Exhibit 6.8
▇▇▇▇▇▇▇▇▇-▇▇▇▇▇▇ (15 USC 3710)
COOPERATIVE RESEARCH AND DEVELOPMENT AGREEMENT (hereinafter "CRADA")
NO. _____
BETWEEN
MIDWEST RESEARCH INSTITUTE, Operator of THE NATIONAL RENEWABLE ENERGY
LABORATORY under its U.S. Department of Energy Contract No. DE-AC36-83CH10093,
▇▇▇▇
▇▇▇▇ ▇▇▇▇., ▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇ (hereinafter "Contractor")
AND
AMERISEN ▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
(hereinafter "Participant"),
both being hereinafter jointly referred to as the "Parties"
ARTICLE 1: DEFINITIONS
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A., "Government" means the United States of America and agencies thereof.
B. "DOE" means the Department of Energy, an agency of the United States of
America.
C. "Contracting Officer" means the DOE employee administering the Contractor's
DOE contract.
D. "Generated Information" means information produced in the performance of
this CRADA.
E. "Proprietary Information" means information which embodies trade secrets
developed at private expense outside of this Agreement and commercial or
financial information which is privileged or confidential under the Freedom of
Information Act (5 USC 552 (B)(4)); and which is marked as Proprietary
Information.
F. "Protected CRADA Information" means Generated Information which is marked
as being Protected CRADA Information by a Party to this Agreement and which
would have been Proprietary Information had it been obtained from a non-federal
entity.
G. "Subject Invention", as used in this Agreement, means any invention of the
Contractor or Participant conceived or first actually reduced to practice in the
performance of work under this CRADA.
H. "Intellectual Property" means Patents, Trademarks, Copyrights, Mask
Works, Protected CRADA Information and other forms of comparable property rights
protected by Federal Law and other foreign counterparts.
ARTICLE II: STATEMENT OF WORK
-----------------
Appendix A, "Joint Work Statement", is attached hereto and hereby incorporated
into this CRADA by reference.
ARTICLE III: FUNDING & COSTS
---------------
A. The Participant's estimated contribution is [*]. The Government's estimated
contribution, which is provided through the Contractor's contract with DOE, is
[*] subject to available funding from DOE's Office of Energy Efficiency and
Renewable Energy.
B. Neither Party shall have an obligation to continue or complete
performance of its work at a cost in excess of its estimated cost as contained
in Article III A above, including any subsequent amendment.
C. Each Party agrees to provide at least sixty (60) days advance notice to
the other Party if the actual cost to complete performance will exceed its
estimated cost. If the Parties mutually agree to continue the project, the
estimated cost shall be appropriately amended and the Parties shall agree on the
share of each Party of such increase in estimated cost by duly executed
amendments to this CRADA.
ARTICLE IV: PROPERTY
--------
All tangible personal property produced under this CRADA shall become the
property of the Participant or the Government depending upon whose funds were
used to obtain it. Such property is identified in Appendix B, Property List.
Personal Property shall be disposed of as directed by the owner at the owner's
expense. All jointly funded property shall be owned by the Government.
ARTICLE V: DISCLAIMER
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THE GOVERNMENT, THE PARTICIPANT, AND THE CONTRACTOR MAKE NO EXPRESS OR IMPLIED
WARRANTY AS TO THE CONDITIONS OF THE RESEARCH OR ANY INTELLECTUAL PROPERTY OR
PRODUCT MADE OR DEVELOPED UNDER THIS CRADA, OR THE OWNERSHIP, MERCHANTABILITY OR
F=SS FOR A PARTICULAR PURPOSE OF THE RESEARCH OR RESULTING PRODUCT. NEITHER THE
GOVERNMENT, THE PARTICIPANT, NOR THE CONTRACTOR SHALL BE LIABLE FOR LOST
PROFITS, LOST SAVINGS, SPECIAL, CONSEQUENTIAL, INCIDENTAL OR OTHER INDIRECT
DAMAGES, EVEN IF SUCH PARTY IS MADE AWARE OF THE POSSIBILITY THEREOF.
