Attached files
| file | filename |
|---|---|
| EX-99.1 - EXHIBIT 99.1 - Shrink Nanotechnologies, Inc. | ex991.htm |
| 8-K - INKN FORM 8-K (5-3-10) - Shrink Nanotechnologies, Inc. | inknform8k050310.htm |
| EX-10.1 - EXHIBIT 10.1 - Shrink Nanotechnologies, Inc. | ex101.htm |
| EX-99.2 - EXHIBIT 99.2 - Shrink Nanotechnologies, Inc. | ex992.htm |
| EX-99.4 - EXHIBIT 99.4 - Shrink Nanotechnologies, Inc. | ex994.htm |
| EX-99.3 - EXHIBIT 99.3 - Shrink Nanotechnologies, Inc. | ex993.htm |
Micro/Nano
Fluidics Fundamentals Focus Center (“UCI/MF3”)
CONSORTIUM
AGREEMENT
This
agreement is made effective on the 1st day
of June 2010 (“Effective Date”) among the Academic Partners and Sponsors of the
Micro/Nano Fluidics Fundamentals Focus MF3 Center
(“Consortium”), and supersedes and replaces the Consortium Agreement entered
into on the 30th day
of September 2006.
The
University of California at Irvine (UCI) is the lead Academic Partner of the
Micro/Nano Fluidics Fundamentals Focus MF3 Center
(“Consortium”) together with the following academic members of the Consortium:
University of California - Berkeley, University of Florida, Harvard University,
Johns Hopkins University, University of Minnesota, Purdue University, Stanford
University, Texas Engineering Experiment Station (TEES), University of Maryland,
University of Cincinnati, and University of Wisconsin - Madison. The
Consortium is
funded by the membership dues of its industrial and other non-Academic members,
as well as matching funds from the Defense Advanced Research Projects Agency
(“DARPA”) and is part of a group of MEMS/NEMS Science & Technology
Fundamentals Centers (“MEMS/NEMS S&T”). The Consortium may also
receive support from other governmental sources in addition to the Center
membership dues from Sponsors and the DARPA matching funds to sustain its
operations and advance the research activities. In addition, Sponsors
may provide additional support to the Consortium in order to secure certain
benefits available only through the work of the Consortium. For these mutual
benefits and considerations each to the other, the parties to this agreement
consent to the following terms and conditions.
Article
1 - Definitions
As used
in this agreement, the following terms shall have the following
meanings:
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1.1
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“Academic
Partner” is a non-profit educational and research organization
that contributes resources to the mission and work of the Consortium, and
which has signed the Consortium
Agreement.
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1.2
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“Consortium”
is the Micro/Nano Fluidics Fundamentals Focus MF3 Center,
a multidisciplinary and multi-institutional group of investigators,
including Sponsors, whose objective is to act as a catalyst and jointly
collaborate to conduct scientific investigation, development and
implementation in the following field of research: “Microfluidic systems
for applications in technology, medicine, biology, defense, and
education.”
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1.3
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“Consortium
Inventions” means any inventions, as defined in U.S. Patent law, solely
conceived and reduced to practice in the performance of Consortium-funded
Core Projects by one or more persons who are employed by one or more
Academic Partners.
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1.4
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"Core
Projects" is research funded wholly or in part by DARPA and/or by
unrestricted cash payments in the form of Membership Dues from Sponsors
for research and/or development projects carried out by the
Consortium. Core Projects include “Seed Development Projects”
which are individual or team investigator projects whose “Scope of
Research” is submitted for approval by the Executive
Committee. Core Projects may also include funding from other
sources at the election of the Executive Committee. Such
additional funding sources can be used only if the Core Project in which
the additional funding will be utilized is not subject to any ownership
interest (or option right to acquire an ownership interest) by any entity
other than the United States (“U.S.”) Federal Government under 35 U.S.C.
§§200-212 (Bayh-Dole).
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1.5
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“Core
Project Investigator” is an investigator at an Academic Partner who has
been awarded research funding from Consortium for a Core
Project(s).
