
pursuant to the dispute resolution procedure of this Subcontract, each
party shall have an equal undivided one-half interest in the
invention, work of authorship, proprietary technical data, copyright
or patent. Subject to the Government's rights, the parties agree to
use their best efforts to reach mutual agreement as to their
rights and obligations in connection with the commercial
exploitation of any joint invention, work or authorship or proprietary
technical data. Failing agreement, the matter shall be a Dispute and
resolved as set forth in accordance with the dispute resolution
procedure of this Subcontract. Each of the parties agrees to cause
their employees to produce only "works made for hire" hereunder and
will hold the other party harmless from their failure to do so.
B. Each party agrees to use its best efforts to require its employees,
and if appropriate, other persons under contract to it, to provide reasonable
assistance in the
procurement and protection of rights conferred by this Article and to execute
all lawful documents in conjunction therewith. Expenses incurred in conjunction
with the preparation of patent applications, applications for copyright
registrations and in enforcing proprietary rights therein shall be borne by the
party owning such rights or, if jointly owned, by the parties in proportion to
their respective interests.
III. PROPRIETARY RIGHTS
SwRI shall be afforded, to the extent required to meet its obligations
under this Subcontract and the Task Order issued pursuant to Contract No. ___,
the same rights and obligations as the Government regarding technical data,
computer software and other deliverables under this Subcontract.
IV. GOVERNMENT DATA RIGHTS
The rights granted to the Government with regard to technical data shall be
determined in accordance with DFARS 252.227-7013 (Nov. 1995). Both parties
acknowledge that Subcontractor and SwRI possess pre-existing technical data,
developed exclusively at private expense and such data shall not be delivered
with "unlimited rights." Such pre-existing technical data, as well as
pre-existing patents shall be identified by Subcontractor and shall be marked in
accordance with DFARS 252.227-7013 (Nov. 1995). SwRI acknowledges and agrees
that it shall fully inform the Government of such pre-existing technical data
and patent rights.
V. DISPUTE RESOLUTION
A. DISPUTES UNDER THIS SUBCONTRACT. This paragraph A governs all claims,
controversies or disputes arising out of or relating to this Subcontract or its
breach ("Disputes") that are not directly or indirectly subject to resolution
under the Disputes Clause of the Prime Contract. Any Dispute that is not
disposed of by written mutual agreement will be preliminarily determined by
SwRI's Authorized Representative, who will within 15 days render a preliminary
written determination on the issues in dispute and furnish a copy thereof to the
Subcontractor. The preliminary determination will become final and conclusive
unless the Subcontractor submits a written demand for arbitration to the
American Arbitration Association within 30 days of the preliminary
determination. The Dispute will then be arbitrated, pursuant to the Commercial
Rules of the American Arbitration Association, before a panel of three
arbitrators. The "preliminary determination" will not bind the arbitrators and
will not prejudice the legal position of either party in the arbitration. One
of the arbitrators will be selected by each party, and the third arbitrator will
be selected by the two party-appointed arbitrators. Any such arbitration will
be held in the _____________ metropolitan area. The parties will share the
costs of the arbitration equally subject to final apportionment by the
arbitrators. The arbitrators will apply the law chosen by the parties to govern
this Subcontract. The decision of the arbitrators may be entered in any court
of competent jurisdiction. Neither party will institute any action or
proceeding against the other party in any court concerning any Dispute that is
or could be the subject of a claim or proceeding under this paragraph A. The
arbitrators shall not award exemplary or punitive damages to either party.
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B. DISPUTES UNDER THE PRIME CONTRACT. This paragraph B governs all
Disputes of the Subcontractor concerning matters that are directly or
indirectly subject to resolution under the Disputes Clause of the Prime
Contract. SwRI will submit any such Dispute to the Contracting Officer under
the Prime Contract for a written decision under the Disputes Clause of the
Prime Contract and will notify the Subcontractor of any final decision of the
Contracting Officer under the Prime Contract that relates to this Subcontract
or to the Subcontractor's performance under it within 10 days after SwRI
receives the decision. Any final decision will be conclusive and binding
upon the Subcontractor unless it is appealed pursuant to paragraph A. above
or pursuant to the Disputes Clause of the Prime Contract.
If SwRI elects not to appeal any final decision of the Contracting Officer
under the Disputes Clause of the Prime Contract, SwRI will so notify the
Subcontractor in writing within 20 days after SwRI receives the final decision.
Within 30 days after Subcontractor receives SwRI's notice of its decision not to
appeal the final decision of the Contracting Officer, Subcontractor notify SwRI
that Subcontractor wishes to appeal that final decision pursuant to the Disputes
Clause of the Prime Contract. SwRI shall, within 10 days either grant or deny
the Subcontractor an indirect right to appeal that final decision in SwRI's name
under the Disputes Clause of the Prime Contract. Both parties acknowledge and
agree that with regard to Disputes concerning alleged submissions of defective
cost or pricing data, SwRI shall grant Subcontractor's request. Subcontractor
will pay all costs and expenses of any such appeal. Subcontractor will be
solely responsible for prosecuting the appeal and preparing and presenting all
pleadings, evidence and argument. Subcontractor will provide monthly written
reports to SwRI of the progress of the appeal and will furnish SwRI copies of
all pleadings and non-privileged correspondence filed or received by it
concerning the appeal.
If SwRI is required to submit a certification to the Government regarding a
claim submitted pursuant to the Contract Disputes Act, Subcontractor will make
available to SwRI all data and documentation that is necessary or appropriate to
support or confirm the certification.
In the event, SwRI denies Subcontractor an indirect right to appeal a
final decision in SwRI's name under the Disputes Clause of the Prime
Contract, both parties acknowledge and agree that such Dispute shall be
considered a Dispute by and between the Subcontractor and SwRI and that such
Dispute shall be submitted to arbitration in accordance with paragraph A.
above. SwRI agrees that it shall not utilize as a defense the fact that the
Dispute was one that concerns matters that were directly or indirectly
subject to resolution under the Prime Contract to any alleged damages or
costs owed to Subcontractor arising in connection with the Dispute, and SwRI
agrees to step into the shoes of the Government with regard to such Dispute.
C. DISPUTE-RESOLUTION METHOD AND CONTINUATION OF PERFORMANCE. Pending
the final resolution of any Dispute under this Article, Subcontractor will
proceed diligently to perform this Subcontract and comply with SwRI's
preliminary determination.
VI. INDEMNIFICATION
Each party and its agents, employees and authorized assigns shall be
indemnified, defended and held harmless (including reasonable attorneys fees) by
the other party against all
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third party liability (including liability to the government) that arises
from or in connection with negligence, or willful, wanton, or reckless
conduct of the other party, its employees, agents, subcontractors, or
authorized assigns in the performance of this Subcontract which causes damage
to real or tangible personal property, death or bodily injury, provided that:
(1) the indemnifying party was properly notified in writing of the claim; (2)
the indemnifying party was allowed to direct the defense or settlement of the
claim; (3) if requested, the indemnified party reasonably assisted the
indemnifying party at the indemnifying party's expense in defending or
settling the claim.
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