ARTICLES

 

ARTICLES

1.4

Confidential Information means trade secrets or commercial or financial information that is privileged or confidential under the meaning of 5 USC 552(b)(4).

1.5

Subject Invention means any invention or other intellectual property conceived or first reduced to practice under this Agreement which is patentable or otherwise protectable under Title 35 of the United States Code, under 7 USC 2321, et seq., or under the patent laws of a foreign country.  Specifically not included in the definition of Subject Inventions are inventions made outside the Scope of Agreement or prior to the execution of this Agreement.  Recently ARS and ZTH developed an improved method for converting a fiber-containing substrate into a non-caloric gel of disrupted cellular cellulosic debris.   This method, which will be used in this project, was developed prior to this Agreement and is not a Subject Invention.  Background inventions for this work include:

 

               1. Moreau, R.A, Hicks, K.B., Nicolosi, R.J., and Norton, R.N. Corn fiber oil its preparation and use.  U. S. Patent 5,843,499.  1998.

Scope of Agreement means those activities set forth in Schedule 2, entitled “Statement of Work.”

1.7

Period of the Agreement means that period set forth under the Period of Agreement on the ARS Office of Technology Transfer cover form for the Agreement.

2.1

Subject to the requirements of confidentiality and preservation of rights in Subject Inventions, either party may publish the results of this Agreement, PROVIDED:

 

a.

The other party is allowed to review the manuscript at least sixty (60) days prior to submission for publication by submission to the Authorized Agent.

 

b.

The publication shall acknowledge this Agreement and the contributions of each party’s personnel.

 

c.

The final decision as to the publication content rests with the party that writes the publication.

2.2

Publication and/or other disclosure of the results of this Agreement shall be delayed as necessary to preserve both United States of America and foreign patent rights in a Subject Invention.

The requesting party demonstrates promptness and diligence in seeking patent protection on the Subject Invention.

3.1

Confidential Information, which is owned by one party to this Agreement and disclosed to the other, shall be labeled “CONFIDENTIAL” by the submitter and shall not be disclosed by the recipient without permission of the owner, EXCEPT in accordance with Article 2.

3.2

To the extent either party orally submits its Confidential Information to the other party, the submitting party will prepare a document marked “CONFIDENTIAL” embodying or identifying in reasonable detail such orally submitted Confidential Information and provide the document to the other party within thirty (30) days of disclosure.

3.3

Neither party shall be bound by confidentiality if the Confidential Information received from the other party:

4.1

Frequent and effective communication is essential to the successful accomplishment of the objectives of this Agreement.  To this end, the scientific representatives of ARS and ZTH shall meet (meetings need not be in person if agreed upon) at least once every six (6) months to exchange results, perform critiques, and make plans and recommendations.  Written progress reports shall be supplied by each party to the other at least fifteen (15) calendar days prior to each semi-annual meeting.

4.2

Any such plan or recommendation that is outside the Scope of Agreement shall be reduced to writing and referred to the Authorized Agent of each party for appropriate action.  Any such plan or recommendation so referred shall not be binding upon either party unless incorporated into this Agreement by written amendment.

4.3

Each party shall keep complete records relating to this research.  All such records shall be available for inspection by either party at reasonable times.  The records, or true copies of them, shall be delivered to either party upon request.

4.4

The results of this Agreement and research data that are collected, compiled, and evaluated under this Agreement shall be shared and mutually interchanged by ZTH and ARS.

4.5

A final report summarizing all data shall be submitted by each party, separately or jointly, to both party’s Authorized Agents within sixty (60) days of the completion of this Agreement.

5.1

The results of this Agreement owned or co-owned by the U.S. Government may be made available to others by ARS for bona fide noncommercial research purposes if:

5.2

Plants and animals, their genetic materials or information relating thereto, or parts thereof, covered by Plant Variety Protection Certificates, Biological Material Inventions, Plant Patents, or Utility Patents, owned or co-owned by ARS, may be made available by ARS to third parties for bona fide research purposes including the development of new animals or plants.