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1.6
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The
"Executive Committee" sets the Consortium objectives and policy, reviews
Scopes of Study, and allocates Consortium funds for Core Projects. The
Executive Committee (“EC”) is composed of the director and associate
directors. The Executive Committee has a broad range of responsibilities,
including: promoting collaborations and new research projects within the
Consortium, providing oversight for existing research projects,
reviewing/recruiting applications of potential new members, and evaluating
proposed research projects in Scopes of Study. The Industrial Advisory
Board is advisory to the Executive Committee providing input and
guidance.
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1.7
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The
“Field” is defined as science and technology of micro/nanofluidics. The
specific goal is to facilitate and accelerate state-of-the-art
collaborative research in fundamental areas of micro/nano fluidics that
are crucial for commercial success and have potential for biomedical and
defense applications.
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1.8
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"The
Industrial Advisory Board" will consist of representatives of the
Corporate Members. The Industrial Advisory Board (“IAB”) will provide
advice to the Executive Committee on (a) the research and educational
activities of the Consortium, (b) the apportionment of resources to these
activities, and (c) Consortium operating
procedures.
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1.9
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“In-Kind
Contributions” are contributions of technology that is of use to the
Consortium, such as capital equipment, software licenses, and/or
foundry/fabrication services by Technology
Members.
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1.10
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“Member”
is either a Sponsor or an Academic
Partner.
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1.11
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“Membership
Dues” are contributions of cash by a Corporate Member or a Small Company
Member.
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1.12
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“MEMS/NEMS
S&T” means the group of MEMS/NEMS Science & Technology
Fundamentals Centers, a network of interdisciplinary, interinstitutional
research teams or teams established by various university centers with the
support of industrial memberships and DARPA matching funds, part of a
network of centers that DARPA is establishing under the RA 09-42, where
DARPA is interested in identifying challenging fundamental MEMS/NEMS
Science and Technology (S&T) problem areas where new agency funding
might be able to make a real difference in further advancing micro/nano
technology and facilitating its great potential to enhance future U.S.
defense capabilities.
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1.13
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“Microfluidics
Research” is research within the Field funded solely or in part by
Sponsors and DARPA in connection with the
Consortium.
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1.14
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“Participation
Period” means the period of time during which any Academic Partner or
Sponsor is part of the Consortium. For purposes of exercising the option
to license Consortium Inventions under Section 7, Participation Period
shall be deemed to start after a Partner has signed this Agreement and end
90 days after a Partner has withdrawn from the Consortium or has been
terminated from the Consortium.
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1.15
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“Scopes
of Research” are proposals submitted to the Executive Committee
that describe the research to be performed by Academic Partner(s),
including the identities and/or descriptions of the personnel working on
the Scope of Research, the identity of any Research Sponsor that will be
involved in the Scope of Research, and the financial support requested
from the Consortium for the performance of the
research.
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1.16
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“Sponsor”
is an organization that contributes resources to the mission and work of
the Consortium, and which has signed the Consortium
Agreement. Depending on the type of contribution, Sponsor may
be a “Corporate Member”, “Small Company Member”, “Technology
Member”, “Government Laboratory”, or a “Non-Profit
Organization”.
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1.17
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“Sponsored
Research” is a research project carried out by Academic Partner(s) and is
funded solely by a Sponsor or group of Sponsors as part of the Consortium
research.
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Article
2 - Operation of Consortium
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2.1.
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The
Executive Committee shall approve all Consortium
activities.
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2.2
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Applications
for funding from the Consortium for Core Projects will be made through
Scopes of Research submitted to the Executive Committee. The Executive
Committee, DARPA and Industrial Advisory Board will review the Scopes of
Research for Core Projects. The IAB and DARPA will make
recommendations on the Scopes of Research they have reviewed to the EC,
and all final decisions regarding the allocation of research funds for
Scopes of Research will be made by the
EC.
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2.3
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Any
Academic Partner(s) seeking research funding from Consortium for Core
Projects shall prepare and submit a “Scope of Research” to the
EC.
