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Documents, shall be jointly owned by the Grantee and the State. Works shall mean all inventions,
<br />improvements, or discoveries (whether or not patentable), databases, computer programs, reports,
<br />notes, studies, photographs, negatives, designs, drawings, specifications, materials, tapes or disks,
<br />conceived, reduced to practice, created, or originated by the Grantee, its employees and
<br />Subcontractors, either individually or jointly with others, in the performance of this .Contract.
<br />"Documents" shall mean the originals of any databases, computer programs, reports, notes, studies,
<br />photographs, negatives, designs, drawings, specifications, materials, tapes, disks, or other materials,
<br />whether intangible or electronic forms, prepared by the Grantee, its employees, or Subcontractors,
<br />in the performance of this Contract. The ownership interests of the State and the Grantee in the
<br />Works and Documents shall be equal. The party's ownership interest in the Works and Documents
<br />shall not be reduced by any royalties or revenues received from the sale of the products or the
<br />licensing or other activities arising from the use of the Works and Documents. Each party hereto
<br />shall, at the request of the other, execute all papers and perform all other acts necessary to transfer
<br />or record the appropriate ownership interests in the Works and Documents.
<br />10.2.2 Obligations.
<br />(1) Notification. Whenever any invention, improvement, or discovery (whether or not
<br />patentable) is made or conceived for the first time, or actually or constructively reduced to
<br />practice by the Grantee, including its employees and Subcontractors, in the performance of
<br />this Contract, the Grantee shall immediately give the State's Authorized Representative
<br />written notice thereof, and shall promptly furnish the Authorized Representative with
<br />complete information and/or disclosure thereon. All decisions regarding the filing of patent,
<br />copyright, trademark or service mark applications .and/or registrations shall be the joint
<br />decision of the Grantee and the State, and costs for such applications shall be divided as
<br />agreed by the parties at the time of the filing decisions. In the event the parties cannot agree
<br />on said filing decisions, the filing decision will be made by the State.
<br />(2) Representation. The Grantee shall perform all acts, and take all steps, necessary to ensure
<br />that all intellectual property rights in the Works and. Documents are the sole property of the
<br />Grantee and the State as agreed herein, and that no Grantee employee, agent, or Contractor
<br />retains any interest in and to the Works and Documents. The Grantee represents and
<br />warrants that the Works and Documents do not and shall not infringe upon any intellectual
<br />property rights of others. The Grantee shall indemnify, defend, and hold harmless the State,
<br />at the Grantee's expense, from any action or claim brought against the State to the extent
<br />that it is based on a claim that all or part of the Works or Documents infringe upon the
<br />intellectual property rights of others. The Grantee shall be responsible for payment of any
<br />and all such claims, demands, obligations, liabilities, costs, and damages including, but not
<br />limited to, attorney fees. If such a claim or action arises, or in the Grantee's or the State's
<br />opinion is likely to arise, the Grantee shall, at the State's discretion, either procure for the
<br />State the right or license to use the intellectual property rights at issue or replace or modify
<br />the allegedly infringing Works or Documents necessary and appropriate to obviate the
<br />claim. This remedy shall be in addition to, .and not exclusive of, other remedies provided by
<br />law.
<br />10.2.3 Use of Works and Document. The State and Grantee shall jointly have the right to make, have
<br />made, reproduce, modify, distribute, perform, and otherwise use the Works, including Documents
<br />produced under this Contract, for noncommercial research, scholarly work, government purposes,
<br />and other noncommercial purposes without payment or accounting to the other party. No
<br />commercial development, manufacture, marketing, reproduction, distribution, sales or licensing of
<br />the Works, including Documents, shall be authorized without a future written Contractual
<br />agreement between the parties.
<br />10.2.4 Possession of Documents. The Documents may remain in the possession of the Grantee. The State
<br />may inspect any of the Documents at any reasonable time. The Grantee shall provide a copy of the
<br />Documents to the State without cost upon the request of the State.
<br />Grant (Rev. 11/08)
<br />CR4377
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