6.1

All rights, title, and interest in any Subject Invention made solely by employee(s) of ARS shall be owned by ARS.

6.2

All rights, title, and interest in any Subject Invention made jointly by at least one (1) employee of ARS and at least one (1) employee of ZTH shall be jointly owned by ARS and ZTH.

6.3

All rights, title, and interest in any Subject Invention made solely by employees of ZTH shall be owned by ZTH.

7.1

ZTH is granted an option to negotiate an exclusive license in each Subject Invention owned or co-owned by ARS for one or more field(s) of use encompassed by the Scope of Agreement.  This license shall be consistent with the requirements of 35 USC 209(a), 209(b) (manufactured substantially in the U.S.), and 209(f) and other such terms and conditions as may be reasonable under the circumstances, as agreed upon through good faith negotiations between ZTH and ARS  .  For avoidance of doubt, ZTH shall have and retain its undivided interest in Subject Inventions co-owned by ZTH and ZTH shall have the right to use such co-owned subject Inventions for any purpose

 

a.

Submit a complete application for an exclusive license within sixty (60) days of being notified by ARS of an Inventions availability for licensing; or

 

b.

Submit a good faith written response to a written proposal of licensing terms within forty-five (45) days of such proposal.

7.3

ZTH grants ARS, on behalf of the U.S. Government, a royalty free, nonexclusive, worldwide, irrevocable, nontransferable license for any ZTH solely owned Subject Invention.  The purpose of this license shall only be to practice the Subject Invention or have it practiced, by or on behalf of the U.S. Government, for research or other non-commercial U.S. Government purposes.  15 USC 3710a(b)(2).

8.1

The Authorized Agents or designees of each party shall promptly make written disclosure to each other of each Subject Invention.

8.2

This information shall be treated in confidence by the receiving party, EXCEPT: it may be shared with those having a need to know.

8.3

Each party shall provide, when requested by the other, all information in its possession, or true copies thereof, pertaining to a Subject Invention which may be necessary or useful in the preparation, filing, and prosecution of patent or Plant Variety Protection Certificate applications covering the Subject Invention.

9.1

ARS and ZTH agree to cooperate with the other in the preparation, filing, and prosecution of Patent, Plant Variety Protection Certificate or Biological Material Invention applications on Subject Inventions in the United States of America and any other country.

9.2

ARS shall provide ZTH’s Authorized Agent or their designee with a copy of any such application on a Subject Invention within fourteen (14) calendar days of filing.

9.3

ARS shall have the first option to prepare and prosecute Patent, Plant Variety Protection Certificate or Biological Material Invention applications on Subject Inventions that are owned or co-owned by the U.S. Government, which option may be waived in whole or in part.

11.1

ZTH is responsible for obtaining appropriate opinions, permits, or licenses from Federal or State agencies, which regulate research materials, or commercial products that may arise from the research work performed within the Scope of Agreement.

Give ARS’ Authorized Agent or designee a copy of any applications and opinions, permits, or licenses issued.

11.3  

Both parties acknowledge and agree to comply with all applicable laws and regulations of the Animal Plant Health and Inspection Service, The Center for Disease Control, and/or Export Control Administration pertaining to possession or transference of technical information, biological materials, pathogens, toxins, genetic elements, genetically engineered microorganisms, vaccines, and the like.

 

 

13.1

Either party may unilaterally terminate this entire Agreement at any time by giving the other party written notice not less then sixty (60) calendar days prior to the desired termination date.

13.2

Articles 2. “Publications”, 3. “Confidentiality”, 6. “Ownership of Inventions”, 7. “Subject Invention Licenses”, 10. “Use of Name or Endorsements”, and 12. “Liability” shall survive the expiration or termination of this Agreement.

13.3

If either party unilaterally terminates this Agreement pursuant to Article 13.1, each party shall return to the other or destroy, as shall be then agreed, any and all data and materials originated or provided by one party to the other that is still in the receiving party’s possession within 30 days of termination.