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2.3.1
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Contents. Each
Scope of Research will be in writing and contain the following in such
detail as the EC, upon the recommendation of the IAB, may
specify:
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(i)
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A
general statement as to the anticipated contribution of the subject
research to the Consortium.
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(ii)
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Tasks
to be performed by the Partner(s) during each 12 month period following
submission.
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(iii)
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A
time line against which the progress and/or completion of the tasks
referred to in clause (ii) above may be measured, as well as a list of
task “deliverables”, if any, and expected dates of progress and/or
completion.
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(iv)
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A
budget for the costs of the tasks referred to in clause (ii) above for the
12 month period.
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(v)
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The
source of funding requested for the Scope of Research. Core Projects can
be funded by unrestricted cash payments in the form of Membership Dues
from Corporate Members and/or Small Company Members, and by DARPA from
MEMS/NEMS S&T or other funds or other governmental agencies. Sponsored
Research will be funded solely or in part by
Sponsor(s).
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(vi)
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Such
other information as may be requested by the EC or
IAB.
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2.3.2
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Budget
Modifications. In the event that a Partner(s) determines that it is
necessary to make a material change in its then approved Scope of
Research, it will promptly notify in writing the EC. Any such
notice will detail the changes/amendments and explain the reasons
therefor. Following review, the EC will approve, reject, or modify the
Scope of Research.
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Article
3 – Membership Dues and Benefits
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3.1
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Corporate Members as a
condition of membership in the Consortium will contribute Membership Dues
in the sum of $50,000 in cash annually . Membership Dues shall
be in the form of an unrestricted cash payment, and Corporate Members will
make the payment in a single annual payment or in agreed-upon
installments. The Executive Committee may change the level of support from
time to time with at least ninety (90) days notice to Corporate
Members.
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Checks
should be made payable to UC Regents indicating the purpose of the payment
(“Remittance to MF3 Center”), and remitted
to:
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MF3 CONSORTIUM
Integrated Nanosystems Research
Facility
The Henry Samueli School of
Engineering
University of California
2220 Engineering Gateway
Irvine, CA 92697-2660
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Corporate
Members will receive the following benefits in consideration for their
support. These benefits will extend to subsidiaries of
Corporate Members who are at least 50% owned by the Corporate
Member.
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3.1.1
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Information:
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(i)
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Attendance
at semi-annual research review meetings/retreats to review recent, not yet
published, research results. Attendance at these meetings is
limited to four (4) employees of each Corporate
Member.
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(ii)
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Attendance
at DARPA-organized semi-annual meetings of all the MEMS/NEMS
S&T Centers. Number of employees per Corporate Member that
can attend these meetings shall be determined by
DARPA.
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(iii)
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Each
Corporate Member will have electronic access to copies of all Consortium
publications, including theses and papers appearing in peer reviewed
literature, as they are submitted.
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(iv)
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First-hand
interaction with access to the Consortium student / researcher pool, a
potential source of technical collaborators as well as interns and future
employees.
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3.1.2
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Research
and Intellectual Property:
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(i)
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Corporate
Members will have the opportunity to participate in the discussion and
provide advice about proposed research topics of the Consortium through
representation on the Industrial Advisory Board
(IAB). Representation on the IAB is limited to one employee of
each Corporate Member.
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(ii)
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For
all Corporate Members, the right to use, by Corporate Member for its
internal research and evaluation, all reports, data, and information made
available by the Consortium, so long as Confidential
Information is protected according to Article
5.
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(iii)
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For
all Corporate Members, early access to intellectual property developed by
the Consortium as a result of the Core Projects and MEMS/NEMS
S&T Research on terms as provided in Section
7.
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(iv)
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For
Corporate Member, the opportunity to support Sponsored Research projects
with the Academic Partner(s) after mutual agreement as discussed in
Section 8.