ARTICLE VI: PRODUCT LIABILITY
-----------------
Except for any liability resulting from any negligent or intentional acts or
omissions of Contractor, Participant indemnities the Government and the
Contractor for all damages, costs and expenses, including attorney's fees,
arising from personal injury or property damage occurring as a result of
[*] Omitted pursuant to request for confidentiality filed with the Securities
and Exchange Commission.
the making, using or selling of a product, process or service by or on behalf of
the Participant, its assignees or licensees, which was derived from the work
performed under this CRADA. With respect to this Article, neither the Government
nor the Contractor shall be considered assignees or licensees of the
Participant, as a result of reserved Government and Contractor rights. The
indemnity set forth in this Paragraph shall apply only if Participant shall have
been informed as soon and as completely as practical by the Contractor and/or
the Government of the action alleging such claim and shall have been given an
opportunity, to the extent afforded by applicable laws, rules, or regulations,
to participate in and control its defense, and the Contractor and/or Government
shall have provided reasonably available information and reasonable assistance
requested by Participant. No settlement for which Participant would be
responsible shall be made without Participant's consent unless required by final
decree of a court of competent jurisdiction.
ARTICLE VII: OBLIGATIONS REGARDING PROPRIETARY INFORMATION
---------------------------------------------
A. If Proprietary Information is orally disclosed to a Party, it shall be
identified as such, orally, at the time of disclosure and confirmed in a written
summary sent to the recipient within ten (10) days of such disclosure, and
marked as being Proprietary Information.
B. The Parties agree to use Proprietary Information only in the performance of
this CRADA and not to further disclose such information to others without the
provider's prior written approval, except that Contractor may disclose such
information to Government employees who are subject to the statutory provisions
against disclosure of confidential information set forth in the Trade Secrets
Act (18 USC 1905).
C. All Proprietary Information shall be returned to the provider thereof at
the conclusion of this CRADA at the provider's expense unless otherwise agreed
in writing.
D. The foregoing provisions do not apply to Proprietary Information which 1)
is or becomes publicly known without recipient's breach of this Agreement, 2)
was known by the recipient prior to its disclosure hereunder, 3) comes into the
recipient's possession, other than from a Party hereto or pursuant to this
CRADA, without recipient's breach of this Agreement, or 4) is independently
developed by any employee, independent consultant, or subcontractor of the
recipient or the Government to which such Proprietary Information was not
disclosed.
ARTICLE VIII: OBLIGATIONS REGARDING PROTECTED CRADA INFORMATION
-------------------------------------------------
A. Each Party may designate as Protected CRADA Information, as defined in
Article 1, any Generated Information produced by its employees, and with the
agreement of the other Party, ▇▇▇▇ or have marked any Generated Information
produced by the other Party's employees. All such designated Protected CRADA
Information shall be appropriately marked.
B. The Parties and DOE agree not to license or otherwise disclose Protected
CRADA Information to any third party for a period of five (5) years from the
date it was produced (except as provided in Paragraphs C, D and E immediately
below). Such information shall be reduced to writing and marked as Protected
CRADA Information within 10 days of such production, at which point the five-
year period begins.
C. Further, the Parties shall protect from disclosure to third parties
(excluding DOE) any Protected CRADA Information describing a Subject Invention
for a reasonable period in order to file a U.S. patent application thereon and
to preserve foreign filing rights.
D. The obligations of nondisclosure set forth in Article VIII, Paragraph B
above shall apply except 1) upon request by the DOE Contracting Officer that
such Information be provided to other DOE facilities with the same protections
in place, 2) disclosure of Protected CRADA Information contained in a Subject
Invention is permitted after the patent has issued, or 3) as mutually agreed by
the Parties and DOE in advance. The Contractor may at all times use Protected
CRADA Information internally for its own purposes and those of the Government,
except as specified in Article VIII, Paragraph B above.
E. The foregoing provisions of this Article VIII do not apply to Protected
CRADA Information which 1) is or becomes publicly known without a Party's breach
of this Agreement, 2) was known by a Party prior to its disclosure hereunder, 3)
comes into the receiving Party's possession, other than from another Party
hereto or pursuant to this CRADA, without the receiving Party's breach of this
Agreement, or 4) is independently developed by any employee, independent
consultant, or subcontractor of a Party or the Government to which such
Protected CRADA Information was not disclosed.