15.1

Any dispute arising under this Agreement, which cannot be readily resolved, shall be submitted jointly to the Authorized Agents, identified in Article 16 of these General Provisions.

15.2

Each party agrees to seek in good faith to resolve the issue through negotiation or other forms of nonbinding dispute resolution processes mutually acceptable to the parties.

15.3

Pending the resolution of any dispute or claim pursuant to Article 15, the parties agree that performance of all obligations shall be pursued diligently.

18.1

Neither this Agreement nor any rights or obligations of the parties hereto shall be assigned or otherwise transferred by either party without the prior written consent of the other party, which consent shall not be unreasonably withheld.

18.2

In no case shall ZTH assign or transfer this Agreement to a party not a citizen or legal resident of the United States.

18.3

ARS is an agency of the U.S. Government and any rights or obligations created under this Agreement are freely transferable within the U.S. Government and shall not be deemed an “assignment” as contemplated by this Article 18.

19.1

ARS and ZTH act in their independent capacities in the performance of their respective functions under this Agreement and neither party is to be considered the officer, agent, or employee of the other.

19.2

Each party shall allow, consistent with policies and procedures of ARS and the ZTH, access to their facilities, as needed.

19.3

Each party shall separately assign personnel, equipment, supplies, transportation, and facilities, as needed and available to meet respective responsibilities hereunder, such resources to remain the property of the assignor.

20.1

Neither party shall be liable for any unforeseeable event beyond its reasonable control not caused by the fault or negligence of such party:

 

a.

Which causes the party to be unable to perform its obligations under this Agreement; and

 

c.

This includes, but is not limited to, flood, drought, earthquake, storm, fire, pestilence, lightning and other natural catastrophes, epidemic, war, riot, civil disturbance or disobedience, strikes, labor dispute, failure, or sabotage of either Party’s facilities or any order or injunction made by a court or public agency.

20.2

In the event of the occurrence of such force majeure event, the party unable to perform shall promptly notify the other party.  It shall also:

 

b.

Suspend performance only for such period of time as is necessary as a result of the force majeure event.

21.1

If either party desires a modification in this Agreement, the parties shall confer in good faith to determine the desirability of such modification.

21.2

Such modification shall not be effective until a written amendment is signed by the Authorized Agents of both Parties.

24.1

No Delegate to or Member of the Congress of the United States of America shall have a part of or benefit from this Agreement.

24.2

This requirement does not include corporations if this Agreement is entered into for the corporation’s general benefit.

25.1

A party hereto desiring to obtain and use the services of a third party via contract or otherwise shall give prior notice to the other party, including details of the contract or other arrangement.

25.2

This requirement is to assure that confidentiality is not breached and rights in Subject Inventions are not compromised.

27.1

This Agreement constitutes the entire agreement between ZTH and ARS and supersedes all prior agreements and understandings between them with respect to its subject matter.

27.2

Any representations, promise, or condition in connection with such subject matter, which is not incorporated in this Agreement, shall not be binding upon either party.

27.3

No modification, renewal, extension, waiver, or termination of this Agreement or any of its provisions shall be binding upon the party against whom enforcement of such modification, renewal, extension, waiver, or termination is sought, unless made in writing and signed on behalf of such party by that party’s Authorized Agent.

27.4

As used herein, the word “termination” includes any and all means of bringing to an end prior to its expiration by its own terms of this Agreement, or any provision thereof, whether by release, discharge, abandonment, or otherwise.

28.1

ZTH’s employee(s) while engaged in work upon or in an ARS facility shall abide by ARS’ “rules of the workplace.”

28.2

Such rules address conduct, hours of work, laboratory procedures, equipment operating standards, research notebooks, etc.

28.3

ARS’ Scientific Representative shall respond to ZTH when queried concerning the details of ARS’ “rules of the workplace.”

30.1

ARS may supervise the technical work of ZTH’s employee(s) while at the ARS facility and while engaged in work within the scope of this Agreement.

30.2

ARS may not interfere in the employer/employee relationship between ZTH and its employee(s).