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3.2
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Small Company Members
(defined as companies with no more than fifty (50) employees) as a
condition of membership in the Consortium will contribute Membership Dues
in the sum of $10,000 in cash annually. Membership Dues shall
be in the form of an unrestricted cash payment, and Small Company Members
will make the payment in a single annual payment or in agreed-upon
installments. The Executive Committee may change the level of support from
time to time with at least ninety (90) days notice to Small Company
Members.
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Checks
should be made payable to UC Regents indicating the purpose of the payment
(“Remittance to MF3 Center”), and remitted
to:
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MF3 CONSORTIUM
Integrated Nanosystems Research
Facility
The Henry Samueli School of
Engineering
University of California
2220 Engineering Gateway
Irvine, CA 92697-2660
Small
Company Members must also pledge to support at least $40,000 in Sponsored
Research by Academic Partner faculty members. Small Company Members will receive
the following benefits in consideration for their support. These
benefits will extend to subsidiaries of Small Company Members who are at least
50% owned by the Small Company Members.
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3.2.1
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Information:
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(i)
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Attendance
at semi-annual research review meetings/retreats to review recent, not yet
published, research results. Attendance at these meetings is
limited to two (2) employees of each Small Company
Member.
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(ii)
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Attendance
at DARPA-organized semi-annual meetings of all the MEMS/NEMS S&T
Centers. Number of employees per Small Company Member that can
attend these meetings shall be determined by DARPA.
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(iii)
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Each
Small Company Member will have electronic access to copies of all
Consortium publications, including theses and papers appearing in peer
reviewed literature, as they are
submitted.
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(iv)
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First-hand
interaction with access to the Consortium student / researcher pool, a
potential source of technical collaborators as well as interns and future
employees.
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3.2.2
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Research
and Intellectual Property:
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(i)
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For
all Small Company Members, the right to use, by Small Company Member for
its internal research and evaluation, all reports, data, and information
made available by the Consortium, so long as Confidential
Information is protected according to Article
5.
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(ii)
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For
all Small Company Members, potential access to intellectual property
developed by the Consortium as a result of the Core Projects and MEMS/NEMS
S&T Research on terms as provided in Section
7.
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(iii)
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For
Small Company Members, the opportunity to support Sponsored Research
projects with the Academic Partner(s) after mutual agreement as discussed
in Section 8.
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3.3
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Technology Members as a
condition of membership in the Consortium will make In-Kind Contributions
equivalent to $50,000 as determined by the EC for use by the Consortium.
The Executive Committee may change the level of In-Kind Contributions from
time to time with at least ninety (90) days notice to Technology
Members.
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Technology
Members will receive the following benefits in consideration for their
support. These benefits will extend to subsidiaries of Technology
Members who are at least 50% owned by the Technology Members.
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3.3.1
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Information:
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(i)
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Attendance
at semi-annual research review meetings/retreats to review recent, not yet
published, research results. Attendance at these meetings is
limited to two (2) employees of each Technology
Member.
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(ii)
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Each
Technology Member will have electronic access to copies of all Consortium
publications, including theses and papers appearing in peer reviewed
literature, as they are submitted.
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(iii)
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First-hand
interaction with access to the Consortium student / researcher pool, a
potential source of technical collaborators as well as interns and future
employees.
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3.3.2
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Research
and Intellectual Property:
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(i)
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For
all Technology Members, potential access to intellectual property
developed by the Consortium as a result of the Core Projects and MEMS/NEMS
S&T Research on terms as provided in Section
7.
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3.4
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Government Laboratories
as a condition of membership in the Consortium must support a Sponsored
Research project or student in a dollar amount determined by the EC, and
be approved by the IAB and MF3 Executive Committee. The Executive
Committee may change the level of support from time to time with at least
ninety (90) days notice to Government
Laboratories.
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Government
Laboratories will receive the following benefits in consideration for their
support.
3.4.1 Information:
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(i)
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Attendance
at semi-annual research review meetings/retreats to review recent, not yet
published, research results. Attendance at these meetings is
limited to two (2) employees of each Government
Laboratory.