ARTICLE IX: RIGHTS IN GENERATED INFORMATION
-------------------------------
The Parties agree that they shall have no obligations of non-disclosure or
limitations on their use of, and the Government shall have unlimited rights in,
all Generated Information or information provided to the Parties or the
Government under this CRADA which is not marked as being copyrighted (in
accordance with Article XIII) or as Protected CRADA Information (in accordance
with Article VIII, Paragraph B) or Proprietary Information (in accordance with
Article VII, Paragraph B), as well as Protected CRADA Information after the
expiration of the five-year period set forth in Article VIII, Paragraph B.
ARTICLE X: EXPORT CONTROL
--------------
THE PARTIES UNDERSTAND THAT MATERIALS AND INFORMATION RESULTING FROM THE
PERFORMANCE OF THIS CRADA MAY BE SUBJECT TO EXPORT CONTROL LAWS AND THAT EACH
PARTY IS RESPONSIBLE FOR ITS OWN COMPLIANCE WITH SUCH LAWS.
ARTICLE XI: REPORTS AND ABSTRACTS
---------------------
A. The Parties agree to produce the following deliverables:
(1) initial abstracts suitable for public release;
(2) other abstracts (final when work is complete, and others as substantial
changes in scope and dollars occur):
(3) a final report to include a list of Subject Inventions;
(4) other reports as required in Section 4, "Task Descriptions", in Appendix
A, Joint Work Statement.
(5) computer software in source and object code format as defined within the
Statement of Work.
B. It is understood that the Contractor has the responsibility to provide
the above information at the time of its completion to the DOE Office of
Scientific and Technical Information.
ARTICLE XII: PRE-PUBLICATION REVIEW
-----------------------
A. Except for the non-proprietary abstract described in Article XI above, the
Parties agree to secure pre-publication approval from the other Party of any
document, article, press release or other written material relating to the work
performed hereunder, which shall not be unreasonably withheld or delayed beyond
thirty (30) days.
B. The Parties agree that neither will use the name of the other Party or its
employees in any promotional activity, such as advertisements, with reference to
any product or service resulting from this CRADA, without prior written approval
of the other Party.
ARTICLE XIII: COPYRIGHTS
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A. The Parties may assert copyright in any of their Generated Information.
B. For Generated Information, the Parties acknowledge that the Government has
for itself and others acting on its behalf, a royalty-free, nonexclusive,
irrevocable worldwide copyright license to reproduce, prepare derivative works,
distribute copies to the public, and perform publicly and display publicly, by
or on behalf of the Government, all copyrightable works produced in the
performance of this CRADA, subject to the restrictions this CRADA places on
publication of Proprietary Information and Protected CRADA Information.
ARTICLE XIV: REPORTING INVENTIONS
--------------------
A. The Parties agree to disclose to each other each and every Subject
Invention and any improvements thereon, whether or not patentable or otherwise
protectable under the Patent Act (Title 35 of the United States Code), within
two (2) months after the inventor discloses it in writing to the personnel
responsible for patent matters of that Party, but in any event no later than
three (3) months after its conception or first actual reduction to practice. The
Contractor shall be responsible for disclosing Participant's Subject Inventions
to DOE within two (2) months of the Participant's disclosure to the Contractor.
B. These disclosures should be in such detail as to be capable of teaching one
skilled in the art how to make and use the invention as required for patent
applications under the Patent Act (35 USC 112). The disclosure shall also
identify any known, actual or potential statutory bars (i.e., printed
publications describing the invention or the public use or on sale of the
invention in this country) affecting the filing or prosecuting of Subject
Inventions in patent applications, and there shall be a continuing obligation on
the Parties to further disclose any impending or actual future statutory bar
promptly following receipt of knowledge thereof. All invention disclosures shall
be
marked as confidential, and if so marked shall be treated as such by the
Participant and Contractor, and shall not be disclosed by the Government pending
the filing of the patent application as provided in 35 USC 205.
