Application Rules & Regulations
Intellectual Property Rules & Conditions
Network Director for the U.S. Testing Expertise and Access for Marine Energy Research (TEAMER) Program: DE-FOA-0002012
At TEAMER, we understand the value of protecting your intellectual property (IP). We also strive for advancement of the industry at large, which happens through knowledge sharing. So we have developed our IP Plan with the goal of balancing these two interests. Download the full plan below.
IP Plan Summary
The purpose of the “TEAMER Program” is to provide marine energy developers and researchers (referred to in this Teamer IP Plan as “TSR” for those developers and researchers that are technical support recipients) with access to a United States based member network of pre-certified testing facilities (the “TEAMER Network Facility Members”). While the testing undertaken in the TEAMER Program is unlikely to produce significant new intellectual property and know-how, it will result in raw data and results from the testing of these ME technology devices, and all such relevant data is required to be submitted to POET and uploaded to the MHK Data Repository.
The TEAMER Program requirements and provisions regarding intellectual property (for TEAMER Network Facility Members that are not members of the national laboratory system (collectively “Non-Lab Members”)) are dictated and governed by the DOE Special Terms and Conditions and the Request For Technical Support (“RFTS”) Program Requirements1. Those requirements and provisions are generally set forth in this IP Plan, on the TEAMER website, and more specifically set forth in the Project Documents, which consist of the following, all of which are incorporated herein by this reference (collectively the “Project Documents”):
- The TEAMER Program requirements and provisions regarding intellectual property for TEAMER Network Members that are members of the national laboratory system will be contained in the provisions of the TEAMER Program direct Awards by DOE to National Lab Members and the CRADAs (and other documentation) entered into between those National Lab Members and the TSRs. ↩︎
(a) The Master Network Facility Agreement (between POET and the Non-Lab Members that are not members of the national laboratory system) (the “Master Agreement”);
(b) The original DOE Contract pertaining to the Award, including all modifications or amendments to the DOE Contract issued after its effective date, whether before or after the Effective Date of the Master Agreement;
(c) All attachments, exhibits, schedules, and other documents (if any) itemized on the List of Attachments, Exhibits, and Schedules to the Master Agreement;
(d) Any and all amendments to or modifications of the Master Agreement entered into by the parties after the Effective Date of the Master Agreement;
(e) Each agreement entered into (pursuant to the Master Agreement) by the Non-Lab Member and a TSR with respect to the implementation of a project applied for by the TSR and approved by POET and the Non-Lab Member; and
(f) All task orders as signed by POET from time to time pertaining to TSR Projects implemented under the terms of the Master Agreement (collectively “Task Orders”): As between a Non-Lab Member and a TSR, the rights and obligations regarding intellectual property and intellectual property issues will be set forth in each agreement that is entered into by the Non-Lab Member and a TSR with respect to the implementation of a project applied for by the TSR and approved by POET, which such terms and conditions will not be inconsistent with the intellectual property requirements and provisions of (a) the DOE Special Terms and Conditions, (b) the RFTS Program Requirements, and (c) any POET issued Task Orders (collectively the “TEAMER Program IP Provisions”). The Non-Lab Member shall assure that the Project Documents are in a form reasonably satisfactory to POET evidencing the agreement of each of the Non-Lab Member and the TSR to comply with the TEAMER Program IP Plan. The Non-Lab Members and the TSR shall enter into a Joint Work Agreement describing the testing and research activities to be undertaken by TSR at the Facility.
IP Plan Outline
1. Treatment of Confidential Information Shared Between Facilities and TSRs
Where desirable, in the commercially reasonable judgment of the Non-Lab Member and the TSR, those parties may enter into non-disclosure agreements, provided that the provisions of any such agreements shall not be inconsistent with the terms of this Agreement and the TEAMER Program IP Provisions. The non-disclosure agreement to be used by Non-Lab Member and a TSR, if any, shall be included in the Project Documents.
2. Facility Background Intellectual Property
The Non-Lab Member may include any pre-existing Non-Lab Member-specific intellectual property rights and obligations supplementing and not inconsistent with the TEAMER Program IP Provisions in each set of Project Documents.
3. TSR Background Intellectual Property
TSR may include any pre-existing TSR-specific intellectual property rights and obligations supplementing and not inconsistent with the TEAMER Program IP Provisions in the Project Documents.