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(ii)
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Attendance
at DARPA-organized semi-annual meetings of all the MEMS/NEMS S&T
Centers. Number of employees per Government Laboratory that can
attend these meetings shall be determined by
DARPA.
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(iii)
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Each
Government Laboratory will have electronic access to copies of all
Consortium publications, including theses and papers appearing in peer
reviewed literature, as they are
submitted.
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(iv)
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First-hand
interaction with access to the Consortium student / researcher pool, a
potential source of technical collaborators as well as interns and future
employees.
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3.5.3 Research
and Intellectual Property:
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(i)
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Government
Laboratories will have no access to intellectual property developed by the
Consortium as a result of the Core Projects and MEMS/NEMS S&T
Research.
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3.5
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Non-profit Organizations
as a condition of membership in the Consortium must be approved by the IAB
and MF3 Executive Committee.
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Non-profit
Organizations will receive the following benefits in consideration for their
support.
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Information:
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(i)
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Attendance
at semi-annual research review meetings/retreats to review recent, not yet
published, research results. Attendance at these meetings is
limited to two (2) employees of each Non-profit
Organizations.
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(ii)
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Attendance
at DARPA-organized semi-annual meetings of all the MEMS/NEMS S&T
Centers. Number of employees per Non-profit Organization that
can attend these meetings shall be determined by
DARPA.
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(iii)
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Each
Non-profit Organization will have electronic access to copies of all
Consortium publications, including theses and papers appearing in peer
reviewed literature, as they are
submitted.
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(iv)
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First-hand
interaction with access to the Consortium student / researcher pool, a
potential source of technical collaborators as well as interns and future
employees.
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3.5.2 Research
and Intellectual Property:
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(i)
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Non-profit
Organizations will have no access to intellectual property developed by
the Consortium as a result of the Core Projects and MEMS/NEMS S&T
Research.
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Article
4 – New Membership and Termination
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4.1
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New Membership.
From time to time, the EC shall consider the addition of new Academic
Partners or Sponsors to the Consortium. In order to be
considered for membership, the new Member
must:
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4.1.1
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Subscribe
to the objectives of the Consortium as set forth in this
Agreement;
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4.1.2
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Be
willing and able to utilize and comply with the existing Consortium
processes for approving and conducting Consortium research
projects.
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New
membership shall be subject to execution of this Agreement by the new Partner,
and approval as set forth in 4.2 below.
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4.2
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Approval of
Membership.
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4.2.1
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Corporate
Member’s, Small Company Member’s membership shall be subject to approval
by the EC.
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4.2.2
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Technology
Members’s, Government Laboratory’s and Non-profit Organizations membership
shall be subject to approval by the EC and
IAB.
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4.3
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TERM
OF MEMBERSHIP.
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4.3.1
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Corporate
Member’s, Small Company Member’s term of membership shall be for one (1)
year from the Effective Date of this Agreement. Corporate Members and
Small Company Members membership will be automatically extended for an
additional year, on an annual basis, for a period of no more than six (6)
years from the end of the period specified above unless a Member notifies
University in writing, at least sixty (60) days in advance of the
anniversary date, that Member wishes to discontinue its
membership.
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A
Corporate Member or Small Company Member may withdraw its partnership by giving
the Consortium a written notice of withdrawal no less than ninety (90) days
prior to the effective date of withdrawal. In the event of such
withdrawal by a Corporate Member or Small Company Member, the Corporate Member
or Small Company Member shall not be required to make any further payment of
Membership Dues beyond the effective date of withdrawal; however, no refunds of
Membership Dues already received by the Consortium shall be provided to
Corporate Member or Small Company Member. The Consortium may terminate the
membership of a Corporate Member or Small Company Member for failure to pay,
when due, any Membership Dues or other default of this agreement unless the
Corporate Member or Small Company Member shall have made the required payment or
corrected the default within thirty (30) days from the date of the notice of
termination provided by the Consortium.
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4.3.2
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A
Technology Member, Government Laboratory or Non-profit Organization’s term
of membership shall be for one (1) year from the Effective Date of this
Agreement, subject to annual renewal upon approval by the EC and
IAB.