ARTICLE XV: TITLE TO INVENTIONS
-------------------
A. Each Party shall have the first option to elect to retain title to any
invention made by its employees. If a Party elects not to retain title to any
invention of its employees, then the other Party shall have the second option to
elect to retain title to such invention under this CRADA. The DOE shall retain
title to any invention which is not retained by any Party.
B. The Parties acknowledge that the DOE may obtain title to each Subject
Invention reported under Article XIV for which a patent application or
applications are not filed and for which any issued patents are not maintained
by any Party to this CRADA. Participant agrees to notify the Contractor in
writing whether or not it intends to file a patent application on any such
Subject Inventions within twelve (12) months of its disclosure under Article
XIV, Paragraph A above, but in any event not later than sixty (60) days prior to
the time when any statutory bar might foreclose filing of a U.S. patent
application.
C. The Parties acknowledge that, except for Subject Inventions in which the
Government retains title, the Government retains a non-exclusive, non-
transferable, irrevocable, paid- up license to practice or to have practiced for
or on behalf of the United States every Subject Invention under this CRADA
throughout the world.
ARTICLE XVI: FILING PATENT APPLICATIONS
--------------------------
A. The Parties agree that the Party initially indicated as having an ownership
interest in any Subject Inventions shall have the responsibility for filing and
prosecuting any U.S. and foreign patent application(s) thereon.
B. The Parties agree that if neither Party desires to file a patent
application for any invention, notification of such negative intent shall be
made to the DOE within twelve (12) months after the initial disclosure of such
invention, but not later than sixty (60) days prior to the time when any
statutory bar might foreclose filing of a U.S. patent application. The
Participant further agrees to notify the Contractor promptly if it decides not
to continue the prosecution of any application for, to pay the maintenance fees
on, or defend in a re- examination or opposition proceeding on, a patent on a
Subject Invention. The purpose of the foregoing notification is to allow the
Government to file patent applications and/or continue prosecution, maintenance
or defense of a patent in its own name if it so chooses, and each of the Parties
agrees to provide the necessary documents to enable the Government to do so. The
obligation contained in Article VIII, Paragraph B prohibiting licensing shall
extinguish upon a decision by Participant not to file, prosecute, maintain or
defend a patent application hereunder.
ARTICLE XVII: COST OF INTELLECTUAL PROPERTY PROTECTION
Each Party shall be responsible for payment of all costs relating to copyright,
U.S. and foreign patent application filing and prosecution, and all costs
relating to maintenance fees for U.S. and foreign patents hereunder which are
owned by that Party.
ARTICLE XVIII: REPORTS OF INVENTION USE
------------------------
The Parties agree to submit, upon request of DOE, reports no more frequently
than annually on the efforts to obtain utilization of any Subject Invention in
accordance with DOE patent regulations set forth in 41 CFR 9-9.
ARTICLE XIX: DOE MARCH-IN RIGHTS
-------------------
The Parties acknowledge that the DOE has certain march-in rights to any Subject
Inventions in accordance with 48 CFR 27.304- 1 (G).
ARTICLE XX: U.S. COMPETITIVENESS AND SMALL BUSINESS REPRESENTATION
------------------------------------------------------
The Parties agree that a purpose of this CRADA is to provide substantial benefit
to the U.S. economy.
In exchange for the benefits received under this CRADA, the Parties therefore
agree to the following:
A. Products embodying Intellectual Property developed under this CRADA shall
be substantially manufactured in the United States;
B. Processes, services, and improvements thereof which are covered by
Intellectual Property developed under this CRADA shall be incorporated into the
Participant's manufacturing facilities in the United States either prior to or
simultaneously with implementation outside the United States. Such processes,
services, and improvements, when implemented outside the U.S., shall not result
in reduction of the use of the same processes, services, or improvements in the
United States; and
By execution of this Agreement, the Participant certifies that, as of the
execution date of this Agreement, it is a "small business concern" as defined in
Section 2 of Public Law 85-536 (15 USC 632) and implementing regulations of the
administrator of the Small Business Administration.
