HomeMy WebLinkAboutContract 41077 (2)CITY SECRETARYI�
CONTRACT NO, OJ,JL
MATERIALS TRANSFER AGREEMENT
THIS MATERIALS TRANSFER AGREEMENT (the "Agreement") is made and entered into
effective as of the 4th day of November 2010 (the "Effective Date"), by and between the City of
Fort Worth (the "City"), a home -rule municipal corporation of the State of Texas, acting by and
through its duly authorized Assistant City Manager, and the University of North Texas Health
Science Center at Fort Worth ("UNTHSC"), a division of the University of North Texas, a
legally constituted Texas public university, acting by and through its duly authorized Associate
Vice President for Technology Transfer & Commercialization.
WHEREAS, the City has collected socio-economic and health -related data in connection
with its Community Needs Assessment and Women's Health Initiative (collectively, the
"Materials"); and
WHEREAS, restructuring and realignment of City departments and functions has
rendered the Materials of limited use to the City; and
WHEREAS, UNTHSC has expressed an interest in taking custody of the Materials and
using them to further UNTHSC's health -related programs, projects, and goals (collectively
"Projects"); and
WHEREAS, UNTHSC wishes to be free to publish and exploit the results of its Projects
and is willing to do so on terms that protect the City's interests in the Materials. Accordingly, the
City is willing to provide and UNTHSC is willing to accept the Materials in accordance with the
provisions of this Agreement.
NOW, THEREFORE, City and UNTHSC, do mutually covenant and agree as follows:
1. Delivery of the Materials
1.1 The City shall send UNTHSC the Materials in a manner consistent with the optimum
stability and safe delivery of the Materials.
2. Use of the Materials
2.1 UNTHSC shall ensure that the Materials are:
2.1.1 used only for the purposes of the Project and not for any other commercial or for -
profit enterprise;
2.1.2 used and maintained in a secure and confidential manner;
OFFICIAL RECORD
CITY SECRETARY
FT. WORTH, TX
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Materials Transfer Agreement Page 1 of 5
2.1.3 not made available to anyone other than personnel of UNTHSC engaged in
carrying out the Project; and
2.1.4 used in compliance with all applicable statutes and regulations.
3. Intellectual Property Rights
3.1 The City hereby grants to UNTHSC a non-exclusive, worldwide, royalty -free research
licence under the City's intellectual property rights to use the Materials for the purposes of the
Project.
3.2 The City makes no warranty or representation that the Materials (whether when used for the
Project or otherwise) do not and will not infringe the intellectual property of a third party. The
City hereby excludes to the fullest extent peunitted by law any liability arising (whether directly
or indirectly) from any action, claim, proceedings demands, losses (including but not limited to
loss of profit), costs, awards damages and payments made by UNTHSC arising from a claim by a
third party that the use of the Materials for the purposes of the Project or otherwise infringes the
intellectual property of the third party.
3.3 Nothing in this Agreement shall operate to transfer to UNTHSC any intellectual property
rights of the City in the Materials.
3.4 All intellectual property rights (including, without limitation, design rights, copyrights,
database rights, rights in confidential infoituation and know-how and the right to apply for
patents) and all results, data and discoveries arising out of the Project shall belong to UNTHSC.
3.5 In this Agreement, "Invention shall mean a patentable invention developed by the
UNTHSC in the course of the Project that relates directly and principally to the Materials itself.
3.6 UNTHSC will notify the City upon filing a patent application on any Invention its
employees make using the Materials furnished to UNTHSC under this Agreement. UNTHSC
will seriously consider the City's request for a nonexclusive, partially exclusive, or exclusive
royalty bearing license to make use and/or sell products embodying the invention as claimed in
the filed patent application, subject to the terms of 35 USC 207 208, 209 and 15 USC 3710 and
the implementing regulations.
3.7 UNTHSC will notify the City prior to manufacturing, producing, or otherwise making
generally available any commercially marketable product or service its employees develop using
the Materials furnished to UNTHSC under this Agreement. UNTHSC will seriously consider the
City's request for a reasonable number of copies of any such product for no cost or at a reduced
cost.
3.8 Any publication resulting from the Project shall acknowledge the City as having made
available the Materials.
Matenals Transfer Agreement Page 2 of 5
4. Confidentiality
4.1 UNTHSC agrees to treat in confidence the Materials obtained from the City. UNTHSC shall
only use such information for the purposes of the Project and shall not disclose it to any person
other than personnel of the UNTHSC engaged in carrying out the Project.