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A
Technology Member may withdraw its membership by giving the Consortium a written
notice of withdrawal no less than ninety (90) days prior to the effective date
of withdrawal. In the event of such withdrawal by a Technology
Member, the Consortium may continue to utilize the In-Kind Contribution until
the effective date of the withdrawal.
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Article
5 - Publications and Research
Data
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5.1
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For
purposes of this Agreement, (a) the term “Research Data” shall mean
information created in the performance of
Consortium-funded research
projects.
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5.2
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Each
Academic Partner will own Research Data or any other data that is
developed on its premises by its employees or agents. Research
Data shall be made available to all Academic Partners and Sponsors, by
presenting summary research results to report at the semi-annual
Consortium meetings, or otherwise as deemed appropriate by EC and
IAB.
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5.3
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If
an Academic Partner presents Research Data to the Consortium and wishes
the other Members to treat the Research Data as confidential
(“Confidential Information”), the Research Data or other data must be
labeled or identified in writing as "Confidential" or “Proprietary” at the
time of its presentation to other Consortium partners. The
Consortium Members will treat such data as Confidential Information for a
period of five (5) years after disclosure, unless mutually
agreed. The “Confidential” designation shall not apply to
information that: (i) is or shall have been known to the Consortium Member
before his receipt thereof; (ii) is disclosed to the Consortium Member by
a third party; (iii) is or shall have become known to the public through
no fault of the Consortium Member; (iv) was independently developed by the
receiving party without benefit of Confidential Information, as
demonstrated by written records, or (v) is disclosed as required by
law.
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5.4
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Each
Corporate Member and/or Small Company Member and/or Technology Member
recognizes the results of research projects must be publishable and agrees
that researchers engaged in Core Projects shall be permitted to present at
symposia and international, national or regional professional meetings,
and to publish in journals, theses, or dissertations, or otherwise of
their own choosing, the methods and results of research projects, provided
however, that Corporate Member and/or Small Company Member and/or
Technology Member that are identified in the Scope of Research as being
involved in a research project shall receive copies of any proposed
publication or presentation regarding that research project in
advance of the submission to a journal, editor, or other third
party. If the publication is not distributed and/or presented
in an environment requiring confidentiality, Corporate Member and/or Small
Company Member and/or Technology Member will have at least 45 days advance
notice of publication plans to evaluate any intended publication for the
purpose of seeking IP protection. Corporate Member and/or Small Company
Member and/or Technology Member shall have 30 days after receipt of said
copies to notify the author(s), in writing, that the proposed publication
or presentation contains patentable subject matter which needs
protection. In such case, the proposed publication or
presentation shall be deferred a maximum of one (1) month from date of the
objection to allow for appropriate patent protection. Should
Corporate Member and/or Small Company Member and/or Technology Member(s)
desire to see patent(s) filed to cover invention(s) disclosed in a
publication, Corporate Member and/or Small Company Member and/or
Technology Member and Academic Partner shall discuss financial
arrangements, which may include Corporate Member and/or Small Company
Member and/or Technology Member reimbursing Academic Partner for legal
expenses and the patent(s) shall be confidential in accordance with
Section 5.3.
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5.5
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Academic
Partners are required to present their research results in semi- annual
meetings hosted by DARPA, as long as any Consortium Inventions have been
disclosed to the Center Members and the Corporate Member and/or Small
Company Member and/or Technology Member have had a chance to exercise
their option on these Consortium Inventions. In cases where this was not
the case, the presentation would be delayed to the following semi-annual
meeting.
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5.6
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The
Sponsor(s) shall not provide to the Academic Partner(s) any confidential
information within the Consortium funded Core
Projects. Sponsored Research will have separate individual
agreements governing such information and
research.
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Article
6 - Publicity
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6.1
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The
Sponsors and Academic Partners will not use each other’s names, nor identify any
members of their respective project staffs, in any publicity, advertising
or news release without prior written approval of an authorized
representative of the Sponsor or the Academic
Partner.