ARTICLE XXI: ASSIGNMENT OF PERSONNEL
-----------------------
A. It is contemplated that each Party may assign personnel to the other
Party's facility as part of this CRADA. Such personnel assigned by the assigning
Party, to participate in or observe the research to be performed under this
CRADA shall not during the period of such assignments be considered employees of
the receiving Party for any purposes, including but not limited to any
requirements to provide workers' compensation, liability insurance coverage,
payment of salary or other benefits, or withholding of taxes.
B. The receiving Party shall have the right to exercise routine administrative
and technical supervisory control of the occupational activities of such
personnel during the assignment period and shall have the right to approve the
assignment of such personnel and/or to later request their removal by the
assigning Party.
C. The assigning Party shall bear any and all costs and expenses with regard
to its personnel assigned to the receiving Party's facilities under this CRADA.
The receiving Party shall bear the costs of providing an appropriate work space,
access to a telephone, use of laboratory, manufacturing or other work areas as
appropriate, and any other utilities and facilities related to such assignments.
D. Each Party agrees to use due care while on the other's premises, to comply
with all posted environmental, safety and health rules and regulations during
the visit, to perform work in a safe manner, and to enter only those areas
previously designated by those in charge of its visit.
E. Each Party agrees to comply with all applicable municipal, state and
federal laws and regulations regarding the safety and health of the personnel
assigned to the receiving Party's facilities under this CRADA.
ARTICLE XXII: FORCE MAJEURE
-------------
No failure or omission by Contractor or Participant in the performance of any
obligation under this CRADA shall be deemed a breach of this CRADA or create any
liability if the same shall arise from any cause or causes beyond the control of
Contractor or Participant, including but not limited to the following, which,
for the purpose of this CRADA, shall be regarded as beyond the control of the
Party in question: Acts of God, acts or emissions of any government or agency
thereof, compliance with requirements, rules, regulations, or orders of any
governmental authority or any office, department, agency, or instrumentality
thereof, fire, storm, flood, earthquake, accident, acts of the public enemy,
war, rebellion, insurrection, riot, sabotage, invasion, quarantine, restriction,
transportation embargoes, or failures or delays in transportation.
ARTICLE XXIII: ADMINISTRATION OF THE CRADA
---------------------------
It is understood and agreed that this CRADA is entered into by the Contractor
under the authority of its prime Contract with DOE. The Contractor is authorized
to and will administer this CRADA in all respects unless otherwise specifically
provided for herein. This CRADA and Contractor's intellectual property rights
contained herein may be transferred from the Contractor to DOE or its designee
(including but not limited to a successor operator of the National Renewable
Energy Laboratory) with notice of such transfer to the Participant, and the
Contractor shall have no further responsibilities except for the confidentiality
obligations of this CRADA.
ARTICLE XXIV: RECORDS AND ACCOUNTING SYSTEM
-----------------------------
The Participant shall maintain records of receipts, expenditures, and the
disposition of all Government property in its custody, related to this CRADA.
The Contractor will maintain records satisfactory to DOE and in accordance with
generally accepted accounting principles, and the
Participant will maintain its accounting system in accordance with generally
accepted accounting principles, and shall be subject to reasonable inspection
during Participant's business hours.
ARTICLE XXV: NOTICES
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A. Any communications required by this CRADA, if given by postage prepaid
first class U.S. Mail addressed to the Party to receive the communication, shall
be deemed made as of the day of receipt of such communication by the addressee,
or on the date given if by verified facsimile. Address changes shall be given in
accordance with this Article and shall be effective thereafter. All such
communications, to be considered effective, shall include this CRADA Number .
B. The addresses, telephone numbers and facsimile numbers for the Parties are
as follows:
Participant:
AMERISEN
14540 West Greenfield Avenue Brookfield, WI ▇▇▇▇▇ (▇▇▇) ▇▇▇-▇▇▇▇
Fax:, (▇▇▇) ▇▇▇-▇▇▇▇
Contractor:
National Renewable Energy Laboratory, division of Midwest Research Institute
▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇▇▇▇
▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇-▇▇▇▇ (▇▇▇) ▇▇▇-▇▇▇▇
Fax: (▇▇▇) ▇▇▇-▇▇▇▇
ARTICLE XXVI: DISPUTES
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At the request of either Party, after reasonable attempt to settle without
mediation, any controversy or claim arising out of or relating to the CRADA
shall be settled by mediation conducted in the State of Colorado in accordance
with the then current and applicable rules of the American Arbitration
Association.