4.2 Clause 4.1 shall not apply to any information that:
4.2.1 is published by and/or is contained in any publication that UNTHSC has previously
published; or
4.2.2 is independently developed by UNTHSC or acquired from a. third party, to the
extent that it is acquired with the right to disclose it; or
4.2.3 was lawfully in the possession of UNTHSC prior to the date of this Agreement; or
4.2.4 is required to be disclosed by law or any court of competent jurisdiction, any tax or
regulatory authority or any binding judgment, order or requirement of any other
competent authority, provided that UNTHSC shall informs the City where possible prior
to any such disclosure
5. General
5.1 This Agreement shall become effective as of the Effective Date and shall continue in effect
until terminated as specified herein Either party may terminate this Agreement by giving thirty
(30) days' written notice to the other. The obligations of UNTHSC hereunder shall survive
teiinination. Upon termination, the Materials shall be either returned to City or destroyed
5.1 Neither party shall be entitled to assign or otherwise transfer any of its rights or obligations
under this Agreement to any person without the prior written consent of the other
5.2 All notices given under this Agreement must be in writing and delivered to the individual
and address identified below or to such other person and/or address as may be designated in
writing by the parties in the future.
CITY UNTHSC:
City of Fort Worth University of North Texas Health Science
Code Compliance Department Center at Fort Worth Health Systems
Attn: Health Officer Attn Robert McClain, PhD
818 Missouri Ave. 3500 Camp Bowie Blvd.
Fort Worth, Texas 76104 Fort Worth, Texas 76107
With copy to:
Assistant City Attorney
1000 Throckmorton Street
Fort Worth, Texas 76102
Materials Transfer Agreement Page 3 of 5
5.3 The failure of either party to enforce or to exercise any light under this Agreement
does not constitute a waiver of that right and shall not affect that party's right to enforce
or to exercise it at a later time.
5.4 UNTHSC accepts that the Materials are supplied on an "as is" basis, are of an
uncertain nature and value, and that the City makes no warranty or representation,
express or implied, as to the properties or suitability of the Materials. The City hereby
excludes to the fullest extent peiniitted by law all liability for any action, claim,
proceedings, demands, losses (including but not limited to loss of profit), costs, awards
damages and payments made by UNTHSC that may arise (whether directly or indirectly)
in any way whatsoever from the supply of the Materials and their use by UNTHSC.
5.5 No variation of or amendment to this Agreement shall bind either party unless made
in writing and signed by a duly authorized representative of both parties.
5.6 Subject to clause 3.8 UNTHSC shall not use the City's name in any publication,
public announcement or other public disclosure without the consent of the City.
5.7 This Agreement shall be governed by and construed in accordance with the laws of
the State of Texas. If any action, whether real or asserted, at law or in equity arises on
the basis of any provision of this Agieement, venue for such action shall lie in state
courts located in Tarrant County, Texas or the United States District Court for the
Northern District of Texas - Fort Worth Division.
5.8 In the event one or more provision contained in this Agreement is held to be invalid,
illegal, or unenforceable in any respect, such invalidity, illegality or unenforceability
shall not affect any other provision hereof, and this Agreement shall be considered as if
such invalid, illegal or unenforceable provisions were never contained herein.
5.9 This instrument (including all attachments, schedules, and exhibits attached hereto)
constitutes the entire understanding and agreement of the City and UNTHSC with respect
to transfer and use of the Materials. Any prior or contemporaneous oral or written
agreement is hereby declared null and void to the extent in conflict with the terms and
conditions of this Agreement.
[SIGNATURES APPEAR ON FOLLOWING PAGE]
Material Transfer Agreement Page 4 of 5
IN WITNESS WHEREOF, the parties hereto have executed this Amendment in Fort
Worth, Tarrant County, Texas, this LS' of , 2010.
tYday
CITY OF FORT WORTH
C arles W. Daniels
Assistant City Manager
Appro as to Fond Legality:
CI
By:
Deni cElroy
Assistant City Attorney
No M&C Required
Attest:
By:
City Secretary
UNIVERSITY OF NORTH TEXAS
HEALTH SCIENCE CENTER AT
FORT WORTH
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Name: Robert McClain, Ph.D.
Title: Associate Vice President
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OFFICIAL RECORD
CITY SECRETARY
FT. WORTH, TX
Material Transfer Agreement
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