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Article
7 - Intellectual Property Arising from Core
Projects
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7.1
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In
the absence of licenses or other legal agreements, no Sponsor or Academic
Partner shall have any claim or right to protected or proprietary
intellectual property not developed or created by the Consortium during
and pursuant to Core Projects.
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7.2
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Ownership
of Consortium Inventions will be determined consistent with US Patent Law
and the institutional policies of Inventor’s
institutions. Management of the proprietary rights to a
particular Consortium Invention will be by the invention’s
owner(s). In the case of inventions made by two or more
different Academic Partner employees, such inventions will be jointly
owned and the Academic Partners agree to establish in good faith an
Interinstitutional Agreement under which one of the Academic Partners will
manage the invention on behalf of the joint
owners.
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7.3
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To
the extent it is legally able to do so, the owning Academic Partner(s) of
any Consortium Invention shall first grant each Corporate Member an option
to negotiate a royalty bearing non-exclusive license for the commercial
use of the Consortium Invention if such Consortium Invention was made
during the Participation Period for the Industry
Sponsor. Corporate Members shall be granted a non-exclusive
royalty-free license to use such Consortium Inventions for internal
research and educational purposes. A Corporate Member shall notify the
Executive Committee in writing that it desires to exercise its right to
license a particular Consortium Invention. This notice also shall be
addressed and mailed by certified mail, return receipt requested, to the
Academic Partner providing the invention disclosure within ninety (90)
days of such disclosure. If, 90 (ninety) days after disclosure of the
Consortium Invention,
only one Corporate Member seeks a license, that Corporate Member
may elect to obtain either a non-exclusive or an exclusive license to
extent that the owner is legally able to grant such license and subject to
its ability to maintain the tax-free bond status of any facility in which
Core Projects activity is
conducted.
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7.4
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In
the event no Corporate Member exercises its option to a Consortium
Invention or the Corporate Member(s) that exercise the option choose to
negotiate a non-exclusive license, the owning Academic Partner(s) of any
Consortium Invention shall grant each Small Company Member and Technology
Member an option to negotiate a royalty bearing non-exclusive license for
the commercial use of the Consortium Invention if such Consortium
Invention was made during the Participation Period for the Small Company
Member or Technology Member. A Small Company Member or Technology Member
shall notify the Executive Committee in writing that it desires to
exercise its right to license a particular Consortium Invention. This
notice also shall be addressed and mailed by certified mail, return
receipt requested, to the Academic Partner providing the invention
disclosure within ninety (90) days of such
disclosure.
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7.5
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Sponsors
that elect to exercise their respective rights to negotiate a license for
Consortium Inventions agree to designate all countries where patent
protection is desired and pay for a pro rata share of the
costs of such patent application(s) and necessary defense costs, provided
that any Sponsor may elect not to share in patent litigation costs,
thereby terminating its license. The license will be negotiated
in good faith using industry standards in the field within six (6) months
from Sponsor's written notification to the Academic Partner(s) of its
desire to enter into a license agreement. If a license
agreement cannot be negotiated within the six (6) month period then the
right to such a license shall terminate, unless extended by mutual
consent. The license agreement will include development obligations and
also possibly defined fields of use consistent with the ability of the
Sponsor to commercialize the Consortium
Inventions. Any Sponsor who obtains a license has
the right to sublicense to its subsidiaries maintaining all terms and
conditions contained in this Consortium
Agreement.
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7.6
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All
sponsors from all the DARPA MEMS/NEMS S&T Centers are invited to
attend the semi-annual DARPA MEMS/NEMS S&T Centers research review
meetings. All sponsors of all the DARPA MEMS/NEMS S&T
Centers will have a six (6) month right to negotiate a license
to inventions made by academic partners at DARPA MEMS/NEMS S&T
Centers with which they are not affiliated if any licensing
rights are available. Sponsors shall have 6 months from the
date of the semi-annual meeting to exercise this right. The right to
negotiate a license would only be offered for Consortium Inventions if (1)
no Corporate Member, Small Company Member or Technology Member chose to
take an option 90 days from notification of disclosure, or (2) those
Sponsors that did exercise the option, chose not to negotiate a license
within the six (6) month negotiation period, or (3) the Sponsor(s) that
exercised their option and/or license consent to offer the secondary
right.