ARTICLE XXVII: ENTIRE CRADA AND MODIFICATIONS
------------------------------
A. It is expressly understood and agreed that this CRADA with its Appendices
contains the entire agreement between the Parties with respect to the subject
matter hereof and that all prior representations or agreements relating hereto
have been merged into this document and are thus superseded in totality by this
CRADA. This CRADA shall not be effective until approved by DOE.
B. Any agreement to change any terms or conditions of this CRADA or the
Appendices shall be valid only if the change is made in writing, executed by the
Parties hereto, and approved by DOE.
ARTICLE XXVIII: TERM AND TERMINATION
--------------------
A. The term of this CRADA shall be twenty-four (24) months from the effective
date hereof unless extended by mutual agreement of the Parties, with the
approval of DOE, or terminated in accordance with the provisions that follow.
This CRADA may be terminated by either Party if the
other Party fails to cure a material breach of this CRADA within thirty (30)
days after written notice to the other Party, or may be terminated by mutual
consent. In the event of termination, each Party shall be responsible for its
costs incurred through the effective date of termination, as well as its costs
incurred after the effective date of termination which are related to the
termination.
B. The provisions contained in Articles V, VI, VII, VIII, IX, X, XII, XIII,
XIV, XV, XVI, XVII, XVIII, XIX and XX(A) and (B) shall survive the expiration or
termination of this Agreement.
C. Contractor may terminate this Agreement with thirty (30) days' written
notice if its government funding associated herewith is not available or
sufficient in subsequent fiscal years, or if DOE program management support is
otherwise limited or terminated.
ARTICLE XXIX: ORDER OF PRECEDENCE
--------------------
In the event of a conflict between the provisions of the Appendices and those of
this Agreement, this Agreement shall prevail.
ARTICLE XXX: PERFORMANCE
------------
The Contractor and the Participant agree to exert reasonable efforts to perform
the work under this Agreement in accordance with the schedule as provided in
Appendix A, Joint Work Statement.
ARTICLE XXXI: HEADINGS
---------
The headings for the sections set forth in this Agreement are strictly for the
convenience of the parties hereto and shall not be used in any way to restrict
the meaning or interpretation of the substantive language of this Agreement.
ARTICLE XXXII: WAIVER
-------
The failure of Contractor or Participant at any time to enforce any provisions
of this Agreement or to exercise any right or remedy shall not be construed to
be a waiver of such provisions or of
such right or remedy or of the right of Contractor or Participant thereafter to
enforce each and every provision, right or remedy.
ARTICLE XXXIII: INDEPENDENT CONTRACTORS
-----------------------
Under the terms of this Agreement, the Contractor and the Participant are
independent contractors. Neither Party is an employee, agent, partner or
representative of the other Party. Nothing contained herein shall be deemed to
create a joint venture relationship between the Contractor and the Participant.
Each Party specifically acknowledges that it does not have authority to incur
any obligations or responsibilities on behalf of the other Party.
The Parties have indicated their acceptance of this Agreement by execution below
by an authorized representative. This Agreement is effective this 21st day of
March 1996.
FOR CONTRACTOR: FOR PARTICIPANT:
/s/ ▇▇▇▇ ▇. ▇▇▇▇▇
BY BY ▇▇▇▇ ▇. ▇▇▇▇▇
TITLE TITLE Director
DATE DATE March 21, 1996
DOE APPROVAL: BY
TITLE
DATE
APPENDIX A
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JOINT WORK STATEMENT
[*]
[*] Seven pages omitted pursuant to request for confidentiality filed with the
Securities and Exchange Commission.
APPENDIX B
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Property List
Property to be Obtained With Participant Funds
-----------------------------------------------
To be determined
Property to be Obtained with Government Funds
----------------------------------------------
To be determined