4. License Agreements
To the extent any background intellectual property of the Non-Lab Member or a TSR will be implicated in connection with the Project Documents, the Non-Lab Member and the TSR may enter into commercially reasonable licensing agreements detailing the arrangements between those parties relating to the shared use of that background intellectual property so as to facilitate implementation of the Project Documents. A copy of the license agreement to be used by a Non- Lab Member and a TSR, if any, shall be included in the Project Documents.
5. Treatment of Inventions Made Under the Award
Invention disclosure obligations and disposition will be set forth in the Project Documents and will be consistent with the following:
(a) The Non-Lab Member will disclose (and will cause TSR to disclose) to POET any inventions which arise from the implementation of the Project Documents that may be patentable or otherwise protectable under the Patent Act.
(b) POET will disclose any and all such inventions to the DOE within two (2) months after the inventor first discloses the invention to POET.
(c) Non-Lab Member and TSR will respectively own title to any invention made solely by its employees or agents. Title to jointly made inventions will be jointly owned. If either Non-Lab Member or TSR elects not to retain its interest in a jointly made invention, the other party shall have the first option to acquire by assignment the exclusive title to such invention. The DOE (or its designee) may obtain title to any invention that is not retained by Non-Lab Member and TSR.
(d) Non-Lab Member (and as applicable the TSR) will respectively be responsible for the payment of all costs relating to U.S. and foreign patent application filings and prosecutions and all costs relating to maintenance fees for U.S. and foreign patents, which are filed or registered solely by that party.
(e) Non-Lab Member acknowledges (and will cause the TSR to acknowledge) that the DOE may obtain title to each invention reported (that arises from the implementation of the Project Documents) for which a patent application or applications are not filed and for which any issued patents are not maintained by the Non-Lab Member or the TSR.
(f) Non-Lab Member acknowledges (and will cause the TSR to acknowledge) that with respect to any and all invention(s) (the title to which is held by Non-Lab Member or by TSR in connection with the implementation of the Project Documents) the DOE (or its designee) retains a nonexclusive, non-transferable, irrevocable, paid-up license to practice (or to have practiced for or on behalf of the United States) each and every such invention.
6. Treatment of Data Produced Under the Award
Non-Lab Member will make available and submit (and will cause TSR to make available and submit), to or at the direction of POET, all relevant data (both meta and raw) to support charts and figures presented in TSR’s Post Action Report in connection with the implementation of the Project Documents (collectively “Project Data”). All such Project Data will be made available and submitted jointly by the parties (or submitted by either of them in the case of an individual submission) in a form capable of being uploaded to the MHK Data Repository. Compliance by Non-Lab Member and TSR with the provisions of this section (the “Public Disclosure Requirement”) is a condition precedent to any payment or reimbursement by POET to Non-Lab Member in connection with or relating to the Project Documents and this Agreement.
(a) At a minimum, Non-Lab Member will cause the TSR to upload to the MHK-DR the quantitative data underlying “figures” (including, but not limited to, all charts, graphs, and tables) contained in the TSR’s final report. This data must be formatted in a way that makes it clear how to reproduce each figure from the published data and, in the case of relatively complicated figures, the submission should include any required scripts or narrative to achieve that objective.
(b) All final TSR reports will be reviewed and approved by Non-Lab Member and the TEAMER Technical Board prior to acceptance. Artificially limiting the number of figures in the final report to avoid providing underlying data will be considered non-compliance with final reporting requirements.
7. Handling of IP Disputes Between Partners
In the event any disputes arise between Non-Lab Member and TSR regarding IP that is developed in connection with the implementation of the Project Documents, Non-Lab Member will provide (and will cause TSR to provide) prompt notice to POET of the existence of that dispute. Any such notice will include a thorough description of the nature of the dispute and the relevant facts pertaining to the dispute. Non-Lab Member will include a provision in the Project Documents that Non-Lab Member and TSR will in good faith seek to resolve any such dispute amicably among themselves for a period of at least thirty (30) days before proceeding with any attempt to formally resolve the dispute by arbitration, litigation, or other third party dispute resolution mechanism. POET will have no responsibility to mediate or determine the resolution of any such dispute, but to the extent requested by Non-Lab Member and TSR, POET may assist in Non-Lab Member’s and TSR’s good faith attempts to resolve the dispute amicably.