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Six
months after the annual research review meeting Academic Partners may negotiate
licenses with any company outside the DARPA MEMS/NEMS S&T Fundamentals
Program, if no options were taken or if no options taken were exercised and
exclusive license(s) concluded by any Consortium Industry Sponsor.
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7.7
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In
the absence of licenses or other legal agreements, no Government
Laboratory or Non-profit Organization shall have any claim or right to
Consortium Inventions.
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7.8
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If
development of a Consortium Invention was sponsored by DARPA or another
federal agency, any license thereof is subject to overriding obligations
to the United States (“U.S.”) Federal Government under 35 U.S.C. §§200-212
(Bayh-Dole) and applicable regulations (including a non-exclusive,
non-transferable, irrevocable, paid up license to practice or have
practiced the Consortium Invention for or on behalf of the U.S. Government
throughout the world).
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7.9
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Academic
Partners agree to promptly disclose the creation of all Consortium
Inventions to UCI. The employees of Academic Partners
shall promptly file an invention disclosure with the relevant office of
his or her Academic Partner institution, and that office will promptly
disclose such Consortium Invention to UCI at the following
address:
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MF3 CONSORTIUM
Attn: Dr. Gisela Lin
Integrated Nanosystems Research
Facility
The Henry Samueli School of
Engineering
University of California
2220 Engineering Gateway
Irvine, CA 92697-2660
Such
disclosure to UCI will be treated as confidential pursuant to section 5.3
governing confidential information.
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Article
8 - Sponsored Research
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8.1
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It
is the intent of Consortium that Sponsors can contract individually with
Academic Partner(s) for Sponsored Research of particular interest to the
Sponsor. If the proposed Sponsored Research involves a Core
Project Investigator and is in the Field, the scope and nature of the
Sponsored Research will be disclosed to the Executive Committee, and the
EC shall determine whether the Sponsored Research will be considered part
of the Consortium research. Subject to availability of DARPA
matching funds, such Sponsored Research may receive an additional funding
match from the DARPA funding to the Center. Such funding shall not change
the designation of the research, which shall remain Sponsored
Research.
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8.2
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For
Sponsored Research, the Academic Partner(s) and Sponsor(s) will be bound
by confidentiality clauses in the Sponsored Research Agreement which will
also govern the disclosure and disposition of inventions made in the
performance of the Sponsored
Research.
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8.3
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This
Consortium Agreement does not govern Sponsored Research, outside of the
disclosure requirements of Section 8.1. Any Sponsored Research will be
governed by a separate Sponsored Research
Agreement..
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Article
9 - Miscellaneous
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9.1
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The
Agreement shall not be assigned or delegated, in whole or in part, by any
Partner, nor shall any assignment or delegation be valid, without the
prior written consent of the EC.
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9.2
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No
modifications or amendments to this Agreement shall be valid unless
contained in writing and signed by all parties to this
Agreement.
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9.3
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This
instrument contains the entire agreement between the parties and is not
subject to any prior or other terms, conditions, statements, or
representation except those expressly set forth or incorporated by
reference herein or which may be contained in a separate confidential
non-disclosure agreement between the
parties.
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9.4
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This
agreement shall be binding upon the parties hereto and their successors
and assigns.
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For
Sponsor
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For
UCI/MF3 - Lead Academic Partner / DARPA
Contractor
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| Signature on File |
/s/ Kevin
Kennan
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Signature
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Date
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Signature
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Date
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Kevin Keenan
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Name
(please
print)
Name (please print)
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Associate Director, Intellectual Property
Admin
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Title
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Title
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University of
California, Irvine
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Company
University
For
Academic Partner
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Signature on File |
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Signature
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Date
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Name
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Title
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University
Page